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 .
Request for Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/02/2025 has been entered.
DETAILED ACTION
Claims 24-43 are pending in the claim set filed 7/02/2025.
Claims 33-43 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on filed 5/31/2024.
Herein, claims 24-32 are for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/21/2025 have been considered by the examiner and an initialed copy of the IDS is included with the mailing of this office action.
Claim Rejections - 35 USC § 103
(Rejection Maintained)
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.
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
The rejection of claims 24-32 under 35 U.S.C. 103(a) as being unpatentable over Gaharwar et al (WO2014205261, cited in IDS filed 9/02/2022, Desig. ID: 33) in view of Patterson et al (US20050025707, cited in IDS filed 9/02/2022, Desig. ID: 13) [Patterson] is maintained.
Regarding claim 24-32,
Gaharwar teaches shear-thinning compositions comprising gelatin and a derivative thereof, and silicate nanoparticles, wherein the shear thinning compositions are hemostatic compositions (p.1, lns.22-23; pages 18-22; p.22, lns.23-29: shear thinning compositions; Examples, e.g., Ex.6. p.35; See p.30, lns.21-27 to p.43; See entire document).
Gaharwar teaches that the term "silicate nanoparticles", used alone or in combination with other terms, refers to silicate layered clays. Gaharwar teaches that silicate layered clay is laponite (p.19, lns.11-14). Further, Gaharwar teaches that the silicate nanoparticles are from about 5 nm to about 60 nm in diameter (p.8, lns.9-10; p.19, lns.16-19; claim 172).
Gaharwar teaches that the gelatin is porcine gelatin (e.g., type-A porcine gelation derived from porcine skin, gelatin derived from porcine bones, and the like, i.e., derived from a mammalian source (p.18, lns.13-22).
Gaharwar teaches that these compositions comprise about 6.75 percent by weight gelatin and about 2.25 percent by weight silicate nanoparticles, about 4.5 percent by weight gelatin and about 4.5 percent by weight silicate nanoparticles, or, about 2.25 percent by weight gelatin and about 6.75 percent by weight silicate nanoparticles (p.20, lns.23-27). Gaharwar teaches that the weight of the silicate nanoparticles about 0.5 percent to about 20 percent by weight (p.20, lns.4-8). Gaharwar teaches that the ratio of gelatin or a derivative thereof to silicate nanoparticles is from about 0.1 to about 1.0 (p.20, lns.9-14).
The percent ranges and ratio of gelatin and silicate nanoparticles as taught by Gaharwar overlap or lie within the claimed ranges in instant claims 27-29. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.
Gaharwar teaches the compositions further comprise water: In some embodiments, the composition comprises about 0.5 percent to about 99
percent by weight of the water; in some embodiments, the composition comprises about 30 percent to about 99; 15 percent by weight of the water. In some embodiments, the composition comprises about 50 percent to about 99; percent by weight of the water; In some embodiments, the composition comprises about 70 percent to about 99 percent by weight of the water; In some embodiments, the composition comprises about 90 percent to about 99 percent by weight of the water; In some embodiments, the composition comprises about 80 percent to about 99 percent by weight of the water; In some embodiments, the composition comprises about 90 percent to about 99 percent by weight of the water; In some embodiments, the composition comprises about 91 percent to about 97 percent by weight of the water (p.3, See entire document).
Further, Gaharwar teaches that the composition comprises about 6.75 percent by weight gelatin, about 2.25 percent by weight silicate nanoparticles, and about 91 percent by weight water; or about 4.5 percent by weight gelatin, about 4.5 percent by weight silicate nanoparticles, and about 91 percent by weight water; or about 2.25 percent by weight gelatin, about 6.75 percent by weight silicate nanoparticles, and about 91 percent by weight water; or about 4.5 percent by weight gelatin, about 1.5 percent by weight silicate nanoparticles, and about 94 percent by weight water; or 25 about 3 percent by weight gelatin, about 3 percent by weight silicate nanoparticles, and about 94 percent by weight water; or about 1.5 percent by weight gelatin, about 4.5 percent by weight silicate nanoparticles, and about 94 percent by weight water; or about 2.25 percent by weight gelatin, about 0.75 percent by weight silicate 30 nanoparticles, and about 97 percent by weight water; or about 1.5 percent by weight gelatin, about 1.5 percent by weight silicate nanoparticles, and about 97 percent by weight water; or about 0.75 percent by weight gelatin, about 2.25 percent by weight silicate nanoparticles, and about 97 percent by weight water (p.7-8; See entire document).
