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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species (1), directed to claims 1-7, 15 and 22, in the reply filed on 01/07/26, is acknowledged.
Claims 9, 11, 13, 14, 16, 17, 19, 20 and 23-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/07/26.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The listing of references on pages 7-8 of the specification is acknowledged. However, if the references were not submitted on the information disclosure statements of record, they have not been considered.
Additional references are also noted as listed on pages 20 and 31.
Drawings
The drawings are objected to because each of the graphs presented in Figures 1 and 2 is very faint; the text is difficult to read and the different lines presented in the legend for each plot are difficult to distinguish. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The attempt to incorporate subject matter into this application by reference to PCT/EP2015/001103 on page 25 is ineffective because the reference is to a foreign application.
The incorporation of essential material in the specification by reference to an unpublished U.S. application, foreign application or patent, or to a publication is improper. Applicant is required to amend the disclosure to include the material incorporated by reference, if the material is relied upon to overcome any objection, rejection, or other requirement imposed by the Office. The amendment must be accompanied by a statement executed by the applicant, or a practitioner representing the applicant, stating that the material being inserted is the material previously incorporated by reference and that the amendment contains no new matter. 37 CFR 1.57(g).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 and 22 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by OVREBO et al. (WO 2022/189654 A1).
With respect to independent claim 1, OVREBO et al. discloses a composition capable of scavenging of reducing sulfur-containing compounds in a fluid (a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art), the composition comprising: a hydrogen sulfide scavenger ([0105], wherein OVREBO et al. discloses Applicant’s elected lignosulfonate, and, thus, a hydrogen sulfide scavenger as claimed); and a dispersant, wherein the dispersant comprises or consists of MFC ([0035]-[0039]).
With respect to dependent claim 2, OVREBO et al. discloses wherein the composition is capable of scavenging or reducing hydrogen sulfide in the fluid since a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. Furthermore, OVREBO et al. provides for both a lignosulfonate, i.e., Applicant’s elected hydrogen sulfide scavenger, and MFC, and therefore provides for a composition that is identical to that instantly claimed by claim 1 and it has been held “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(1).
With respect to dependent claims 3 and 4, OVREBO et al. discloses wherein the dispersant (MFC) is present in an amount as claimed ([0094]).
With respect to dependent claims 5 and 6, OVREBO et al. discloses wherein the hydrogen sulfide scavenger comprises or consists of a lignosulfonate derivative, and, further wherein such comprises or consists of a lignosulfonate metal salt ([0105]).
With respect to independent claim 22, OVREBO et al. discloses a composition capable of treating a wellbore, subterranean formation or reservoir ([0035]), the composition comprising: a treatment fluid ([0035]); a hydrogen sulfide scavenger ([0105], wherein OVREBO et al. discloses Applicant’s elected lignosulfonate, and, thus, a hydrogen sulfide scavenger as claimed); and a dispersant, wherein the dispersant comprises or may consist of MFC ([0035]-[0039]).
([0034]), the composition comprising: a hydrogen sulfide scavenger ([0019]-[0020]); and a dispersant ([0009]-[0012]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over OVREBO et al. as applied to claim 6 above, and further in view of Onan et al. (US 5,501,277).
OVREBO et al. discloses the composition as set forth above with respect to claim 6, wherein sodium lignosulfonate is included in the composition. The reference, however, fails to disclose wherein the lignosulfonate includes a polyvalent metal cation as claimed. Onan et al. teaches the inclusion of sodium lignosulfonate in well compositions, wherein calcium lignosulfonate is used as an alternative thereto (col. 5, l. 20-25). It would have been obvious to one having ordinary skill in the art to try a polyvalent metal cation lignosulfonate, such as calcium, as an alternative to the sodium lignosulfonate disclosed therein as such is but a known alternative thereto and thus would be expected to yield predictable results.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over OVREBO et al..
