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 Status
Applicants’ amendments and arguments filed 06/24/2025 have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claims 2-3 and 11-14 are canceled.
Claims 1, 7, and 15-16 are amended.
Claims 7-9 and 16 remain withdrawn.
Claims 1, 4-6, 10, and 15 are examined on the merits.
New Rejections Necessitated By Amendments
Claim Interpretation
In regards to claims 1 and 15, as to the limitation of 'for forming a product that is absorbable by the skin' it is noted that the instant claims are composition claims and future intended use, such as in a product that is absorbable by the skin, is not given patentable weight. Thus any composition comprising a first compound to be electrospun, an electrospinning promoter and at least one active ingredient, wherein said first compound to be electrospun comprises hyaluronic acid; said electrospinning promoter comprises pullulan; and said active ingredient comprises at least one selected from the group consisting of cosmetic active ingredients, pharmaceutical active ingredients and nutritional active ingredients in regards to claim 1 and any composition comprising a first compound to be electrospun, an electrospinning promoter and at least one active ingredient, wherein said first compound to be electrospun comprises hyaluronic acid, said electrospinning promoter comprises poly(oxyethylene) (PEO) and alginate in a weight proportion of 1:1, wherein a proportion of the first compound to be electrospun and the electrospinning promoter is between 4:1 and 1:7 by weight, and wherein the PEO and alginate mixture has a concentration between 4% and 10% by weight in the composition in regards to claim 15 will meet this limitation.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sandri et al. (WO2019021325A1, published 01/31/2019, hereafter Sandri) as evidenced by Ingredi (Ingredi. (2018, December 11). What is Citric Acid and How is it Used? Ingredi.com. https://ingredi.com/blog/what-is-citric-acid-and-how-is-it-used-/?srsltid=AfmBOoruHw9Pee0tZyjXNkn9yL0JRsC4xKPqdK8vxKdaeXhjw3rnkU9o, hereafter Ingredi), and as evidenced by Klegeris et al. (Klegeris, A., & McGeer, P. L. (2005, July 1). Non-steroidal anti-inflammatory drugs (nsaids) and other anti- inflammatory agents in the treatment of Neurodegenerative Disease. Current Alzheimer Research. https://www.benthamdirect.com/content/journals/car/10.2174/1567205054367883, abstract only, hereafter Klegeris).
As evidenced by Ingredi, citric acid is an active ingredient is cosmetics and pharmaceuticals, specifically chemical peels and antiviral tissues (page 4, last paragraph).
As evidenced by Klegeris, non-steroidal anti-inflammatory agents (NSAIDS) are a type of inflammatory agent (abstract).
Sandri claims a process of preparing nanofibers comprising a water solution of glycosaminoglycan in an amount from 0.01-5.00%, a polymer chosen in the group consisting of polysaccharides in an amount of 1-30%, and a polycarboxylic acid in an amount of 0.1-5% (claim 1; according to the claim limitations of the instant claims 1 and 4-6). Claim 1 of Sandri further teaches the composition to be electrospun to form nanofibers (according to the claim limitations of the instant claim 1). Claim 2 of Sandri claims the polysaccharide is pullulan (according to the claim limitations of the instant claim 1). Claim 3 of Sandri claims the concentration of pullulan is in the amount of 7-15% (according to the claim limitations of the instant claim 4). Furthermore, Sandri claims the composition comprises antimicrobial agents (claim 6; according to the claim limitations of the instant claim 1). Sandri claims the polycarboxylic acid of claim 1 to be citric acid and claims the amount of citric acid in the solution to be from 2 to 3% (claims 10-11; according to the claim limitations of the instant claims 1 and 6). Lastly, Sandri references prior art, CN104307026, teaching a composition of 8-20 parts pullulan, 8-15 parts sodium hyaluronate, and 3-8 parts of an anti-inflammatory agent (page 6, lines 9-14; according to the claim limitations of the instant claims 1 and 4-6).
