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 .
Withdrawn Rejections:
Applicant's amendments and arguments filed on 02/02/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below is herein withdrawn.
The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Applicants elected no-sprayable composition as specific formulation on 01/07/2025; on 07/25/2025, Applicants further elected Zinc as specific metal active, ethanol as specific solvent, sheep as specific veterinary subject, Treponema sp as specific cause of infection, antibiotic as specific second active, bovine digital dermatitis as specific infection, polyethylene glycol as specific hydrophilic additive, decanoic acid as specific hydrophobic barrier enhancing agent. Claims 1-2, 4-8, 13-15, 18-19, 21-24, 26-42 and 47 and 52-53 read on the elected species and are under examination; claims 9-12, 20, 43-46 do not read on the elected species and are withdrawn from consideration.
Claims 1-2, 4-15, 18-24, 26-53 are pending, claims 1-2, 4-8, 13-15, 18-19, 21-24, 26-42 and 47 and 52-53 are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/02/2026 is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 26-27 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites metal active selected zinc chloride and zinc acetate or zinc carboxylate complex, while claims 26-27 fails to further limit the subject matter of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2, 4-7, 13-15, 18-19, 21-24, 26-34 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Lowndes et al. (US20100297043) in view of Latta et al. (US20130011453), Gupta et al. (US20060039887) and Sanchez et al. (US20190216074).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Lowndes et al. teaches A composition for coating skin comprising shellac, ethanol, castor oil, ethyl cellulose and fumed silica or nano zinc oxide, wherein the composition forms a long lasting waterproof flexible film on skin. The composition may include different ingredients for different applications. In yet another embodiment, the composition includes a therapeutic agent for treating a disorder of the skin (abstract). The composition may be, for example, in the form of, or applied as, a paste, cream, gel, viscous solution, solution, suspension, dispersion, liquid, spray or aerosol ([0013]). In another embodiment, the composition may be used as a barrier or bandage, for trapping or otherwise keeping one or more therapeutic agents between the composition and the skin. It is possible that the composition may actually bond with the therapeutic agent that has been applied to the skin. It is possible that the composition may form a physical layer over the therapeutic agent and skin beneath. Any suitable type and quantity of therapeutic agent may be used. A therapeutic agent as described herein is an agent that has medicinal or cosmeceutical properties or other properties of advantage to the wearer. A suitable therapeutic agent may be an antimicrobial such as a bactericide or fungicide or an antiseptic agent ([0016-0017]). The composition may include a diluent (which is a viscosity modifier). Any suitable type of diluent may be used. The composition may include more than one type of diluent/viscosity modifier. Any suitable quantity of diluent may be used. For instance, the composition may contain little diluent if applied to the skin as a paste, viscous solution or spreadable gel-like material, e.g. using a brush or sponge. The diluent may be a primary alcohol (C2-C4), such as ethanol, propanol, isopropanol, n-butanol or isobutanol, for example. Preferably, the diluent is an alcohol, such as ethanol, which will readily evaporate. The alcohol may be denatured or non-denatured. Ethanol or other primary alcohol (either denatured with IPA or not) may be present in the composition in any suitable amount but is preferably present in an amount of about 20-80% weight by weight (w/w), more preferably about 40-90% w/w, and even more preferably about 50-80% w/w ([0018-0019]). Any suitable type of resin may be used. The resin may act both as a film-former (binder) and waterproofing agent. The composition may include more than one type of resin. The resin may be a shellac. The resin may be shellac, rosin, copal, dammar or balsam. Preferably, the resin is de-waxed (blonde) bleached shellac. Shellac or at least one other type of resin/natural gum may be present in the composition in any suitable amount but is preferably present in an amount of about 1-40% w/w, more preferably about 1-30% w/w, and even more preferably about 4-30% w/w ([0019-0020]). Any suitable type of flexibilizer (plasticiser) may be used to impart flexibility to the film and to hinder flaking of the film from the skin. The flexibilizer may help in forming the film. The composition may include more than one type of flexibilizer ([0021-0022]). The composition may include thickener to increase the viscosity of the composition. The thickener may act as a suspending agent. Any suitable type of thickener such as nano zinc oxide may be used ([0029]). According to yet another preferred form of the invention, the coating composition comprises: about 1-30% w/w substantially alcohol soluble resin/natural gum derivative such as shellac; about 40-90% w/w primary alcohol such as ethanol; about 2-70% w/w non-drying or semi-drying oil such as castor oil; about 0.5-10% w/w cellulosic preparation such as ethyl cellulose; and about 0.1-10% w/w inorganic thickener such as fumed silica ([0048-0053]). Alternatively or additionally, the coating composition may include at least one therapeutic agent for preventing or treating disorders of the skin—for example, cuts, inflammation or infections ([0068]). In one example, the composition comprising 12.96% of dewaxed (blonde) shellac, 34.5% of nano zinc oxide and 41.4% of ethanol; and if desired, other therapeutic agents (eg. growth factors, steroids, antiseptics, antibacterials) may be used in the composition. ([0268-0271]).