OVREBO et al. discloses the composition as set forth above with respect to independent claim 1 and further suggests through example wherein sodium lignosulfonate can be included in the composition in an amount of 5 lb/bbl ([0139]). Although silent to the weight percent thereof, given the extensiveness of the instantly claimed range, it is the position of the Office that one having ordinary skill in the art would recognize the optimal amount of sodium lignosulfonate to include in the composition of OVREBO et al. in order to effectively control fluid loss therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent for the hydrogen sulfide scavenger as critical, as further exemplified by the extensiveness of the range claimed therefor, and it is unclear if any unexpected results are achieved by providing for such in such amounts. As such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art given the suggested amounts provided for by OVREBO et al..
Claims 1-4, 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. (US 2019/0367799) in view of Lillandt et al. (JP 2017519909 A – all citations are to provided translation).
With respect to independent claim 1, Gupta et al. discloses a composition capable of scavenging of reducing sulfur-containing compounds in a fluid ([0034]), the composition comprising: a hydrogen sulfide scavenger ([0019]-[0020]); and a dispersant ([0009]-[0012]).
Gupta et al. discloses wherein the dispersants may be cationic, anionic, or non-ionic, and, further, provides several examples, including polymeric dispersants and surfactants ([0009]-[0012]). The reference, however, fails to sufficiently disclose, teach and/or suggest wherein the dispersant comprises or consists of microfibrillated cellulose as instantly claimed.
Lillandt et al. teaches microfibrillated cellulose as an additive used in oil and mining applications, wherein such can be used for surfactants, as well as as a dispersant to control the dispersion or suspension (p. 5, paragraph towards bottom beginning with “Microfibrillated cellulose produced”).
Since Gupta et al. discloses wherein the dispersant may be polymeric and/or a surfactant and Lillandt et al. suggests microfibrillated cellulose as an additive for oil and mining applications, wherein such can act as a surfactant/dispersant, it would have been obvious to one having ordinary skill in the art to try microfibrillated cellulose as the dispersant in the composition of Gupta et al. in order to yield the predictable result of controlling the dispersion of water insoluble particulates therewith so that they do not precipitate in the treatment fluids.
With respect to dependent claim 2, Gupta et al. suggests wherein the composition is capable of scavenging or reducing hydrogen sulfide in the fluid ([0019]-[0020], i.e., by inclusion of the hydrogen sulfide scavenger therein).
With respect to dependent claims 3 and 4, Gupta et al. discloses wherein the dispersant may be present in the treatment fluid in an amount of 0.5-25 vol% ([0018]). Although silent to the associated weight percent thereof, given the suggestion for the use of microfibrillated cellulose as the dispersant of Lillandt et al., it would have been obvious to one having ordinary skill in the art to provide for the microfibrillated cellulose dispersant in the composition of Gupta et al. in view of Lillandt et al. in an amount within the range as claimed in order to effectively disperse water insoluble particulates so that they do not precipitate in the treatment fluids therewith ([0009]) since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent for the dispersant as critical and it is unclear if any unexpected results are achieved by providing for such in such amounts. Since the composition of Gupta et al. in view of Lillandt et al. provides for the use of microfibrillated cellulose as a dispersant in composition capable of reducing sulfur-containing compounds in a fluid, it does not appear that such would be considered an unexpected result of using the dispersant in the amount presently claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to dependent claim 15, Gupta et al. discloses wherein the hydrogen sulfide scavenger is present in the treatment fluid in ana mount of about 0.1-10 volume percent ([0020]). Although silent to the associated weight percent thereof, it would have been obvious to one having ordinary skill in the art to provide for the hydrogen sulfide scavenger in the composition of Gupta et al., in view of Lillandt et al., in an amount within the range as claimed in order to remove metal sulfide deposits therewith since it has been held wherein generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.). See also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 wherein it was held "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." and In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) wherein claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Lab. Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (identifying "the need for caution in granting a patent based on the combination of elements found in the prior art."). Additionally, the Examiner notes, obviousness can be shown in a predictable art when a difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality. In re Brandt, 886 F. 3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018). The instant specification fails to explicitly establish the instantly claimed weight percent for the hydrogen sulfide scavenger as critical, as further exemplified by the extensiveness of the range claimed therefor, and it is unclear if any unexpected results are achieved by providing for such in such amounts. Since the composition of Gupta et al. in view of Lillandt et al. is capable of reducing sulfur-containing compounds in a fluid, it does not appear that such would be considered an unexpected result of providing for the hydrogen sulfide scavenger in the amounts presently claimed, and, as such, the determination of optimal weight percent thereof would be achievable through routine experimentation in the art.