Claim Rejections - 35 USC § 103
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 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 15 are rejected under 35 U.S.C. 103 as being unpatentable over Vicini et al. (Vicini, S., et al., (2018), Alginate and alginate/hyaluronic acid membranes generated by electrospinning in wet conditions: Relationship between solution viscosity and spinnability. J. Appl. Polym. Sci., 46390, hereafter Vicini) in view of Barbe et al. (CA3019941A, published 10/12/2017, hereafter Barbe), and as evidenced by OMRI (OMRI for the USDA National Organic Program, Alginates: Handling/Processing: Technical Evalulation Report (2015). Retrieved March 18, 2025, from https://www.ams.usda.gov/sites/default/files/media/Alginates%20TR%202015.pdf, hereafter OMRI).
Claim 15 are rejected under 35 U.S.C. 103 as being unpatentable over Vicini et al. (Vicini, S., et al., (2018), Alginate and alginate/hyaluronic acid membranes generated by electrospinning in wet conditions: Relationship between solution viscosity and spinnability. J. Appl. Polym. Sci., 46390, hereafter Vicini) in view of Barbe et al. (CA3019941A, published 10/12/2017, hereafter Barbe), and as evidenced by OMRI (OMRI for the USDA National Organic Program, Alginates: Handling/Processing: Technical Evalulation Report (2015). Retrieved March 18, 2025, from https://www.ams.usda.gov/sites/default/files/media/Alginates%20TR%202015.pdf, hereafter OMRI).
As evidenced by OMRI, sodium alginate is a type of alginate (page 1; identification of petitioned substance).
Vicini teaches electrospinning in wet conditions to create alginate/hyaluronic acid membranes starting from blends of biopolymers with PEO (polyethylene oxide, i.e., poly(oxyethylene)) in water solutions (p. 2, paragraph 4; according to the claim limitations of the instant claim 15). One example of a ternary system SA/PEO/HA (sodium alginate/polyethylene oxide/hyaluronic acid) was prepared at a total concentration of 1.5, 2, or 4 wt % by mixing the polymers at the weight ratio of 33:33:33 and 60:30:10 (p. 3, paragraph 4 and table 1; according to the claim limitations of the instant claim 15). Table 1 of Vicini further demonstrates the use of sodium alginate to polyethylene oxide at a concentration of 50:50 (page 3). Biopolymers such as alginate and hyaluronic acid are usually soluble in aqueous solutions, however, electrospinning them alone from aqueous solution seems difficult, and in fact, for these materials, electrospinning has been achieved in polymer blend form by blending with non-toxic and biocompatible synthetic polymers such as PEO (p. 2, paragraph 3; according to the claim limitations of the instant claim 1). This improves their processability while maintaining their biocompatibility (p. 2, paragraph 3; according to the claim limitations of the instant claim 15). Vicini teaches that sodium alginate has properties that make it useful in many fields, such as the pharmaceutical industry (p. 1, paragraph 1; according to the claim limitations of the instant claim 15). Vicini teaches the solution prepared has a total polymer, sodium alginate/polyethylene oxide/hyaluronic acid polymer, concentration of 4% (page 3, paragraph 4). Further, Vicini teaches a concentration of SA/PEO that is 4% of the total concentration and at a ratio of 50/50 SA/PEO (p. 3, paragraph 4 and table 1).
Vicini fails to teach the addition of an active ingredient, specifically an NSAID.
Barbe claims a nanofibrous mat composition comprising electrospun nanofibres forming said mat and ceramic particles dispersed throughout said nanofibres and comprising a ceramic matrix and a dopant releasably encapsulated (claim 1). Claim 2 of Barbe claims the nanofibers biodegradable polymers and claim 3 of Barbe claims the nanoparticles to be selected from a group to include hyaluronic acid and sodium alginate. Furthermore, claim 16 of Barbe teaches the dopant to be analgesics (nonsteroidal anti-inflammatory drugs).