Latta et al. teaches A product for treating or preserving a mammalian subject's skin, comprising the microcapsule composition of claim 1, wherein the microcapsules contain at least one skin-treating or preserving therapeutic agent (claim 37). Additional antibacterial agents include, without limitation, copper (II) compounds such as copper (II) chloride, fluoride, sulfate and hydroxide, zinc ion sources such as zinc acetate, zinc citrate, zinc gluconate, zinc glycinate, zinc oxide, zinc sulfate and sodium zinc citrate ([0094]).
Gupta et al. teaches a cosmetic or pharmaceutical composition to reduce skin damage caused by aging and/or the environment for topical administration (abstract). Additional formulation ingredients that can also be utilized include antiseptics (e.g., zinc chloride) ([0052]).
Sanchez et al. teaches A treatment compound for hoof disease in an animal has a base material and treatment agent. The base material is wax, resin, paste, polymer, oil, or creme. The treatment agent is zinc, copper, oxytetracycline, or tetracycaline. The treatment compound is applied to a hoof area and has a high viscosity in the range of 100,000 to 2,000,000 centipoises to retain the treatment compound on the hoof in a normal animal environment. The treatment compound can be applied by brush, spray, roller, or dipping. The treatment compound is curable by air or UV light to provide a durable, robust shell. The treatment compound can be applied to an interior surface of a boot which is disposed over the hoof to retain the treatment compound on the hoof in normal animal environments ([abstract). Diseases and conditions of the foot of animals, particularly ungulates, present major health problems that can cause significant economic losses. While diseases of the hoof are most prevalent in horses, cattle, goats, and sheep, other hoofed animals are all susceptible to pathogens. Common diseases or conditions of a foot of an animal, particularly the hooves of animals include hairy heel warts, foot rot, and foot scald, typically caused by bacteria. Papillomatous digital dermatitis, also referred to as Hairy Heel Warts, Footwarts, and Strawberry Foot Disease, is an inflammation of the skin around the hoof of an animal. It is most commonly found at the back of the foot between the bulbs of the heels, but the disease can spread around the foot and into the cleft between the claws. Digital dermatitis is a very painful condition resulting in lameness, and subsequent reduced food intake and fertility ([0002-0005]). Treatment compound also includes amounts of one or more treatment agents, such as metal astringents (zinc oxide, zinc sulfate, and copper sulfate), antibiotic agents (oxytetracycline and tetracycaline), and antifungal agents, for the treatment of infectious diseases of the hoof of an animal. Treatment compound contains by volume 15-30% wax, 30-50% mineral oil and/or petrolatum, 20-50% metal astringents, 0-10% other active ingredients, and 0-10% fillers, depending on treatment protocol, disease, environment, and type of animal ([0019-0021]). Gram-negative bacteria can be treated ([0026]).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Lowndes et al. is that Lowndes et al. do not expressly teach zinc chloride or zinc acetate, sheep, antibiotic and bovine digital dermatitis. This deficiency in Lowndes et al. is cured by the teachings of Latta et al., Gupta et al. and Sanchez et al.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lowndes et al. as suggested by Latta et al., Gupta et al. and Sanchez et al., and produce the instant invention.
One of ordinary skill in the art would have been motivated to include zinc chloride or zinc acetate because they are suitable ingredient in the topical composition. MPEP 2144.07. Under guidance from Lowndes et al. teaching a bactericide or an antiseptic agent, Latta et al. teaching antibacterial agents including zinc ion sources such as zinc acetate and zinc oxide; Gupta et al. teaching antiseptics (e.g., zinc chloride); it is obvious for one of ordinary skill in the art to zinc chloride or zinc acetate and produce instant claimed invention with reasonable expectation of success.
One of ordinary skill in the art would have been motivated to treat (bovine) digital dermatitis of sheep with composition comprising zinc oxide and zinc chloride (or zinc acetate), shellac and ethanol for treating infection because composition comprising zinc oxide is a suitable composition for treating sheep digital dermatitis as suggested by Sanchez et al. Therefore, it is obvious for one of ordinary skill in the art to treat (bovine) digital dermatitis of sheep with composition comprising zinc oxide and zinc chloride (or zinc acetate), shellac and ethanol and produce instant claimed invention with reasonable expectation of success.
One of ordinary skill in the art would have been motivated to include antibiotic as additional active agent because antibiotic is suitable active for treating infection. Under guidance from Lowndes et al. teaching antimicrobial (encompassing antibiotic), Sanchez et al. teaching antibiotic for treating infection such as digital dermatitis, it is obvious to include antibiotic as additional active agent and produce instant claimed invention with reasonable expectation of success.
