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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04 May 2026 has been entered.
Response to Amendment
Status of the Claims
Receipt of Applicant’s response, filed 04 May 2026 has been entered.
Claims 1-5 and 7-17 remain pending in the application.
No claims are amended. The examiner notes that claim 2 was presented as amended but this is the same limitation that was present in the claim set from 06 Oct 2025.
Claim 6 is cancelled.
Claims 10-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claims 1-5, 7-9 and 17 are under consideration to the extent that the orodispersible thin film is oral, the film forming polymer is HPMC, the plasticizer is polyethylene glycol, and that the ingredient that acts as an adsorbent is titanium dioxide.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows: in the prior-filed application, Application No. IN201821014188, the applicant failed to provide adequate written description support for claims 4 and 17. Accordingly, priority cannot be granted at this time, thus claims 4 and 17 are granted the filing date of the prior application PCT/IN2019050299 (11 Apr 2019).
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. IN20182104188, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Application ‘188 fails to provide support for the addition of the generic group of “plasticizers” and specifically does not provide support for polyethylene glycol. Accordingly, claims 4 and 17 are not entitled to the benefit of the prior application.
Response to Arguments
The applicant notes the examiners use of Lockwood v. American Airlines Inc., 41 USPQ2d 1961 (Fed. Cir. 1997) for use of the phrase “The entitlement to a filing date does not extend to subject matter, which is not disclosed, but would be obvious over what is expressly disclosed” and argues that this is not part of the judgment but part of the argument from Lockwood against the district court (page 6 of remarks). The applicant then asserts that the sentiment regarding the filing date expressed above was rejected by the Federal Court and draws the conclusion that “the recital/disclosure that the element ‘the invention is an orodispersible film’ includes in it everything that is published in that context in prior art that is known to a person having ordinary skill in the art and is obvious too (page 7 of remarks). The examiner does not agree with this position and maintains that what may be obvious is not sufficient to establish possession sufficient to entitle an earlier filing date. The excerpt from the Lockwood case quoted by the applicant in the remarks (page 6) does not support the position asserted by the applicant. The excerpt clearly states that the court did not agree with the position of Lockwood that the court erred by looking solely at the applications themselves and affirms that “it is the disclosures of the applications that count” and “entitlement to a filing date does not extend to subject matter which is not disclosed, but would be obvious over what is expressly discloses, it extends only to that which is disclosed.” The applicant has not clearly disclosed “plasticizers” and “polyethylene glycol” in the earlier filed applications. While these components may be obvious to include in orodispersible films, this does not satisfy the requirement to establish possession. Thus, the examiner maintains that claims 4 and 17 are not entitled to the earlier priority date.
The applicant asserts that the quotation from an article by Ruchi Sharma, provided on page 10 of the remarks from 06 Oct 2025, provides evidence that a film inherently has to have a plasticizer in it to make materials more flexible or elastic. The examiner is not persuaded that this establishes that orodispersible films inherently have plasticizers. While it may be understood that plasticizers are a common component for films, this is not sufficient support for establishing possession of the general category of plasticizers or the specific plasticizer of polyethylene glycol for the present invention.
The applicant asserts that the examiners quotation from Lockwood v. American Airlines Inc. serves as a new ground of rejection and that the previous office action should not have been made Final but instead should have been Non-Final (page 8 of remarks). As a first matter, it is noted that the recognition of priority by the examiner is not a ground of rejection and can not serve as a basis for requiring a second Non-Final office action. Secondly, the denial of priority for claims 4 and 7 was made in the non-final office action and use of the quotation from Lockwood v. American Airlines Inc. merely served as support for the reasoning in the response to arguments for denial of priority. Thus, the examiner maintains that a final rejection was appropriate.
Rejections Maintained
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 1-5, 7-9 and 17 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.