Gaharwar differs from the claims in that the document does not teach ta contrast agent comprising metallic particles.
However, Patterson cures the deficiency.
Patterson teaches fumed silica embolic compositions for use in a method for embolizing vascular sites in the treatment of aneurysms, arteriovenous fistulae, arteriovenous malformations, tumors, and other vascular diseases ([0002]; [0028]; [0040]; [0046]; [0081]; [0166]; See entire document). Patterson teaches that when an embolic composition comprising fumed silica is moved (e.g., by syringe-injected flow through a catheter), the silanol network created by the hydrogen bonding between the particles is broken or sheared and the fluid "thins." This change in fluid thickness, or viscosity or yield stress, is known as "shear thinning" and is reversible. Patterson teaches embolic compositions comprising a biocompatible contrast agent, wherein the contrast agent includes gold, tungsten, and platinum, wherein the contrast agents are those having an average particle size of about 10 μm or less [0100]. Patterson teaches contrast agents are beneficial during post-treatment procedures to visualize the embolized mass, for example, to monitor the disease condition and/or retreatment purposes [003-0034]. Furthermore, Patterson teaches visualization is particularly necessary when using catheter delivery techniques in order to ensure both that the composition is being delivered to the intended vascular site and that the requisite amount of composition is delivered [0032].
One skilled in the art would have recognized the benefit of including a contrast agent in the shear-thinning composition as taught by Gaharwar, wherein the contrast agent includes gold, tungsten, and platinum (i.e., contrast comprising metallic particles). One skilled in the art would have been motivated to do so in order to monitor the delivery of the shear-thinning composition to a targeted vascular site, and then to further monitor the embolized mass following post-treatment.
All the claimed elements herein are known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Therefore, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide instantly claimed antimicrobial composition and one of ordinary skill would have had a reasonable expectation of success in producing the claimed invention. Therefore, in the absence of evidence to the contrary, the claimed invention as a whole would have been obvious to one of ordinary skill as evidenced by Gaharwar and Patterson, as a whole.
Response to Arguments
Applicant argue that herewith the Declaration of Dr. Alireza Khademhosseini under 37 C.F.R. § l .130(a) (the "Declaration") that was previously filed in the parent case-US. Application No. 17/392,088, now U.S. Patent No. 11,426,450. The Declaration addresses the prior art status of Gaharwar. As set forth in the Declaration, Gaharwar is the inventor's own work (i.e., Gaharwar is a disclosure made by the inventor). Gaharwar is not prior art under 35 U.S.C. § 102 because: (1) Gaharwar published on December 24, 2014 (i.e., less than one year prior to the effective filing date of the presently claimed invention2) and (2) the subject matter disclosed in Gaharwar was disclosed by the inventor (i.e., Dr. Khademhosseini). Patterson does not teach or suggest the presently-claimed invention. Specifically, Patterson does not teach or suggest a shear-thinning composition comprising gelatin and silicate nanoparticles in the amounts recited in independent claim 24.
Applicant’s arguments have been fully considered but they are not persuasive, because the Declaration of Dr. Alireza Khademhosseini under 37 C.F.R. § l .130(a) fails to establish a sufficient connection to Instant Application 17/862,959.
Affidavit-Rule 130(a)- America Invents Act filed 07/02/2025:
First Named Inventor: Alireza Khademhosseini et al; Application No. 17/392,088
Item 1: I am a co-inventor, along with Rahmi Oklu, of the subject matter disclosed and claimed in U.S. Patent Application No. 17/392,088 (hereinafter "the '088 application").
Item 2: I am also a co-inventor, along with Akhilesh K. Gaharwar, Reginald Keith Avery, Gareth H. McKinley, and Bradley David Olsen, of the subject matter disclosed and claimed in International Patent Application Pub. No. WO2014205261 (hereinafter "the '261 application"). The present claims are directed to shear-thinning compositions comprising about 1.5% to about 10% by weight of silicate nanoparticles, about 1.5% to about 6.75 % by weight of gelatin or a derivative thereof, and a contrast agent; and methods of use thereof for vascular embolization.
