DETAILED ACTION
Election/Restrictions
The restriction is withdrawn.
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, 3, 5, 6, and 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/959,447.
As to claim 1, the limitations of this claim are taught by claims 1 and 2 of the ‘447 application, including the material container (claim 2 of ‘447), pumping device with inlet and outlet (claim 2 of ‘447), material container (claim 2 of ‘447), communicating manner (claim 2 of ‘447), and pressure of at least 15 bar (‘447). The claimed “configured to treat” is recited in claim 1 of ‘447.
As to claim 3, the claimed features are similarly recited in claim 3 of the ‘447 application. As to claim 5, since the claimed features are not structural apparatus features, they are met by the ‘447 application. As to claim 6, this process is met by claim 14 of the ‘447 application, which provides treating and pumping. The discharging would have been obvious in light of the preamble of claim 14. While the treatment is not specifically disclosed as occurring in a “container”, any location where the treating in claim 14 occurs can be considered a material container.
As to claim 8, the limitations of this claim are taught by claims 1 and 2 of the ‘447 application, including two devices for material treatment and an application device. Although not specifically recited using the same wording regarding inlets and outlets, the same inlets and outlets are necessarily present in the ‘447 application. The claimed pumps operating at a pressure of at least 15 bar are recited in claim 2 of the ‘447 application.
As to claims 9-11, the metering devices in these claims are met by the three metering devices recited in claim 1 of the ‘447 application.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 112
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 3, 4, 5, and 7-11 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.
As to claims 3, 4, 5, and 7-11, the phrases “in particular” and “preferably” render the claims indefinite. Please remove all occurrences of these phrases from the claims.
As to claim 7, beyond the “polymerization of polyurethane”, the scope of the process/use in claim 7 is unclear and indefinite because the actual steps are not stated.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Craig (US 5,472,990) in view of Brady (US 20020142413) and Nodelman (US 6,005,016).
As to claim 1, Craig teaches a device for material treatment comprising a material container (Fig. 1, item 28) and a pump device (Fig. 1, item 30). Craig’s pump device (Fig. 1, item 30) has an inlet (Fig. 1, item 29) fluidly connected to the material container (Fig. 1, item 29) for introduction of the material into the pump. Craig’s pump device has an outlet (Fig. 1, connection between 20 and 32) and the pump device is configured to pump at a pressure.
Craig is silent to (a) the material container configured to treat a material, and (b) the pump device is configured to provide the material at the outlet of the pump device at a pressure of at least 15 bar.
Regarding (a), Brady teaches a device configured for mixing and dispensing polyol and isocyanate to form a foam. The Brady reservoirs are connected to a vacuum to remove air from the material, which meets the claimed device configured to treat a material. It would have been prima facie obvious to one of ordinary skill in the art to incorporate the Brady vacuum onto the Craig pump device as an obvious improvement. Craig provides a base device for mixing polyol and isocyanate to form a foam (Abstract), and Brady provides a known feature (vacuum) applicable to mixing polyol and isocyanate, and applying the vacuum of Brady to the Craig device would yield the predictable result that removing the air from the raw materials would control the number of large voids throughout the material ([0190]).
Regarding (b), Nodelman teaches a foam machine for mixing polyol and isocyanate and the piston pumps are capable of operating at an injection pressure of 150 bar. It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Nodelman pump (configured to pump at 150 bar) into Craig because this is an obvious interchangeable substitute pump. The substituted pump and its function (for pumping polyols and isocyanate to form a foam) were known in the art and one of ordinary skill in the art could have substituted the Craig pump for the Nodelman pump to provide a predictable result (higher throughput or foaming rate).
As to claims 2 and 4, the Brady device is configured to apply vacuum, which suggests a pressure of 0 bar, which is a pressure less than 1.0 bar and less than 0.6 bar. As to claim 3, Craig provides a piston pump which would inherently regulate a volume flow of material. Nodelman provides a pump configured to operate at a pressure greater than 60 bar. As to claim 5, the material worked upon does not structurally limit the claimed apparatus and is therefore met by the modified Craig device above. However, note that Craig also does teach polyol and suggests diisocyanate (by reference to U.S. Patent 5,264,464) that would meet the stated materials.
As to claim 6, Craig uses the device of claim 1. Craig provides the polyurethane precursor in a material container (28), introduces the precursor into a pump device (3:25-35), pump the precursor thereby inherently increasing the pressure, and discharging the material into a mixing.
