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 .
Response to Restriction
The Examiner acknowledges that the Applicant has elected claims 10-18 for examination.
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.
Claim(s) 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 12,274,262. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of the application requires a substrate comprising three layers dosed with a volatile material that is released at a rate of 10 mg/day. Claim 1 of the patent requires these features with slightly different verbiage. The difference in verbiage does not materially change the invention.
Claim(s) 10, 14 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 11,944,096. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of the application requires a substrate comprising three layers dosed with a volatile material that is released at a rate of 10 mg/day. Claim 1 of the patent requires these features with slightly different verbiage. The difference in verbiage does not materially change the invention.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 10-14, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kashima (US Pub. 2017/0325442 A1) in view of Swanson (US Pat 10,694,747 B2).
Regarding claim 10, Kashima discloses a method of producing a substrate for emitting a volatile material (Abstract, lines 5-9: “A chemical agent vaporizing/discharging device 100 comprises: a chemical agent retainer 50 having a chemical agent retention layer 10 including interstices 11 for allowing retention of a volatile chemical agent”), the method comprising the steps of:
connecting a first layer having a first weave pattern to a second layer having a second weave pattern that is different than the first weave pattern; connecting a third layer to the second layer (Fig. 1, layers 10, 20, 30 are attached to each other and appear to have unique patterns);
and dosing the substrate with the volatile material (The abstract discloses the substrate being dosed with a volatile substance).
However, Kashima fails to disclose as taught by Swanson, dosing the substrate with the volatile material, wherein the substrate is configured to provide a steady state weight loss of the volatile material between about 1 mg/day and about 10 mg/day over a time of at least 30 days (Abstract, lines 4-6: “Upon activation, the dispenser exhibits an effective release rate of the insect control active of about 0.1 to about 0.3 mg/hr.” This translates to 2.4 mg/day to 7.2 mg/day which is within the same order of magnitude as the instant application. Col. 8, lines 26-34: “Dispensers of the present disclosure may be used in an interior space or an exterior space. For example, a dispenser 10 may be effective against mosquitoes in a room having a size of about 3 x about 3 meters, or about 4x about 4 meters, or about 5x about 5 meters, or more or less. Further, dispensers of the present disclosure may have an effective duration of continuous use of about 1 day, or about 2 days, or about 4 days, or about 7 days, or about 2 weeks, or about 1 month, or about 2 months, or more or less”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of producing a substrate for emitting a volatile material of Kashima to include the release rate of Swanson for adequate longevity.
Regarding claim 11, Kashima in view of Swanson discloses the claimed invention in addition to as taught by Kashima, wherein the volatile material comprises an active agent and a solvent (Pg. 4, [0056], lines 1-3: “The volatile chemical agent may be used directly, or alternatively, may be diluted with various solvents, or may be blended with various additives”).
Regarding claim 12, Kashima in view of Swanson discloses the claimed invention in addition to as taught by Kashima, wherein the active agent is transfluthrin (Pg. 4, [0054], lines 18-21: “Examples of a useful volatile pyrethroid compound include 2,3,5,6-tetrafluorobenzyl 2,2-dimethyl-3-(2,2-dichlorovinyl) cyclopropane carboxylate (transfluthrin)”).
Regarding claim 13, Kashima in view of Swanson discloses the claimed invention in addition to as taught by Kashima, wherein the substrate is initially dosed with between about 20 mg and about 200 mg of the active agent (Pg. 4, [0054], lines 3-5: “The amount of the volatile chemical agent retained in the chemical agent retainer 50 is adjustable within the range of 40 to 2000 mg”).
Regarding claim 14, Kashima in view of Swanson discloses the claimed invention in addition to as taught by Kashima, wherein the third layer is a non-woven layer (Pg. 3, [0049], lines 1-5: “The chemical agent retention layer 10 and the gas permeable layer 20 preferably include a fibrous structure such as a mesh fiber sheet, woven fabric, nonwoven fabric, knitting, or the like, or alternatively, may include a porous material such as a porous sheet, porous film, or the like”).
Regarding claim 16, Kashima in view of Swanson discloses the claimed invention in addition to as taught by Kashima, wherein fibers of the first layer, fibers of the second layer, and fibers of the third layer are interwoven (Pg. 3, [0051], lines 9-12: “The form maintenance layer 30 is interwoven with fibers included in the gas permeable layer 20, and thereby functions to maintain the voids 21 of the gas permeable layer 20”).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kashima (US Pub. 2017/0325442 A1) in view of Swanson (US Pat 10,694,747 B2), and further in view of Bodkhe (US Pub. 2022/0280682 A1).
Regarding claim 15, Kashima in view of Swanson discloses the claimed invention except for as taught by Bodkhe, wherein fibers of the first layer, fibers of the second layer, and fibers of the third layer are connected with adhesive (Pg. 8, [0085], lines 1-9: “In some embodiments, the at least one layer 30 adheres directly to the substrate 10. Optionally, the article 100 can comprise a first adhesive 20 adhered to at least a portion (e.g., at least 5%, at least 10%, at least 20%, at least 30%, at least 40%, at least 50%, at least 60%, at least 70%, at least 80%, at least 90% or 100%) of the surface area of first major surface 12. Thus, in some embodiments, the at least one layer 30 can be adhered to the first adhesive 20”).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of producing a substrate for emitting a volatile material of Kashima in view of Swanson to include the adhesive of Bodkhe to bind the layers together.
Allowable Subject Matter
Claim(s) 17-18 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY HOOPER MUDD whose telephone number is (571)272-5941. The examiner can normally be reached Monday-Friday 8am-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, Joshua Michener can be reached at 5712721467. 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.
/HENRY HOOPER MUDD/Examiner, Art Unit 3642
/JOSHUA J MICHENER/Supervisory Patent Examiner, Art Unit 3642
Prosecution Insights