However, Claims of Application 17/862,959 filed July 12, 2022 recite:
Instant Claim 24. A shear-thinning composition comprising: about 1.5% to about 10% by weight of silicate nanoparticles; about 0.5% to about 6.75% by weight gelatin or a derivative thereof; a contrast agent comprising metallic particles; and about 50% to about 99% water.
Declaration of Dr. Alireza Khademhosseini under 37 C.F.R. § 1.130(a) requires revision to establish a sufficient connection to invention of the Instant Application 17/862,959.
Maintained Double Patenting Rejections
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
The rejection of claims 24-32 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,426, 450 (herein ‘450) in view of Patterson et al (US 20050025707) [Patterson] is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because Instant Claims and ‘450 claims are directed to common subject matter.
Instant claims are directed to a shear-thinning composition comprising silicate nanoparticles, gelatin or a derivative thereof; and a contrast agent comprising metallic particles, wherein the shear-thinning composition comprises about 0.5% to about 6.75% by weight of gelatin or a derivative thereof, wherein the shear-thinning composition comprises from about 1.5% to about 10% by weight of silicate nanoparticles, wherein the silicate nanoparticles are laponite, and further comprising a therapeutic agent. Water is present from 50-99% by weight.
‘450 claims are directed to a shear-thinning composition comprising: about 2.25% to about 10% by weight of silicate nanoparticles; about 0.5% to about 1.5% by weight of gelatin or a derivative thereof; and a contrast agent, further comprising deionized water, wherein the shear-thinning composition comprises from about 2.75% to about 11% by weight of silicate nanoparticles and gelatin or a derivative thereof together, wherein the shear-thinning composition comprises about 2.25% to about 6.75% by weight of silicate nanoparticles, wherein the shear-thinning composition comprises about 0.75% to about 1.5% by weight of gelatin or a derivative thereof, wherein the diameter of the silicate nanoparticles is about 5 nm to about 60 nm, wherein the silicate nanoparticles include laponite, wherein the shear-thinning composition comprises about 0.75 percent by weight gelatin or a derivative thereof and about 2.25 percent by weight silicate nanoparticles, and further comprising a therapeutic agent that is an immunosuppressant. Water is defined as being present in the formulation from 0.5-90% by weight Column 5, lines 49-52.
‘450 claims differ from instant claims in that the ‘450 claims do not claim that the contrast agent comprises metallic particles.
However, Patterson cures the deficiency.
Patterson teaches fumed silica embolic compositions for use in a method for embolizing vascular sites in the treatment of aneurysms, arteriovenous fistulae, arteriovenous malformations, tumors, and other vascular diseases ([0002]; [0028]; [0040]; [0046]; [0081]; [0166]; See entire document). Patterson teaches that when an embolic composition comprising fumed silica is moved (e.g., by syringe-injected flow through a catheter), the silanol network created by the hydrogen bonding between the particles is broken or sheared and the fluid "thins." This change in fluid thickness, or viscosity or yield stress, is known as "shear thinning" and is reversible. Patterson teaches embolic compositions comprising a biocompatible contrast agent, wherein the contrast agent includes gold, tungsten, and platinum, wherein the contrast agents are those having an average particle size of about 10 μm or less [0100]. Patterson teaches contrast agents are beneficial during post-treatment procedures to visualize the embolized mass, for example, to monitor the disease condition and/or retreatment purposes [003-0034]. Furthermore, Patterson teaches visualization is particularly necessary when using catheter delivery techniques in order to ensure both that the composition is being delivered to the intended vascular site and that the requisite amount of composition is delivered [0032].
Accordingly, it would have been obvious to one of skill in the art to provide the instantly claimed metallic contrast agent in the shear-thinning composition of ‘450 claims in view of Patterson.
One skilled in the art would have recognized the benefit of including a contrast agent in the shear-thinning composition of ‘450, wherein the contrast agent includes gold, tungsten, and platinum (i.e., contrast comprising metallic particles). One skilled in the art would have been motivated to do so in order to monitor the delivery of the shear-thinning composition to a targeted vascular site, and then to further monitor the embolized mass following post-treatment.
