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 .
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 1-11 and 17-19 and 21-23 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.
Applicants’ originally filed supporting disclosure lacks support for the ranges of polyether polyol and polyester polyol inclusion values that are recited by the claims. No disclosures that support the ranges of values as set forth for the materials as defined by the claims are seen in the originally filed supporting disclosure or identified by applicants in the evidence of record. This lack of support also includes the more particularly recited ranges of values set forth by claims 2 and 22.
This is a new matter rejection.
Regarding claims 17-19 and 21-23, applicants’ originally filed supporting disclosure lacks support for the recited kit configurations as set forth by the claims. Regarding the recitation “wherein the kit is configured for dispensing at a pressure of less than 250 psi”, there is no disclosures that supports the arrangement as now prescribed that is “configured for dispensing at a pressure of less than 250 psi”, as opposed to not being “configured for dispensing at a pressure of less than 250 psi”. Further, regarding claim 19, there are no disclosures that support the particular ranges of pressurization values as set forth for the kit components as defined by the claims that are seen in the originally filed supporting disclosure or identified by applicants in the evidence of record.
This is a new matter rejection.
Claims have been treated as if any arrangement of the components that define the kit that are capable of being dispensed are sufficient to meet the dispensing configuration requirements of these claims.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,595,347. Although the claims at issue are not identical, they are not patentably distinct from each other because they differ in overlap of make-up and content of the B-side component elements in a manner which would have been obvious to one having ordinary skill in the art with the expectation of success in the absence of a showing of new or unexpected results.
Response to Arguments
Applicants’ arguments on reply have been considered. However, they are unpersuasive.
Regarding rejection under the “Double Patenting” heading, terminal disclaimer has been disapproved because Form PTO/AIA /26 (4-13) reference application number should not have a (,).
Regarding rejections under 35USC112 heading, the new matter rejection specific to claim 12 has been withdrawn in light of the claim’s cancellation. The rejection under 35USC112(b) is withdrawn in light of applicants’ amendment.
Regarding the remaining new matter rejections, applicants’ arguments have been considered, but are unpersuasive. Regarding the range of polyester polyol amount allowances as now claimed, non-specific disclosures regarding amounts along with disclosure of individual amounts of polyester polyol in specific formulations are not supportive of the range of amount values now set forth by the claims for the formulations as defined by the claims. In addition to support for the range of values being lacking in the originally filed supporting disclosure, there is insufficient support for the upper endpoint of “less than 40% by weight”. Regarding the range of polyether polyol amount values, it is held as well that non-specific disclosures regarding amounts along with disclosure of individual amounts of polyether polyol in specific formulations are not supportive of the range of amount values now set forth by the claims for the formulations as defined by the claims.
Regarding the rejection specific to claims 17-19 and 21-23, no arguments specific to the position as laid out above have been set forth in applicants’ remarks on reply, and support is not seen evident on its own. There is nothing in consideration of applicants’ originally filed supporting disclosure that offers support for the now recited claim limitation directed towards “configuring” the compositions of applicants claimed invention to be capable of being released at pressures of less than 250 psi as opposed to not being capable of being released at pressures of less than 250 psi.
Rejection under 35USC103 is withdrawn. In light of applicants’ arguments and declaration and on closer consideration, it is seen and agreed that the claims so limit the HFO propellant of the B-side component defined by the claims and/or included as a component of the kits defined by the claims as to exclude the required 1336mzzm blowing agent of the primarily cited Van Der Puy reference. It is agreed that modification to exclude 1336mzzm from the B-side component of the cited Van Der Puy et al. reference would destroy the principle operations and/or requirements of its stated disclosure {see also MPEP 2143.01 VI. As well as V.}.
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. 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.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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