With respect to independent claim 22, Gupta et al. discloses a composition capable of treating a wellbore, subterranean formation or reservoir (abstract), the composition comprising: a treatment fluid ([0007]); a hydrogen sulfide scavenger ([0019]-[0020]); and a dispersant ([0009]-[0012]).
Gupta et al. discloses wherein the dispersants may be cationic, anionic, or non-ionic, and, further, provides several examples, including polymeric dispersants and surfactants ([0009]-[0012]). The reference, however, fails to sufficiently disclose, teach and/or suggest wherein the dispersant comprises or may consist of microfibrillated cellulose as instantly claimed.
Lillandt et al. teaches microfibrillated cellulose as an additive used in oil and mining applications, wherein such can be used for surfactants, as well as as a dispersant to control the dispersion or suspension (p. 5, paragraph towards bottom beginning with “Microfibrillated cellulose produced”).
Since Gupta et al. discloses wherein the dispersant may be polymeric and/or a surfactant and Lillandt et al. suggests microfibrillated cellulose as an additive for oil and mining applications, wherein such can act as a surfactant/dispersant, it would have been obvious to one having ordinary skill in the art to try microfibrillated cellulose as the dispersant in the composition of Gupta et al. in order to yield the predictable result of controlling the dispersion of water insoluble particulates therewith so that they do not precipitate in the treatment fluids.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al. in view of Lillandt et al. as applied to claim 1 above, and further in view of Olson (US 4,540,561).
Gupta et al. in view of Lillandt et al. provides for the composition as set forth above with respect to claim 1, wherein Gupta et al. discloses various hydrogen sulfide scavengers, including chelating agents ([0018]). The reference, however, fails to disclose wherein the hydrogen sulfide scavenger comprises or consists of a lignosulfonate or derivative thereof, and, further, wherein such comprises/consists of a lignosulfonate metal salt, wherein, further, the metal is a polyvalent metal cation. Olson teaches a hydrogen sulfide scavenger used for the removal of hydrogen sulfide from a fluid stream, wherein such comprises a polyvalent metal chelate of lignosulfonate in the form of iron (III) lignosulfonate (abstract). The iron reacts with the hydrogen sulfide so as to reduce/remove such from the fluid; iron (III) lignosulfonate is further suggested as being low cost (col. 1, l. 30-col. 2, l. 20).
Since Gupta et al. discloses wherein the hydrogen sulfide scavenger may include chelating agents and Olson teaches a polyvalent metal chelate lignosulfonate as a low cost hydrogen sulfide scavenger, it would have been obvious to one having ordinary skill in the art to try such a lignosulfonate as the hydrogen sulfide scavenger in the composition of Gupta et al. in order to yield the predictable result of reducing/removing hydrogen sulfide therewith.
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 1-7, 15 and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-7, 9, 12 and 16-17 of copending Application No. 18/841845 (‘845 herein) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and those of ‘845 provide for a composition comprising MFC as a dispersant and a lignosulfonate, wherein such are further recited in ‘845 as present in amounts overlapping those instantly claimed. Since the instant claims are fully encompassed by those of ‘845, the instant composition would thus be obvious thereover and the instant application is therefore not patentably distinct from ‘845.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2020/0236926 discloses a composition comprising MFC and a lignosulfonate dispersant.
US 2018/0148630 discloses a composition comprising MFC and a lignosulfonate dispersant.
US 2015/0072902 discloses a composition comprising MFC and a lignosulfonate retarder.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Angela M DiTrani Leff whose telephone number is (571)272-2182. The examiner can normally be reached Monday-Friday, 9AM-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Doug Hutton can be reached at 5712724137. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Angela M DiTrani Leff/Primary Examiner, Art Unit 3674
ADL
03/06/26