Claims 1-5, 7-9 and 17 are indefinite in reciting “paper like surface roughness” in claims 1 and 5. The term “paper like surface roughness” is a relative term which renders the claims indefinite. The term “paper like surface roughness” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Paper may be made from a variety of disparate materials which lead to varying textures and degrees of roughness. Additionally, as there is no clear standard for comparison, the phrase is subjective in that multiple practitioners may evaluate the same film and draw alternative conclusions about whether the films roughness is paper like. This additionally renders claims 4 and 7 as indefinite with the recitation that the film comprises an ingredient that imparts “required roughness” to the surface of the substrate. As the limitation of “paper like surface roughness” is relative, it is unclear what the “required roughness” of the substrate is, thereby rendering the claim indefinite. Additionally, it is not clear whether the “required roughness” as recited in claims 4 and 7 are equivalent to the “paper like surface roughness” as recited in claims 1 and 5 or if a different degree of roughness is required.
Response to Arguments
Applicant's arguments filed 04 May 2026 have been fully considered but they are not persuasive. Applicant argues that the phrase “said film has paper like surface roughness, porosity and absorptivity for the purpose of printing” should be interpreted under 112(f) arguing that the phrase serves as a generic placeholder (page 9 of remarks). Applicant points to MPEP 2181(I) which states that the presumption that 112(f) does not apply may be overcome when “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function” (page 10 of remarks). The applicant argues that the 112(b) rejection arguing that the phrase is indefinite serves as evidence that the phrase should be interpreted under 112(f) and thus the 112(b) rejection should be withdrawn (pages 11-12 of remarks).
The examiner is not persuaded and notes that, while there may be similarities between 112(b) and 112(f) analysis, these are independent determinations. Indefiniteness under 112(b) does not mean that the claims should thus be interpreted under 112(f). The phrase “paper like surface roughness, porosity, and absorptivity” is a structural limitation and not a generic placeholder. This phrase is not understood as a substitute for “means.” For a term to be considered a substitute for "means," and lack sufficient structure for performing the function, it must serve as a generic placeholder and thus not limit the scope of the claim to any specific manner or structure for performing the claimed function. The concepts of roughness, porosity, and absorptivity are structural terms and not generic placeholders. The examiner does observe that were the claims to be interpreted under 112(f) that the claims would remain rejected under 112(b) as example 5 in table 15, pointed to by the applicant for interpreting the phrase, does not provide adequate disclosure showing what is meant by that language.
The examiner maintains both that the phrase should not be interpreted under 112(f) and that the phrase is indefinite under 112(b) as it does not provide clear metes and bounds for the claim scope. The phrase “paper like” is subjective and not defined and it is not clear when a particular material would fall within the scope of “paper like surface roughness, porosity, and absorptivity.”
Claim Rejections - 35 USC § 102
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.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Janβen et al. (International Journal of Pharmaceutics 441 (2013) 818– 825) as evidenced by the instant specification.
Janβen teaches that orodispersible films (ODF) are an ideal oral dosage form for paediatric and geriatric drug delivery (page 818 paragraph 1). Janβen teaches an orodispersible film where the ODF was first cast and subsequently had API added using an industry-relevant printing technique (page 818 paragraph 3). Janβen teaches that drug-free ODFs were produced by solvent casting and subsequently printed on (page 820 section 3.1 paragraph 1). Therefore, the ODFs of Janβen are understood to consist of a drug-free film which serves as the “substrate for making an orodispersible thin film” as recited in claim 5, to which an ink is additionally applied. Example ODFs were printed with the API Tadalafil and rasagiline mesylate using flexography printing technology (page 819 paragraph 2). The thickness of the ODF was 54.7 ± 0.5 μm (page 822 paragraph 2), and as there is no indication in the claim as to the parameters of “thin”, the ODF of Janβen is understood as reading on the “orodispersible thin film” of instant claims 1 and 5.