One skilled in the art before the effective filing date of the claimed invention would claim an electrospun composition comprising hyaluronic acid and sodium alginate as outlined by Vicini as evidenced by OMRI with the ready for improvement with the known technique of adding an NSAID to the composition as outlined by Barbe. Adding the forementioned components to electrospun composition comprising hyaluronic acid and sodium alginate as claimed by instant claim 15 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Furthermore, Vicini teaches a ratio of hyaluronic acid to sodium alginate that lies within the claimed ranges of the instant claim 15 thus making them of obviousness to claim. In regards to the limitation of the PEO and alginate mixture has a concentration between 4% and 10% by weight in the composition, the MPEP 2144.05 (I) states “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). As noted above, Vicini teaches a concentration of today polymer to be 4% and teaches a ratio of SA/PEO/HA that is 60:30:10 which would amount to a concentration of SA/PEO that is 3.6% which is merely close to the instantly claimed 4%. Further, Vicini teaches a concentration of SA/PEO alone that is 4% as outlined above. Therefore, a prima facia case of obvious for one skilled in the art exists for the claimed range.
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, 4-5, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, and 17-21 of copending Application No. 17798014 (reference application).
17798014 claims a patch product comprising a membrane substrate absorbable by the skin and at least one active ingredient, characterized in that said membrane substrate is formed by at least one electrospun fiber comprising hyaluronic acid and an electrospinning promotor, wherein the promotor comprises at least one of pullulan and alginate and that the active ingredient is selected from cosmetic active ingredients, pharmaceutical active ingredients and nutritional active ingredients (claim 1; according to the claim limitations of the instant claim 1). Furthermore, claim 8 of 17798014 claims the active ingredient comprises a non-steroidal anti-inflammatory and/or one or more analgesics (according to the claim limitations of the instant claims 1 and 10). Claim 17 of 17798014 claims the electrospinning promotor is pullulan (according to the claim limitations of the instant claim 1). Claim 19 of 17798014 claims the patch in which the ratio of hyaluronic acid and the electrospinning promotor are present in the at least one electrospun fiber in a weight ratio of between 10:1 and 1:10 (according to the claim limitations of the instant claims 1, 4, and 5). Claims 20 and 21 of 17798014 further narrows the ratio of hyaluronic acid and the electrospinning promotor in the at least one electrospun fiber in a weight ratio of 4:1 – 1:7 or 3:1 – 1:6 respectively (according to the claim limitations of the instant claims 1, 4, and 5).
Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-6, 8, and 11-12 of copending Application No. 17798029 (reference application).
17798029 claims a composition to be electrospun, comprising a first compound to be electrospun and an electrospinning promotor, wherein said first compound to be electrospun comprises hyaluronic acid and said electrospinning promotor is pullulan (claims 1 and 11; according to the claim limitations of the instant claim 1). 17798029 claims the proportion between the first compound to be electrospun and the electrospinning promotor is comprised between 4:1 and 1:7 (claim 4; according to the claim limitations of the instant claim 4). 17798029 claims the composition further comprising an active ingredient selected from the group consisting of peptide, amino acid, antioxidant, and vitamin (claim 5; according to the claim limitations of the instant claim 1). Claim 12 of 17798029 claims the promotor:hyaluronic acid weight ratio is equal to 1:2 (according to the claim limitations of the instant claim 4).
Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. 18844848 (reference application) in view of Barbe et al. (CA3019941A, published 10/12/2017, hereafter Barbe), and in view of over Vicini et al. (Vicini, S., et al., (2018), Alginate and alginate/hyaluronic acid membranes generated by electrospinning in wet conditions: Relationship between solution viscosity and spinnability. J. Appl. Polym. Sci., 46390, hereafter Vicini), and as evidenced by Badylak et al. (Badylak, S. F., Brown, B. N., & Gilbert, T. W. (2013). CHAPTER II.6.16 TISSUE ENGINEERING WITH DECELLULARIZED TISSUES. In Biomaterials Science (3rd ed., pp. 1316–1331). essay, Elsevier Inc., hereafter Badylak). Although the claims at issue are not identical, they are not patentably distinct from each other.
