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 .
Claim Objections
Claim 9 is objected to because of the following informalities:
The phrase “soybean oil sunflower oil” should read --soybean oil, sunflower oil--.
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.
Claims 1-20 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.
In regards to Claim 1, the phrase “related fishing tackle and gear” is unclear. The metes and bounds cannot be determined. Does this include a pole? Tackle box? Truck? Waders? The ordinarily skilled artisan would be unable to clearly determine the limitations of the claim language.
Further in regards to Claim 1, the phrase “degradable natural fiber and polymer matrix core” is ambiguous. Are both the degradable natural fiber and the polymer matrix in the core, or is only the polymer matrix in the core? Are both part of the degradable composition, which is intended to be used as a core? The claim does not teach that the degradable composition has a core or sheath. Further, is only the natural fiber degradable, or are both the natural fiber and the polymer matrix degradable?
In regards to Claim 2, the phrase “the degradable polymer” is unclear. Is this the same as the “polymer matrix”? If so, the phrases are not in agreement, and Claim 1 does not clearly state that the polymer is degradable.
In regards to Claim 3, the phrase “the degradable polymer” is unclear. Is this the same as the “polymer matrix”? If so, the phrases are not in agreement, and Claim 1 does not clearly state that the polymer is degradable.
In regards to Claim 4, the phrase “the degradable polymer” is unclear. Is this the same as the “polymer matrix”? If so, the phrases are not in agreement, and Claim 1 does not clearly state that the polymer is degradable.
In regards to Claim 9, the phrase “com oil” is not clear. What is com?
In regards to Claim 10, the phrase “the degradable polymer” is unclear. Is this the same as the “polymer matrix”? If so, the phrases are not in agreement, and Claim 1 does not clearly state that the polymer is degradable.
Further in regards to Claim 10, the phrase “the additive” lacks proper antecedent basis.
In regards to Claim 12, the phrase “the natural fiber core” lacks proper antecedent basis.
Further in regards to Claim 12, Claim 12 depends from Claim 11, which states that the natural fiber is plant-derived. As such, linen, lignin, chitin, and silk are not plant derived natura fibers. Linen is a fabric, lignin and chitin are components, not fibers, and silk is from a silk worm.
In regards to Claim 13, the phrase “the natural fiber core” lacks proper antecedent basis.
In regards to Claim 14, the phrase “renewable and degradable natural fiber and polymer matrix core” is ambiguous. Are both the renewable and degradable natural fiber, and the polymer matrix in the core, or is only the polymer matrix in the core? Are both part of the degradable composition, which is intended to be used as a core? The claim does not teach that the degradable composition has a core or sheath. Further, is only the natural fiber renewable and degradable, or are both the natural fiber and the polymer matrix renewable and degradable?
In regards to Claim 15, the phrase “related fishing tackle and gear” is unclear. The metes and bounds cannot be determined. Does this include a pole? Tackle box? Truck? Waders? The ordinarily skilled artisan would be unable to clearly determine the limitations of the claim language.
Further in regards to Claim 15, the phrase “minor components” is unclear. What is considered “minor” versus major? How is this measured or determined?
Still further in regards to Claim 15, the phrase “generally recognized and used” is unclear. What does this mean? How is “generally recognized” measured or determined?
In regards to Claim 18, the phrase “essentially non toxic and environmentally safe” is unclear. How can something be essentially non toxic? Either something is toxic, or it is non toxic. Further, how is “environmentally safe” measured or determined?
In regards to Claim 19, the phrase “substantially faster than conventional materials” is unclear. If the conventional materials are unknown, how can one of ordinary skill in the art determine if something is faster?
The remaining claims inherit the rejection by dependency.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, and 10-20 is/are rejected, to the degree definite, under 35 U.S.C. 102(a)(1) as being anticipated by Wilcox (20190307111).
In regards to Claim 1, Wilcox teaches a degradable composition for fishing lines, nets, leaders, tippets, lures, hooks, weights, floats as well as related fishing tackle and gear comprising a degradable natural fiber (Claim 1: hemp) and polymer (Claim 1: polysaccharide) matrix core.
In regards to Claim 2, Wilcox teaches the degradable polymer comprises components derived from i) biomass sources, ii) protein, fatty acid or lipid sources, iii) microbial-based monomers and polymers, iv) agro-based monomers and polymers, v) sugar or starch-based monomers and polymers, or combinations thereof (Claim 1: polysaccharide).
In regards to Claim 3, Wilcox teaches the degradable polymer comprises a polylactide, a polybutylene succinate, a polybutylene succinate adipate, a poly lactic acid, a polyhydroxyalkanoate, a polyhydroxy butyrate, a poly(butylene adipate-co-terephalate), a poly alginate, a polyglycolide, a polyhydroxyalkaonate, a polysaccharide, a starch, a protein, a fatty acid, a lipid, a lignin, a chitin, or combinations thereof (Claim 1: polysaccharide).
In regards to Claim 5, Wilcox teaches an additive (Claim 1: combination thereof including polylactide).
In regards to Claim 10, Wilcox teaches the degradable polymer comprises components from renewable materials, and wherein the additive comprises components that are degradable or components from renewable materials, or both components that are degradable and from renewable materials (Claim 1: polysaccharide).
