Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1, line 8, "results formation" should be changed to --results in formation—for proper idiomatic language. Appropriate correction is required.
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.
Claim 1 is 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.
Claim 1 recites "the liquid vortex defining an air gap between the rotating solution and the liquid
vortex" which is incorrect and unclear. The liquid vortex does not define an air gap. Claim 1 recites "the rotating solution" and "the liquid" which lack antecedent basis. The Examiner suggests the following amendments (including the suggested amendment to fix the claim objection as mentioned above):
1. A method comprising:
providing a polymer in a solution;
generating a liquid vortex in a liquid in a collection device
rotating the solution to cause ejection of the solution in a jet into an between the
rotating solution and the liquid vortex; and
collecting the jet of solution from the air gap in the liquid of the collection device,
wherein the ejection of the solution into the air gap and subsequently into the liquid of the collection device results in formation of a polymeric fiber.
For further examination purposes, the scope of claim 1 is read in light of the suggested Examiner amendments.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Hooper (US
1,500,934).
Hooper (US 1,500,934) teaches a method (figs. 1-2) comprising:
providing a polymer in a solution (p. 1, lines 8-16, viscose solution);
generating a liquid vortex 25 in a collection device (figs. 1-2), the liquid vortex 25 defining an air gap 34 between the rotating solution and the liquid vortex 25 (figs. 1-2); and
rotating the solution to cause ejection of the solution in a jet into the air gap 34 (figs. 1-2); and collecting the jet of solution from the air gap 34 in the liquid 25 of the collection device (figs. 1-2),
wherein the ejection of the solution into the air gap 34 and subsequently into the liquid 25 of
the collection device results in formation of a polymeric fiber (figs. 1-2; p. 1, line 75, to p. 2, line 72; column 25 of whirling solution (i.e., vortex)).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 1 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Luo et al. (US 2002/0148050) in view of Brundige et al. (US 3,441,473).
Luo et al. (US 2002/0148050) disclose a method (fig. 2) comprising:
providing a polymer in a solution [0017], [0028];
providing a liquid 10 in a collection device 12; and
rotating the solution to cause ejection of the solution in a jet into an air gap between the
rotating solution and the liquid 10 (fig. 2; [0049]); and
collecting the jet of solution from the air gap in the liquid of the collection device, wherein the
ejection of the solution into the air gap and subsequently into the liquid of the collection device results
in formation of a polymeric fiber [0049].
However, Luo et al. (US 2002/0148050) does not disclose generating a liquid vortex in the liquid
in the collection device.
Brundige et al. (US 3,441,473) disclose a method (fig. 1) comprising:
generating a liquid vortex in a liquid 48 of a collection device 32; and
ejecting jets from a nozzle 24 into an air gap between the nozzle 24 and the liquid vortex (fig. 1);
and
collecting jets from the air gap in the liquid 48 of the collection device 32, wherein the ejection
into the air gap and subsequently into the liquid 48 of the collection device 32 results in formation of
fibers (col. 4, lines 23-60).
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to modify the liquid of Luo et al. (US 2002/0148050) by generating a liquid vortex in the liquid, as disclosed by Brundige et al. (US 3,441,473), because such a modification is known in the art and would
provide an alternative configuration for collecting the fibers in a liquid known to be operable in the art.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,174,571. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is fully encompassed by claim 14.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gonzalez et al. (US 2022/0380943) disclose a method of making fiber using a liquid vortex (e.g., see fig. 1a).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/John J. DeRusso/Primary Examiner, Art Unit 1744
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