As evidenced by Badylak, hyaluronic acid is a type of glycosaminoglycan (page 1322, paragraph 2, glycosaminoglycans).
18844848 claims a composition to be electrospun comprising a first compound to be electrospun elected from xanthan gum, pectins, chitin, chitosan, dextran, carrageenan, guar gum, agar, cellulose derivatives, albumin, starch, gelatin, collagen, elastin, 3-glucans, glycosaminoglycans, mucopolysaccharides, water-soluble polysaccharides and their derivatives; and an electrospinning promoter selected from alginate, pullulan and a mixture thereof (claim 1; according to the claim limitations of the instant claim 1). Claim 7 of 18844848 claims the weight ratio between said first compound to be electrospun and said electrospinning promotor is comprised between 2:1 and 1:2 (according to the claim limitations of the instant claim 4).
18844848 fails to explicitly claim hyaluronic acid as the first compound. Furthermore, 18844848 to claim the addition of an active ingredient to be a cosmetic active ingredient, a pharmaceutical active ingredient, a nutritional active ingredient, or more specifically a non-steroidal anti-inflammatory drug.
One skilled in the art before the effective filing date of the claimed invention would claim an electrospun composition comprising a glycosaminoglycan first compound and an electrospinning promotor of either pullulan or alginate as claimed by 18844848 with the simple substitution of hyaluronic acid as the glycosaminoglycan as evidenced by Badylak. Simple substitution of one glycosaminoglycan for another is within the purview of the skilled artisan and would yield predictable results. Furthermore, one skilled in the art before the effective filing date of the claimed invention would claim an electrospun composition comprising pullulan and hyaluronic acid as claimed by 18844848 as evidenced by Badylak with the ready for improvement with the known technique of adding a non-steroidal anti-inflammatory drug as an active ingredient as outlined by Barbe. Adding the forementioned components to a electrospun composition comprising pullulan and hyaluronic acid as claimed by instant claim 1 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. 18844848 claims a ratio range of first compound to electrospinning promotor that lies within the range claimed by instant claim 4 thus making the claims of obviousness.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of copending Application No. 19101023 (reference application) in view of Barbe et al. (CA3019941A, published 10/12/2017, hereafter Barbe).
19101023 claims an article comprising a patch product disposed on a base support, wherein said patch product contains a membrane substrate absorbable by the skin formed by at least one electrospun fiber composed of a first compound to be electrospun and an electrospinning promoter (claim 1; according to the claim limitations of the instant claims 1 and 10). Claim 5 of 19101023 claims the first compound to be electrospun is selected from a group to include glycosaminoglycans (according to the claim limitations of the instant claim 1 and 10). Furthermore, claim 6 of 19101023 claims the electrospun compound is selected from a group to include hyaluronic acid (according to the claim limitations of the instant claims 1 and 10). Claim 7 of 19101023 claims the electrospinning promotor is selected from alginate, pullulan, and mixtures thereof (according to the claim limitations of the instant claims 1 and 10).
19101023 fails to claim the addition of an active ingredient, specifically a non-steroidal anti-inflammatory drug as in claim 1.
As mentioned above, Barbe claims a nanofibrous mat composition comprising electrospun nanofibres forming said mat and ceramic particles dispersed throughout said nanofibres and comprising a ceramic matrix and a dopant releasably encapsulated (claim 1; according to the claim limitations of claim 1). Claim 2 of Barbe claims the nanofibers biodegradable polymers and claim 3 of Barbe claims the nanoparticles to be selected from a group to include hyaluronic acid and sodium alginate (according to the claim limitations of claim 1). Furthermore, claim 16 of Barbe teaches the dopant to be analgesics (nonsteroidal anti-inflammatory drugs) (according to the claim limitations of claim 1).