In regards to Claim 11, Wilcox teaches a plant-derived natural fiber (Claim 1: hemp).
In regards to Claim 12, Wilcox teaches the natural fiber core comprises cotton, jute, hemp, silk, bamboo, linen, flax, sisal, lignin, chitin, or combinations thereof (Claim 1: hemp).
In regards to Claim 13, Wilcox teaches the natural fiber core comprises hemp (Claim 1: hemp).
In regards to Claim 14, Wilcox teaches a degradable composition for a fishing line or fishing net consisting essential of i) a renewable and degradable natural fiber (Claim 1: hemp) and polymer (Claim 1: polysaccharide) matrix core, and ii) a renewable and degradable additive (Claim 1: combination thereof including polylactide).
In regards to Claim 15, Wilcox teaches the fishing lines, nets, leaders, tippets, lures, hooks, weights, floats as well as related fishing tackle and gear consisting essential of i) renewable and degradable natural fiber (Claim 1: hemp) and polymer (Claim 1: polysaccharide) matrix core, ii) renewable and degradable additive (Claim 1: combination thereof including polylactide), and iii) minor components generally recognized and used to manufacture or produce the fishing lines, nets, leaders, tippets, lures, hooks, weights, floats as well as related fishing tackle and gear (air is used to produce fishing line, to allow drying/cooling).
In regards to Claim 16, Wilcox teaches a degradation process comprises a microbial-based process, an oxidation-based process, an ultraviolet light-based process, a free radical-based process, a thermal-based process, or combinations thereof insomuch as hemp and polysaccharide can degrade by a microbial-based process. Claim 16 is not a method.
In regards to Claim 17, Wilcox teaches the degradation process comprises a microbial-based process insomuch as hemp and polysaccharide can degrade by a microbial-based process. Claim 17 is not a method
In regards to Claim 18, Wilcox teaches degradation provides essentially non toxic and environmentally safe products insomuch as hemp and polysaccharide degrade into these products.
In regards to Claim 19, Wilcox teaches degradation is substantially faster than conventional materials used in fishing lines or fishing nets insomuch as hemp and polysaccharide will degrade faster than nylon.
In regards to Claim 20, Wilcox teaches using one or more processes selected from group consisting of spraying, extruding, co-extruding, coating, submersing, laminating, extrusion coating, extruding over a core, or combinations thereof (Paragraph 58).
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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wilcox in view of Dzeong et al (RU 2636547; see translation).
In regards to Claim 4, while Wilcox essentially teaches the invention a detailed above, it fails to specifically teach the myriad different degradable polymers which can be used. Dzeong, however, teaches that when dealing with degradable polymers, it is well known to utilize cellulose acetate (Background, 6th paragraph). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention before the effective filing date of the claimed invention to have utilized cellulose acetate, so as to form a strong composition while allowing for degradation by microorganisms when no longer needed.
Claim(s) 6-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wilcox in view of Ganatra et al (CA 2969429).
In regards to Claims 6-9, while Wilcox essentially teaches the invention a detailed above, it fails to specifically teach the myriad additives which could be used. Ganatra, however, teaches then when dealing with similar materials, it is well known to utilize olive oil or soy bean oil (Page 21 of document, lines 12-14: Plasticizers that may be incorporated into the compositions include… olive oil, soybean oil…). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention before the effective filing date of the claimed invention to have utilized the oils as taught, acting as a plasticizer, so as to improve strength and resilience of the polymer materials while being safer than harsher plasticizers.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6, 8, and 10-16 of U.S. Patent No. 11,535,729.
Although the claims at issue are not identical, they are not patentably distinct from each other because both teach the same composition, with the claims aligned as follows.
Claim 1 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 2 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 3 of the instant application aligns with Claim 2 of the ‘729 patent.
Claim 4 of the instant application aligns with Claim 3 of the ‘729 patent.
Claim 5 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 6 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 7 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 8 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 9 of the instant application aligns with Claim 6 of the ‘729 patent.
Claim 10 of the instant application aligns with Claim 2 of the ‘729 patent.
Claim 11 of the instant application aligns with Claim 8 of the ‘729 patent.
Claim 12 of the instant application aligns with Claim 8 of the ‘729 patent.
Claim 13 of the instant application aligns with Claim 8 of the ‘729 patent.
Claim 14 of the instant application aligns with Claim 1 of the ‘729 patent.
Claim 15 of the instant application aligns with Claims 1, 10, 11 of the ‘729 patent.
Claim 16 of the instant application aligns with Claim 12 of the ‘729 patent.
Claim 17 of the instant application aligns with Claim 13 of the ‘729 patent.
Claim 18 of the instant application aligns with Claim 14 of the ‘729 patent.
Claim 19 of the instant application aligns with Claim 15 of the ‘729 patent.
Claim 20 of the instant application aligns with Claim 16 of the ‘729 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See of Record.
Specifically, at least CN 108796659 Description and Fish, Jr. et al (5354616) Background teach elements similar to those as currently claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shaun R Hurley whose telephone number is (571)272-4986. The examiner can normally be reached Monday thru Friday, 8:00am - 3:00pm.
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, Clinton T Ostrup can be reached at (571) 272-5559. 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.
/SHAUN R HURLEY/Primary Examiner, Art Unit 3732
Prosecution Insights