Craig is silent to (a) treating a material in a material container, and (b) a pressure of at least 15 bar at the outlet of the pump device.
Regarding (a), Brady teaches a device for mixing and dispensing polyol and isocyanate to form a foam. The Brady reservoirs are connected to a vacuum to remove air from the material, which meets the claimed treating a material in a material container. It would have been prima facie obvious to one of ordinary skill in the art to incorporate the Brady vacuum onto the Craig pump device as an obvious improvement. Craig provides a base device for mixing polyol and isocyanate to form a foam (Abstract), and Brady provides a known feature (vacuum) applicable to mixing polyol and isocyanate, and applying the vacuum of Brady to the Craig device would yield the predictable result that removing the air from the raw materials would control the number of large voids throughout the material ([0190]).
Regarding (b), Nodelman teaches a foam machine for mixing polyol and isocyanate and the piston pumps are capable of operating at an injection pressure of 150 bar. It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Nodelman pump (configured to pump at 150 bar) into Craig because this is an obvious interchangeable substitute pump. The substituted pump and its function (for pumping polyols and isocyanate to form a foam) were known in the art and one of ordinary skill in the art could have substituted the Craig pump for the Nodelman pump to provide a predictable result (higher throughput or foaming rate).
As to claim 7, the modified Craig apparatus would obviously be used in a process to produce a polymerized polyurethane (Abstract).
As to claim 8, Craig teaches a material treatment device comprising a material container (Fig. 1, item 28) and a pump device (Fig. 1, item 30). Craig’s pump device (Fig. 1, item 30) has an inlet (Fig. 1, item 29) fluidly connected to the material container (Fig. 1, item 29) for introduction of the material into the pump. Craig’s pump device has an outlet (Fig. 1, connection between 20 and 32) and the pump device is configured to pump at a pressure. Craig teaches that each of the two reactants (polyol, isocyanate) has a pump device (col. 3, lines 25-32), which meets the claimed first device and second device. Craig teaches an application device (Fig. 1, items 36 and 56) connected to both material treatment devices (through items 32 and 40) such that the application device is configured to mix the first material and second material (Fig. 1, item 38) and apply the mixture. The battery is interpreted to be an unpatentable statement of intended use.
Craig is silent to (a) the material container configured to treat a material, and (b) the pump devices are configured to provide the material at the outlet of the pump device at a pressure of at least 15 bar.
Regarding (a), Brady teaches a device for mixing and dispensing polyol and isocyanate to form a foam. The Brady reservoirs are connected to a vacuum to remove air from the material, which meets the claimed device configured to treat a material. It would have been prima facie obvious to one of ordinary skill in the art to incorporate the Brady vacuum onto the Craig pump device as an obvious improvement. Craig provides a base device for mixing polyol and isocyanate to form a foam (Abstract), and Brady provides a known feature (vacuum) applicable to mixing polyol and isocyanate, and applying the vacuum of Brady to the Craig device would yield the predictable result that removing the air from the raw materials would control the number of large voids throughout the material ([0190]).
Regarding (b), Nodelman teaches a foam machine for mixing polyol and isocyanate and the piston pumps are capable of operating at an injection pressure of 150 bar. It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Nodelman pump (configured to pump at 150 bar) into Craig because this is an obvious interchangeable substitute pump. The substituted pump and its function (for pumping polyols and isocyanate to form a foam) were known in the art and one of ordinary skill in the art could have substituted the Craig pump for the Nodelman pump to provide a predictable result (higher throughput or foaming rate).
As to claim 9, Craig provides piston pumps (Fig. 1, item 30) which would inherently act as first and second metering device to regulate a volume flow of material to the application device. As to claims 10 and 11, Craig provides third metering device (Fig. 1, regulator 90) configured to receive gas and set gas flow volume to the application device. The Craig device is connected to the two material treatment devices configured to supply first material and second material (Fig. 1, items 32 and 40).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The other alternative structural limitations in claim 4 (besides the one already addressed in the rejection above) are conventional in mixing and foaming polyurethane and are met by Contastin (US 3,892,389) (see agitating and heating of reactants, Fig. 1, items 4, 5, 6).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW J DANIELS/Primary Examiner, Art Unit 1742
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