Janβen teaches that the challenge of API printing onto ODFs is to avoid film disintegration, rupturing or crumbling during the printing process and to maintain the fast dissolving properties (page 819 paragraph 1, page 820 section 3.1 paragraph 1). Therefore, a combination of a HPMC-based drug-free film and an ink based on ethanolic HPC-solution was chosen as, in contrast to HPC, HPMC does not fully dissolve within ethanol and the film was not supposed to disintegrate during the printing process (page 820 section 3.1 paragraph 1). As evidenced by the instant specification, cavities, or depressions, in films form when films made from hydrophilic polymers are dissolved by water based inks or inks containing any hydrophilic ingredient (page 5 paragraph 3, page 6 paragraph 2). As further evidenced by the specification, inks per the invention contained ethanol (page 13 Table 1) and the film substrates were formed from HPMC (page 18 Table 9). Therefore, the ethanolic HPC-solution ink with either Tadalafil or rasagiline mesylate and the HPMC film that is not supposed to disintegrate during the printing process as taught by Janβen, is understood to read on the “orodispersible thin film printed with an ink comprising at least one active ingredient on its surface and is free from cavities” of claim 1 and the “orodispersible thin film that has printing on its surface with at least one active ingredient for oral delivery, and is free from cavities” of claim 5.
Janβen teaches that the thickness, disintegration time and mechanical properties of the ODFs were not affected by printing and that any slightly lower mechanical property was not relevant for handling (page 824 paragraph 2, page 822 paragraph 3). Janβen teaches that the combination of a HPMC-based drug-free film and an ethanolic ink with HPC enables the manufacturing of printed ODFs without film rupturing or crumbling during the process and without losing the fast dissolving properties of the ODFs, that the printed layer could not be separated from the film and that no loss of crystals or API is anticipated during packaging and storage due to the strong adherence of the ink to the ODFs (page 823 paragraph 1). As the printed API was able to secure tightly to the ODF and the film did not have a relevant loss in mechanical properties after printing, this is understood to read on the requirement of instant claims 1 and 5 of a film characterized in having a “porosity and absorptivity for the purpose of printing; and foldability and mechanical strength for the purpose of withstanding handling in the course of its manufacturing, packaging, storage, transportation and use.”
As discussed supra, the phrase in claims 1 and 5 of a “paper like surface roughness” is relative and may be interpreted by one of ordinary skill as encompassing surfaces that are smooth to rough. As evidenced by the instant specification, a paper like appearance is the requisite for active ingredient printing i.e. surface roughness, porosity, foldability, mechanical strength, absorptivity etc. (page 12 lines 1-3). As the film of Janβen is able to be successfully printed, it would be understood to have a paper like appearance and an appropriate surface roughness. Therefore, the ODF of Janβen is understood to read on the requirement of a “paper like surface roughness” in claims 1 and 5.
Response to Arguments
Applicant's arguments filed 04 May 2026 have been fully considered but they are not persuasive. Applicant states that they are clarifying the term “comprising” as protecting “those and only those features as inventive features which are expressly recited and those which are inherent to the context of the claimed invention within the scope of the claim” (page 13 of remarks). Applicant argues regarding the term comprising as shown below:
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The applicant thus asserts that the examiner “is not permitted to add the element ‘intermediate liner’ in the claims” (page 14 of remarks). Applicant further argues that additional elements not recited and absent from the claimed elements clearly means that the claimed invention does not require the elements such as the intermediate liner used by Janβen (pages 14-15 of remarks).
The examiner is not persuaded by this as the claims utilize comprising language and do not exclude the addition of an intermediate liner and even if an intermediate liner is not preferred for use by the applicant, the claims are open to such a liner when given their broadest reasonable interpretation. The transitional terms “comprising”, “consisting of”, and “consisting essentially of” are all well-defined terms in patent literature as detailed in MPEP 2111.03. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. Invitrogen Corp. v. Biocrest Manufacturing, L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003) ("The transition ‘comprising’ in a method claim indicates that the claim is open-ended and allows for additional steps."); Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.); Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("comprising" leaves "the claim open for the inclusion of unspecified ingredients even in major amounts"). Thus, the transitional phrases such as comprising do define the scope with respect to what unrecited additional components or steps are excluded from the scope of the claim, as highlighted by the applicant in the MPEP excerpt, and the term comprising indicates that other elements are not excluded.
