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 .
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 1-9 and 11, 12 and 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over at least claim 7 of U.S. Patent No. 11,134,653. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,134,653 anticipate the claims of the instant invention. Although the ranges of the various elements of the instant invention have been changed, they fall within the ranges of the elements of the parent claim, rendering them obvious. Newly added limitations to at least instant claims 1 and 7 are found within claim 7 of U.S. Patent No. 11,134,653. Claims 1 and 7 of the instant invention is anticipated by claim 7 of U.S. Patent No. 11,134,653. Claim 5 of the instant invention is anticipated by claim 11 of U.S. Patent No. 11,134,653.
Claims 2-4, 6, 8, 9, 11, 12, and 19-21 depend from rejected claims 1 and 7 and are subsequently rejected.
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 1-6, 7-9, 11, 12, 19-21 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. All of the ranges found in numerous claims have been changed to ranges that fall outside of the ranges presented by the instant disclosure. A non-exhaustive list is below.
Claims 1, 7, and 22 recite the weight percentage of the agglomerate biomass material being about 90 to about 92 percent. The instant disclosure lists the weight percentage at about 80 to about 90 percent.
Claims 1, 7, and 22 recite the weight percentage of the surface adhesion element being about 1 to about 2 percent. The instant disclosure lists the weight percentage at about 3 to about 6 percent (instant disclosure, ¶0006).
Claims 1, 7, and 22 recite the weight percentage of the performance amendment being about 4 to about 10 percent. The instant disclosure lists the weight percentage at about 6 to about 18 percent (instant disclosure, ¶0011).
Newly amended claims 6 and 12 contain the limitation of the ratio of the biomass particles to bentonite being about 6 to 1 to about 20 to 1. The ratio of 20 to 1 falls outside of the ratio of the instant disclosure (instant disclosure, ¶0006).
Claim 8 contains the newly added limitation of the biomass material having a bulk density after desiccation of about 36 to about 37 lb/ft3 (about 577 to about 593 kg/m3). This falls outside the range of the instant disclosure (instant disclosure, ¶0008).
Claim 21 contains the newly added limitation of the biomass material having a bulk density after desiccation of about 0.3 g/cc to about 0.5g/ccc. This falls outside the range of the instant disclosure (instant disclosure, ¶0008).
Claims 2-6, 9, 11, and 19-21 depend from rejected claims as discussed above and are subsequently rejected.
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 3-6, 9, 12, and 22 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.
Regarding claims 3 and 9, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 4 is redundant, as all the limitations of claim 4 are found in parent claim 1.
Claim 12 recites the limitation "the bentonite" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the performance amendment powder" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claims 5 and 6 depend from rejected claim 4 and are subsequently rejected.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
The non-statutory double patenting rejection remains and is further elaborated above. Claims of U.S. Patent No. 11,134,653 anticipate claims of the instant invention.
Applicant’s arguments with respect to claims rejected under of Huck, Lipscomb, and the statutory double patenting rejection have been fully considered and are persuasive. The rejection of the claims has been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Wiedenhaft et al US 6662749 discloses an animal litter product comprising a biomass material, surface adhesion agent, and weight performance amendment (Wiedenhaft, abstract). Wiedenhaft fails to disclose the specific weight percentages of each element of the animal litter product or its specific composition as claimed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN C HAYES whose telephone number is (571)272-7881. The examiner can normally be reached M-F 8am-6pm.
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, Michener Joshua can be reached at 571.272.1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KRISTEN C HAYES/Primary Examiner, Art Unit 3642
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