DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification does not disclose that the additive preblend “is substantially free of polymeric resin”.
Claims 12, 14, 15, 22, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The original specification does not disclose that the “additive preblend being substantially free of polymeric resin”.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The limitation “substantially free” in claim 12 is indefinite. The metes and bounds are unclear. While the instant specification provides a definition for “substantially” in paragraph [0017], the definition includes four different ranges. The instant specification provides no definition for the term “substantially free”.
Claims 12, 14, 15, 22, and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The limitation “substantially free” in claim 12 is indefinite. The metes and bounds are unclear. While the instant specification provides a definition for “substantially” in paragraph [0017], the definition includes four different ranges. The instant specification provides no definition for the term “substantially free”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 7, 8, 11 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341).
Regarding claim 1: Chatterjee et al. teach an additive preblend in pellet form prior to being introduced to a polymeric resin comprising Evernox 10 (a higher melting temperature additive, antioxidant) and 82.4 wt% of a combination of erucamide and glyceryl monostearate (lower melting temperature additive [Examples; Table 1]. It would have been obvious to add calcium stearate [0023] as an acid neutralizer to the additive preblend of Chatterjee et al. The composition is capable of functioning in the claimed capacity in a polypropylene composition [0031; claim 23].
The amount of 82.4 wt% is very close to 80 wt%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
The limitation “a hot-extruded pellet” is a product by process limitation. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The limitation does not provide a structural difference to Chatterjee et al., wherein the additives are heated in an extruder such that at least one of the additives is melted [0096-0100]. Chatterjee et al. also teach a melt-extruded pellet [0023].
Regarding claim 4: Chatterjee et al. teach the nucleating agent, sodium benzoate in the claimed amount [0088; Examples].
Regarding claim 7: Chatterjee et al. teach the pheonolic antioxidant Evernox 10 [0036; Examples]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add calcium stearate and a phosphite antioxidant [0032-0046] to the additive blend of Chatterjee et al.
Regarding claim 8: The composition of Chatterjee et al. is substantially free of polymeric resin [Examples; Table 1].
Regarding claim 11: Chatterjee et al. teach examples with five different additives [Examples; Tables]. It would have been obvious to one of ordinary skill in the art to add a phosphite stabilizer and calcium stearate neutralizer to the additive composition of Chatterjee et al. [0032-0046].
Regarding claim 25: The amount in Chatterjee et al. [Examples] is close to the claimed amount. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341) as applied to claims 1 and 4 above further in view of Lierde et al. (WO 2010/104628).
Chatterjee et al. fail to teach the claimed nucleating agent.
However, Van Lierde et al. teach a nucleating agent as an additive for a polyolefin resin composition to improve manufacturing speeds [0010], and allows the use of a smaller quantity of resin, leading to improved mechanical properties [0020]. Van Lierde et al. teach using HPN-20E and HPN-68L as nucleating agents [0062], and Van Lierde et al. teach using a mixture of nucleating agent [0062].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of HPN-20E and HPN-68L as taught by Van Lierde et al. as the nucleating agent in the additive composition of Chatterjee et al. to improve the manufacturing speed of the composition.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341) as applied to claims 1 and 8 above further in view of Hayashida et al. (5,346,944).
Regarding claim 9: Chatterjee et al. teach 38.2 wt% erucamide, glyceryl monostearate, phenolic antioxidant and 3.8 wt% of the nucleating agent, sodium benzoate [Examples]. Chatterjee et al. also teach adding a phosphite antioxidant and calcium stearate [0032-0046].
The amount of erucamide is close to the claimed amount.
A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Chatterjee et al. fail to teach ranges for their glyceryl monostearate, phenolic antioxidant, phosphite antioxidant and calcium stearate.
However, Hayashida et al. teach an analogous additive composition for a polymer comprising 0.05 to 2.0 parts by weight of (b) glycerol monostearate (column 5, lines 37-64), 0.01 to 0.3 parts by weight phenolic antioxidant (d) (column 6, lines 50-58), and 0.01 to 0.2 parts by weight phosphite antioxidant (e) (column 7, lines 1-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ranges as taught by Hayashida et al. for the glycerol monostearate, phenolic antioxidant, and phosphite antioxidant of Chatterjee et al. to use art tested amounts for the additive blend. The amounts remaining for calcium stearate can be optimized through routine experimentation for the proper acid neutralization of the composition. The only components present are those recited in claim 9 and the total of those components is 100 wt%.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341) and Hayashida et al. (5,346,944) as applied to claims 1, 8 and 9 above further in view of Lierde et al. (WO 2010/104628).