Thus, while the applicant may intend to limit their films from having an intermediate liner the claims have not been presented in a way that requires that limitation. A claimed invention may be rejected under 35 U.S.C. 102 when the invention is anticipated (or is "not novel") over a disclosure that is available as prior art. To reject a claim as anticipated by a reference, the disclosure must teach every element required by the claim under its broadest reasonable interpretation. As described in the rejection, each of the elements of claims 1, 3 and 5 are taught by the prior art and the examiner maintains that the claims are anticipated when given their broadest reasonable interpretation.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5, 7-9 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Janβen et al. (International Journal of Pharmaceutics 441 (2013) 818– 825) as evidenced by the instant specification in view of Patil et al. (IJSR Volume 3 Issue 7, July 2014) and Karavas et al. (WO 2016/015798 published 04 Feb 2016) .
The teachings of Janβen are described supra.
Regarding claim 2, Janβen additionally teaches that the tensile strength of the Rasagiline mesylate and Tadalafil ODF per the invention ranged from ~15.72-19.10 MPa (page 822 Table 1) which is equivalent to ~160 – 195 kg/cm2, and that the disintegration time ranged from ~22-46 seconds (page 824 Table 2), thus meeting the requirements of disintegration time and tensile strength of claim 2.
Janβen does not teach that the film has a folding endurance of a minimum of 8 times (claim 2) or that the film comprises polyethylene glycol or titanium dioxide (claims 4 and 17). These deficiencies are made up for in the teachings of Patil and Karavas.
Patil teaches that fast dissolving oral films are a drug delivery system for the oral delivery of the drugs in an ultra thin film prepared using hydrophilic polymers that rapidly dissolves on the top or the floor of the tongue or buccal cavity (page 2088 col 1).
Regarding claim 2, Patil teaches that the typical folding endurance for film is between 100-150 (page 2091 7. Folding endurance). Patil additionally teaches that the typical disintegration time for film is 5-30 seconds (page 2091 7. Disintegration test). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 4 and 17, Patil teaches that plasticizers in oral films enhance mechanical properties such as tensile strength and elongation to the film by reducing the glass transition temperature of the polymer and reduces brittleness of the strip and improves flexibility (page 2089 section 2.1.3). The choice of plasticizer depends upon the type of solvent used and its compatibility with the polymer and commonly employed plasticizers include low molecular weight polyethylene glycols (page 2089 section 2.1.3).
Regarding claims 4, 7-9, and 17, Patil additionally teaches that titanium dioxide is used as a prominent coloring agent for oral films (page 2089 section 2.1.7).
Karavas teaches an orodispersible film comprising Enalapril (abstract). Karavas teaches that fillers, such as titanium dioxide, may be added as a film component to reduce greasy features of the film in the mouth and endow a skeleton structure to the film and that the fillers may be in the range from 1 to 15% w/w of the film (page 7 lines 28-33). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). The titanium dioxide of Patil and Karavas would necessarily act as an adsorbent and impart roughness to the surface of the film/substrate. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Further, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have formed an orodispersible thin film comprising HPMC, low molecular weight polyethylene glycol, and 1-15% w/w titanium dioxide because titanium dioxide reduces greasy features of the film in the mouth and endows a skeleton structure to the film as taught by Karavas, and wherein the film is formulated to have a folding endurance of 100-150 times, a disintegration time between 5 and 30 seconds as taught by Patil, and a tensile strength of ~160 – 195 kg/cm2 and printed with an ethanolic ink containing an active ingredient wherein the ink does not disintegrate (form cavities) in the film. Ethanolic inks containing active ingredients have been shown to successfully print on HPMC films without disintegrating or otherwise significantly affecting the mechanical properties, such as tensile strength, of the film by Janβen, thus making ethanolic inks and HPMC films an attractive option to one of ordinary skill. Additionally, low molecular weight polyethylene glycol and titanium dioxide (1-15% w/w) are common ingredients in films and the functional properties of a disintegration time between 5-30 seconds and a folding endurance of 100-150 times are taught as typical properties of films by Patil, thus providing one of ordinary skill in the art with a reasonable expectation of successfully forming a film with these components and claimed properties.
Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, as evidenced by
the references.
Response to Arguments
Applicant's arguments filed 04 May 2026 have been fully considered but they are not persuasive. Applicant argues that “although ‘comprising’ is open for inclusion of all conceivable features, the ‘scope of the claim’ is defined by the features expressly recited by the Applicant” (page 16 of remarks). This statement is confusing and it is not clear what distinction the applicant is trying to make between how open the claims are and the scope of the claims. The transitional phrase “comprising” has an understood definition and provides meaning to the overall claim scope. The phrase “comprising” is understood to be inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03(I)). Thus, the claim scope is open ended and additional elements can be included. The applicant argues that there is no need for an intermediate liner in their invention in comparison to Janβen which uses an intermediate liner (page 16 of remarks). While it may be true that the applicant has a film distinct from the film taught by Janβen, the claims are not limited to the structure described by the applicant. Instead the claim scope extends beyond what the applicant is describing as their invention. If the applicant desires to restrict their claim more commensurate in scope with their invention, they may try alternative transitional language such as “consists of.”
The applicant provides an example amendment with the phrase “cast on an intermediate liner added to the claim (pages 17-18 of remarks).
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It appears that the applicant is attempting to argue that the addition of an intermediate liner to the instant claims would fail a written description requirement and thus could not be allowed. The applicant then appears to want the examiner to amend the claim in such a way that satisfies the written description requirement and argues that if this cannot be done that an intermediate liner can not be an obvious feature and the rejection should be withdrawn. The point of this argument is not entirely clear to the examiner but it is noted that the rejection in question is one of obviousness under 35 U.S.C. 103 and not a written description question. Whether or not the claims would be rejected for a lack of written description for the addition of an intermediate liner is separate from the question at hand regarding obviousness. If the applicant is trying to argue that the art using an intermediate liner is incompatible with their invention, then the examiner does not find this persuasive in overcoming the rejection. First, the applicant has not actually demonstrated why an intermediate liner would be incompatible with their invention, and specifically their invention as claimed. Second, the question again comes to what is the broadest reasonable interpretation of the claims. Each of the features of the claims regarding the orodispersible film as currently claimed are obvious from the art and the claims are open to the addition of unrecited elements. Thus, the films taught by the art, even with an additional intermediate liner are understood to meet the limitations of the claims and render them obvious.
The applicant argues that the broadest reasonable interpretation of the claims must be made in light of the specification and that one is not likely to interpret the use of an intermediate liner with the invention based on the specification (pages 18-19 of remarks). The examiner agrees that claims are interpreted in light of the specification but notes that there is nothing in the specification that would limit the use of an intermediate liner. Just because the applicant did not use it in their invention or talk about it in their specification does not thereby render the art ineligible in rendering the claims as obvious.
The applicant argues that the rejection of claims 8 and 9 is improper as the rejection is directed against the recital of the single ingredient titanium dioxide (page 19 of remarks). The examiner notes that claim 8 only requires one ingredient by use of the phrase “one or more” in claim 8. The claims do not require ingredients in addition to the titanium dioxide. Applicant argues that claims 8 and 9 depend from claim 5 and argues that this claim is withdrawn. The examiner notes that claim 5 is currently examined and is not withdrawn.
Conclusion
No claim is allowed.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C MITCHELL whose telephone number is (571)272-7007. The examiner can normally be reached Mon-Fri 8:00-5:00.
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, David Blanchard can be reached on (571)272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.C.M./Examiner, Art Unit 1619
/BENNETT M CELSA/Primary Examiner , Art Unit 1600
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