Regarding claims 1-2, 6, 18, prior arts teach topically applying of composition (liquid) comprising zinc oxide and zinc chloride (or zinc acetate), shellac and ethanol to infection site, and form a physical barrier.
Regarding claim 4-5, these are regarded as inherency of prior art composition.
Regarding claim 7, composition comprising zinc oxide treat gram negative bacterial.
Regarding claim 13 and 30-32, Lowndes et al. teaches that the composition may form a physical layer over the therapeutic agent and skin beneath, and it is obvious to realize this by applying second active (antibiotic) on infection site of subject and then applying a composition comprising zinc oxide and zinc chloride (or zinc acetate), shellac and ethanol to lock the second active.
Regarding claim 15 and 33, In summary, although the reference is silent about all the functional properties instantly claimed, it does not appear that the claim language or limitations result in a manipulative difference in the method steps when compared to the prior art disclosure. See Bristol-Myers Squibb Company v. Ben Venue Laboratories, 58 USPQ2d 1508 (CAFC 2001). “It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable.” In re Woodruff, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990). Granting a patent on the discovery of an unknown but inherent function would remove from the public that which is in the public domain by virtue of its inclusion in, or obviousness from, the prior art. In re Baxter Travenol Labs, 21 USPQ2d 1281 (Fed. Cir. 1991). See M.P.E.P. 2145. On this record, it is reasonable to conclude that the same subject is being administered the same active agent by the same mode of administration in the same amount in both the instant claims and the prior art reference. The fact that Applicant may have discovered yet another beneficial effect from the method set forth in the prior art does not mean that they are entitled to receive a patent on that method. Thus, prior art teaches, either expressly or inherently implied, each and every limitation of the instant claims. it remains the Examiner's position that the instantly claimed method obvious.
Regarding claims 22-24, Lowndes et al. teaches de-wax shellac at 1-40% and ethanol.
Regarding claim 28, prior art is silent about 20mM to 500mM of zinc chloride or zinc acetate, it is obvious for one of ordinary skill in the art to optimize the amount of zinc chloride or zinc acetate to treat bacterial infection and have 20nM to 500mM of zinc chloride or zinc acetate. MPEP 2144.05, Especially in the absence of showing criticality of claimed range.
Regarding claim 29, this is considered as inherency of prior art composition. Since prior art teaches the same composition, this same prior art composition is expected to have the same properties.
Regarding claim 34, Lowndes et al. more than one type of resin, thus, it is obvious to have another resin in addition to shellac.
Regarding claim 47, prior art is silent about droplet size of 1 mm or more, and it is obvious for one of ordinary skill in the art to optimize the droplet size and have 1 mm or more. MPEP 2144.05, Especially in the absence of showing criticality of claimed range.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. 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, especially in the absence of evidence to the contrary.
Claims 8 and 35-42 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Lowndes et al. (US20100297043) in view of Latta et al. (US20130011453), Gupta et al. (US20060039887) and Sanchez et al. (US20190216074), as applied for the above 103 rejection for claims 1-2, 4-7, 13-15, 18-19, 21-24, 26-34 and 47, further in view of Greene et al. (US20100239679), Barnhart et al. (US20080124381), Glenn (US20120021026) and Kabara ("Fatty Acids and Derivatives as Antimicrobial Agents," Antimicrobial Agents and Chemotherapy, July 1972, p. 23-28).
Determination of the scope and content of the prior art
(MPEP 2141.01)
Lowndes et al., Latta et al., Gupta et al. and Sanchez et al. teaching have already been discussed in the above 103 rejection and are incorporated herein by reference.
Greene et al. teaches surface treatment composition comprising Zinc oxide as biocide (claims 70-72). The composition has antimicrobial active against bacterial such as Treponema ([0065]). The application includes cosmetic, pharmaceutical and animal care product ([0066-0068]).
Barnhart et al. teaches would dressing composition (claims 1 and 6-7) comprising plasticizer such as polyethylene glycol (claims 10 and 12).
Glenn teaches personal care compositions of the present invention are in the form of an Article comprising a dissolvable fibrous web structure (abstract). Described herein, is a personal care, oral care, health care, and household care composition that delivers active agents onto hair, hair follicles, skin, teeth, the oral cavity, fabric and hard surfaces in the form of an article that is a dissolvable fibrous web structure ([0002]). The fiber contains a significant level of active/agents, and the fiber is form from fiber spin process from polymeric structurant ([0036-0037]). The application includes wound care ([0082]). Homogenous mixture of fibers produced by one or more methods may have a performance advantage in optimizing, such as slowing or speeding up the dissolution rates for a particular embodiment Article, e.g., for controlled or timed release of actives. The layering of fibers produced by one or more methods may have a performance advantage in varying the dissolution rate during the use of the Article, for example, certain actives or ingredients of the composition may need to be delivered at different times during the usage of the Article, such as timed release of surfactant and conditioner, or detergent and bleach, or detergent and softener, and so forth. Other advantages of mixing dissolvable fibers produced by the methods described herein may be specific to a particular Article ([0128]). The polymeric structurant such as methylcellulose is from 10-70% (claim 1 and 17).