Regarding claim 10: Chatterjee et al. fail to teach the claimed nucleating agent.
However, Van Lierde et al. teach a nucleating agent as an additive for a polyolefin resin composition to improve manufacturing speeds [0010], and allows the use of a smaller quantity of resin, leading to improved mechanical properties [0020]. Van Lierde et al. teach using HPN-20E and HPN-68L as nucleating agents [0062], and Van Lierde et al. teach using a mixture of nucleating agent [0062].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of HPN-20E and HPN-68L as taught by Van Lierde et al. as the nucleating agent in the additive composition of Chatterjee et al. to improve the manufacturing speed of the composition.
Claim(s) 12, 14, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341).
Chatterjee et al. teach an additive preblend in pellet form prior to being introduced to a polymeric resin comprising Evernox 10 (a higher melting temperature additive) and 82.4 wt% of a combination of erucamide and glyceryl monostearate, with a total of five additives [Examples; Table 1]. The composition is capable of functioning in the claimed capacity in a polypropylene composition [0031; claim 23]. It is the position of the Office that a pellet is a “one-pack preblend”.
The amount of 82.4 wt% is very close to 80 wt%. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
It would have been obvious to one of ordinary skill in the art to add a phosphite stabilizer and calcium stearate neutralizer to the additive composition of Chatterjee et al. [0032-0046] to provide a total of 7 additives that comprise 100% of the composition.
The limitation “a hot-extruded pellet” is a product by process limitation. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The limitation does not provide a structural difference to Chatterjee et al., wherein the additives are heated in an extruder such that at least one of the additives is melted [0096-0100]. Chatterjee et al. also teach a melt-extruded pellet [0023].
Regarding claim 21: The composition of Chatterjee et al. is essentially free from polymeric resin [Examples; Table 1].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341) as applied to claim 12 above further in view of Hayashida et al. (5,346,944) and Lierde et al. (WO 2010/104628).
Chatterjee et al. teach 38.2 wt% erucamide, glyceryl monostearate, phenolic antioxidant and 3.8 wt% of the nucleating agent, sodium benzoate [Examples]. Chatterjee et al. also teach adding a phosphite antioxidant and calcium stearate [0032-0046].
The amount of erucamide is close to the claimed amount. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Chatterjee et al. fail to teach ranges for their glyceryl monostearate, phenolic antioxidant, phosphite antioxidant and calcium stearate.
However, Hayashida et al. teach an analogous additive composition for a polymer comprising 0.05 to 2.0 parts by weight of (b) glycerol monostearate (column 5, lines 37-64), 0.01 to 0.3 parts by weight phenolic antioxidant (d) (column 6, lines 50-58), and 0.01 to 0.2 parts by weight phosphite antioxidant (e) (column 7, lines 1-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ranges as taught by Hayashida et al. for the glycerol monostearate, phenolic antioxidant, and phosphite antioxidant of Chatterjee et al. to use art tested amounts for the additive blend. The amounts remaining for calcium stearate can be optimized through routine experimentation for the proper acid neutralization of the composition.
Chatterjee et al. fail to teach the claimed nucleating agent.
However, Van Lierde et al. teach a nucleating agent as an additive for a polyolefin resin composition to improve manufacturing speeds [0010], and allows the use of a smaller quantity of resin, leading to improved mechanical properties [0020]. Van Lierde et al. teach using HPN-20E and HPN-68L as nucleating agents [0062], and Van Lierde et al. teach using a mixture of nucleating agent [0062].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a combination of HPN-20E and HPN-68L as taught by Van Lierde et al. as the nucleating agent in the additive composition of Chatterjee et al. to improve the manufacturing speed of the composition.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341) as applied to claim 12 above further in view of Hayashida et al. (5,346,944).
Chatterjee et al. teach 38.2 wt% erucamide, glyceryl monostearate, phenolic antioxidant and 3.8 wt% of the nucleating agent, sodium benzoate [Examples]. Chatterjee et al. also teach adding a phosphite antioxidant and calcium stearate [0032-0046].
The amount of erucamide is close to the claimed amount. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Chatterjee et al. fail to teach ranges for their glyceryl monostearate.
However, Hayashida et al. teach an analogous additive composition for a polymer comprising 0.05 to 2.0 parts by weight of (b) glycerol monostearate (column 5, lines 37-64), 0.01 to 0.3 parts by weight phenolic antioxidant (d) (column 6, lines 50-58), and 0.01 to 0.2 parts by weight phosphite antioxidant (e) (column 7, lines 1-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ranges as taught by Hayashida et al. for the glycerol monostearate, phenolic antioxidant, and phosphite antioxidant of Chatterjee et al. to use art tested amounts for the additive blend. The amount of glycerol monostearate would overlap the claimed amount.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatterjee et al. (2010/0152341) as applied to claim 1 above further in view of Hayashida et al. (5,346,944).