One skilled in the art before the effective filing date of the claimed invention would claim an electrospun composition comprising pullulan or alginate and hyaluronic acid as claimed by 19101023 with the ready for improvement with the known technique of adding a non-steroidal anti-inflammatory drug as an active ingredient as outlined by Barbe. Adding the forementioned components to a electrospun composition comprising pullulan and hyaluronic acid as claimed by instant claim 1 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Response to Applicant’s Arguments
Applicant’s arguments filed on 01/28/2026 have been fully considered.
Regarding the claim rejections under 35 USC §102, Applicant argues the claims have been amended to recite ‘for forming a product that is absorbable by the skin’ and that Sandri and other cited references fail to recite this limitation. Further, Applicant furthers this argument by stating that Sandri is directed towards water-insoluble nanofibers and membranes that are not designed to be absorbed by the skin.
In response to Applicant’s argument that Sandri does not teach the composition is absorbable by the skin, it is noted that ‘for forming a product that is absorbable by the skin’ is intended use. The instant claims do not claim ‘an absorbable composition’ nor ‘biodegradable’ composition. Rather as outline above in the claim interpretation and reiterated here, the instant application is a composition and future intended use of the composition, such as in a product that is absorbable by the skin, is not given patentable weight. Further, it is noted that Sandri teaches an electrospinning composition comprising pullulan, sodium hyaluronate, and an active ingredient thus teaching the limitations of the instant claim 1.
In summary, the examiner is not persuaded by Applicant’s argument. The rejection is maintained and updated to account for amendments.
Regarding the claim rejections under 35 USC §103, Applicant argues the claims have been amended to recite ‘for forming a product that is absorbable by the skin’ and that Vicini is directed toward tissue engineering. Applicant continues by arguing Vicini does not disclose or teach that the membrane is ‘absorbable by the skin’. Secondly, Applicant argues that Vicini teaches the total polymer concentration to be 1.5, 2, and 4 wt% and that it doesn’t teach the concentration of PEO and alginate is 4% of the composition.
In response to Applicant’s arguments, specifically applicant's arguments against the references individually, Applicant is reminded that 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). Further, in response to Applicant’s argument that Vicini does not teach the composition is absorbable by the skin, it is again noted that ‘for forming a product that is absorbable by the skin’ is intended use. As outline above in the claim interpretation and reiterated here, the instant application is a composition and future intended use of the composition, such as in a product that is absorbable by the skin, is not given patentable weight.
In response to Applicant’s that Vicini does not teach the concentration of PEO and alginate is 4-10% of the composition. Applicant is encouraged to review the 35 USC §103 rejection above, which notes that Vicini teaches a concentration of today polymer to be 4% and teaches a ratio of SA/PEO/HA that is 60:30:10 (p. 3, paragraph 4 and table 1) which would amount to a concentration of SA/PEO that is 3.6% which is merely close to the instantly claimed 4%. As noted above and reiterated here, MPEP 2144.05 (I) states “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). Further, Vicini teaches a concentration of 50/50 ratio SA/PEO alone that is 4% as outlined above (p. 3, paragraph 4 and table 1). Therefore, a prima facia case of obvious for one skilled in the art exists for the claimed range.
In summary, the examiner is not persuaded by Applicant’s arguments. The rejection is maintained and updated to account for claim amendments.
Regarding the claim rejections under Double Patenting, Applicant again requests the double patenting rejections will be addressed when allowable subject matter is agreed upon. Again, Applicant is reminded this is an improper response to a double patenting rejection. Since Applicants fail to properly respond to the rejections of record, the double patenting rejections are updated based off of claim amendments and maintained.
Conclusion
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA NICOLE ISNOR whose telephone number is (703)756-5561. The examiner can normally be reached Monday-Friday 5:30am-3pm PST.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./Examiner, Art Unit 1611