Kabara teaches capric acid is an effective antimicrobial against a number
of bacteria, including Pneumococci, Streptococcus Group A, Corynebacteria,
Candida, S. aureus, and S. Epidermis (page 24, Table 1).
Ascertainment of the difference between the prior art and the claims
(MPEP 2141.02)
The difference between the instant application and Lowndes et al. is that Lowndes et al. do not expressly teach against Treponema sp; polyethylene glycol; fiber and decanoic acid. This deficiency in Lowndes et al. is cured by the teachings of Greene et al., Barnhart et al., Glenn and Kabara.
Finding of prima facie obviousness
Rational and Motivation (MPEP 2142-2143)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lowndes et al., as suggested by Greene et al., Barnhart et al., Glenn and Kabara., and produce the instant invention.
One of ordinary skill in the art would have been motivated to treat Treponema sp infection because composition comprising zinc oxide is effective against Treponema as suggested Greene et al. Therefore, it is obvious for one of ordinary skill in the art to Treponema sp infection with the composition comprising zinc oxide.
Regarding claims 35-36 and 53, One of ordinary skill in the art would have been motivated to include cellulose fiber because cellulose fiber in the wound care composition may contain significant level of active agent and control the releasing active agent as suggested by Glenn. Since it is advantage to do so, it is obvious to include 10-70% of cellulose fiber and produce instant claimed invention with reasonable expectation of success.
Regarding claims 37-38, One of ordinary skill in the art would have been motivated to include polyethylene glycol because polyethylene glycol is a suitable plasticizer in would dressing as suggested by Barnhart et al. Under guidance from Lowndes et al. teaching plasticizer, it is obvious to include polyethylene glycol and produce instant claimed invention with reasonable expectation of success.
Regarding claims 39-42 and 52, One of ordinary skill in the art would have been motivated to include capric acid because capric acid is effective antimicrobial as suggested by Kabara. Under guidance from Lowndes et al. teaching antimicrobial, it is obvious for one of ordinary skill in the art to include capric acid (decanoic acid) and produce instant claimed invention with reasonable expectation of success. As long as decanoic acid is included, the limitation of claims 39-42 is met and the properties such as hydrophobic barrier enhancing and buffering are inherency of decanoic acid.
In light of the forgoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. 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, especially in the absence of evidence to the contrary.
Response to Argument:
Applicants argue that there is no teaching of amended claim 1 and Lowndes et al. does not teach Veterinary infection. All related arguments are incorporated herein by reference.
In response to this argument: this is not persuasive. As discussed in the above 103 rejection, the modified 103 rejection teaches each limitation of applicant’s claimed invention including zinc chloride and zinc acetate. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As discussed in the above 103 rejection, Lowndes et al. is relied on for teaching topical composition for skin comprising zinc oxide, shellac and ethanol, Latta et al. and Gupta et al. are replied on for teaching zinc chloride and zinc acetate in topical composition, Sanchez et al. is relied on for teaching composition comprising zinc oxide is a suitable composition for treating sheep digital dermatitis. Therefore, it is obvious for one of ordinary skill in the art to treat (bovine) digital dermatitis of sheep with composition comprising zinc oxide and zinc chloride (or zinc acetate), shellac and ethanol and produce instant claimed invention with reasonable expectation of success. Thus, the 103 rejection is still proper.
MPEP 2141 III states: “The proper analysis is whether the claimed invention would have been obvious to one of ordinary skill in the art after consideration of all the facts.” Respectfully, after weighing all the evidence, the Examiner has reached a determination that the instant claims are not patentable in view of the preponderance of evidence and consideration of all the facts which is more convincing than the evidence which has been offered in opposition to it.
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 1-2, 4-8, 13-15, 18-19, 21-24, 26-42 and 47 and 52-53 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-24, 26-47 and 52-56of copending Application No. 17633889 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application teaches each limitation of applicant’s claimed invention including zinc active such as zinc oxide, zinc chloride, zinc acetate (claim 27), solvent such as ethanol (claim 24) and shellac (claim 22).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Argument:
Applicants argue that the double patenting rejection be held in abeyance.
In response to this argument; this is not persuasive. Since no TD is filed, the double patenting rejection is maintained for record.
Conclusion
No claim is allowed.
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 JIANFENG SONG. Ph.D. whose telephone number is (571)270-1978. The examiner can normally be reached M-F 8-5.
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, Brian-Yong Kwon can be reached at (571)272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANFENG SONG/Primary Examiner, Art Unit 1613
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