Chatterjee et al. teach 38.2 wt% erucamide, glyceryl monostearate, phenolic antioxidant and 3.8 wt% of the nucleating agent, sodium benzoate [Examples]. Chatterjee et al. also teach adding a phosphite antioxidant and calcium stearate [0032-0046].
The amount of erucamide is close to the claimed amount. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05).
Chatterjee et al. fail to teach ranges for their glyceryl monostearate.
However, Hayashida et al. teach an analogous additive composition for a polymer comprising 0.05 to 2.0 parts by weight of (b) glycerol monostearate (column 5, lines 37-64), 0.01 to 0.3 parts by weight phenolic antioxidant (d) (column 6, lines 50-58), and 0.01 to 0.2 parts by weight phosphite antioxidant (e) (column 7, lines 1-15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ranges as taught by Hayashida et al. for the glycerol monostearate, phenolic antioxidant, and phosphite antioxidant of Chatterjee et al. to use art tested amounts for the additive blend. The amount of glycerol monostearate would overlap the claimed amount.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 5, 7-12, 14, 15 and 21-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/807678. Although the claims at issue are not identical, they are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/5/2025 have been fully considered but they are not persuasive.
The applicant has alleged that the limitation “additive preblend being substantially free of polymeric resin” is supported because the specification defines the word “substantially” and provides embodiments/examples that do not comprise a polymer. This is not persuasive because the instant specification never discloses that the “additive preblend being substantially free of polymeric resin”. Merely defining the term “substantially” is not sufficient because the word is never used in connection with the polymeric resin.
The applicant alleges that “substantially” is defined in the specification. While the instant specification provides a definition for “substantially” in paragraph [0017], the definition includes four different ranges. The metes and bounds are unclear. Furthermore, the instant specification provides no definition for the term “substantially free”.
The Applicant has made the argument that the prior art does not teach “a hot-extruded pellet”. This is not persuasive because the limitation is a product by process limitation that does not provide a structural difference from the pellet in Chatterjee et al. Chatterjee et al., wherein the additives are heated in an extruder such that at least one of the additives is melted [0096-0100]. Chatterjee et al. also teach a melt-extruded pellet [0023]. The applicant has limited Chatterjee et al. to compaction methods, and ignores the other methods taught in Chatterjee et al. were extrusion under hot temperatures is performed.
The applicant points to the fact that the prior art methods choking screw feeders and require more shut downs and cleaning of the feeder screw. This is not persuasive because the instant claims are composition claims and not method claims. The ease or difficulty of processing does not impact the structure of the end product. Moreover, the applicant has not demonstrated this problem with the pellet of Chatterjee et al., which does not require between 10 to 25 wt% of silicate or other binding aids.
The applicant alleges that “a hot-extruded pellet” provides better attrition testing. This is not persuasive for the following reasons:
The applicant has only compared the compaction method of Chatterjee et al., and not the method that uses extrusion to melt component(s).
The testing methods of Chatterjee et al. versus the instant specification are different.
The instant specification indicates that the improve friability is due to the additives in the composition [0025, 0026, 0032], and nowhere states that it is due to the method of producing the pellet.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., softness/hardness of the pellet and the pellet size) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
It is noted that instant Fig. 1 does not represent Chatterjee et al., since Chatterjee et al. teach that their pellets have a smooth outer surface [0126], a large size [0100, 0106; Examples], and low friability [0104].
The applicant has made the argument Chatterjee et al. fail to teach that the pellet is suitable for use in the production of cap and closure grade polypropylene. The applicant is referring to a recitation of an intended use of the composition. The claim language does not require the actual use of the composition, but merely the possibility that it is used in the claimed capacity. The pellet of Chatterjee et al. is capable of functioning in the claimed capacity.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ranges as taught by Hayashida et al. for the glycerol monostearate, phenolic antioxidant, and phosphite antioxidant of Chatterjee et al. to use art tested amounts for the additive blend. The amounts remaining for calcium stearate can be optimized through routine experimentation for the proper acid neutralization of the composition.
The Applicant has not responded properly to the double patenting rejection. See MPEP 804(I)(B)(1). Filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application's claims, is necessary. Failure to do so in the next response will be considered non-responsive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763