The rejection of claims 24-32 on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11083780 (herein ‘780) in view of Patterson et al (US 20050025707) [Patterson] is maintained.
Although the claims at issue are not identical, they are not patentably distinct from each other because Instant Claims and ‘780 claims are directed to common subject matter.
Instant claims are directed to a shear-thinning composition comprising silicate nanoparticles, gelatin or a derivative thereof; and a contrast agent comprising metallic particles, wherein the shear-thinning composition comprises about 0.5% to about 6.75% by weight of gelatin or a derivative thereof, wherein the shear-thinning composition comprises from about 1.5-10 % by weight of silicate nanoparticles, wherein the silicate nanoparticles are laponite, and further comprising a therapeutic agent. Water is present from 50-99% by weight.
‘780 claims are directed to about 6.75 percent by weight gelatin and about 2.25 percent by weight silicate nanoparticles; or about 4.5 percent by weight gelatin and about 4.5 percent by weight silicate nanoparticles; or about 2.25 percent by weight gelatin and about 6.75 percent by weight silicate nanoparticles; or about 4.5 percent by weight gelatin and about 1.5 percent by weight silicate nanoparticles; or about 3 percent by weight gelatin and about 3 percent by weight silicate nanoparticles; or about 1.5 percent by weight gelatin and about 4.5 percent by weight silicate nanoparticles; or about 2.25 percent by weight gelatin and about 0.75 percent by weight silicate nanoparticles; or about 1.5 percent by weight gelatin and about 1.5 percent by weight silicate nanoparticles; or about 0.75 percent by weight gelatin and about 2.25 percent by weight silicate nanoparticles, wherein the percent weight amounts of gelatin and silicate nanoparticles as claimed in the ‘780 claims overlap with Instant Claims. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. Furthermore, the ’780 claims also recite that the composition further comprises water. Water is defined as being present from 0.5-99% by weight, column 5, lines 44-48.
Instant Claims are directed to a shear-thinning composition comprising gelatin or a derivative thereof and silicate nanoparticles whereas ‘780 claims are directed to a method of using of a shear-thinning composition, wherein both Instant Claims and the ‘780 claims have overlapping percent weight amounts of gelatin and silicate nanoparticles and therapeutic agent that is immunosuppressant.
‘780 claims differ from Instant Claims in that Instant claims comprise a contrast agent comprising metallic particles.
However, Patterson cures the deficiency.
Patterson teaches fumed silica embolic compositions for use in a method for embolizing vascular sites in the treatment of aneurysms, arteriovenous fistulae, arteriovenous malformations, tumors, and other vascular diseases ([0002]; [0028]; [0040]; [0046]; [0081]; [0166]; See entire document). Patterson teaches that when an embolic composition comprising fumed silica is moved (e.g., by syringe-injected flow through a catheter), the silanol network created by the hydrogen bonding between the particles is broken or sheared and the fluid "thins." This change in fluid thickness, or viscosity or yield stress, is known as "shear thinning" and is reversible. Patterson teaches embolic compositions comprising a biocompatible contrast agent, wherein the contrast agent includes gold, tungsten, and platinum, wherein the contrast agents are those having an average particle size of about 10 μm or less [0100]. Patterson teaches contrast agents are beneficial during post-treatment procedures to visualize the embolized mass, for example, to monitor the disease condition and/or retreatment purposes [003-0034]. Furthermore, Patterson teaches visualization is particularly necessary when using catheter delivery techniques in order to ensure both that the composition is being delivered to the intended vascular site and that the requisite amount of composition is delivered [0032].
Accordingly, it would have been obvious to one of skill in the art to provide the shear-thinning composition in Patent ‘780 with a metallic contrast agent.
One skilled in the art would have recognized the benefit of including a contrast agent in the shear-thinning composition of ‘780, wherein the contrast agent includes gold, tungsten, and platinum (i.e., contrast comprising metallic particles). One skilled in the art would have been motivated to do so in order to monitor the delivery of the shear-thinning composition to a targeted vascular site, and then to further monitor the embolized mass following post-treatment.
Response to Arguments
Applicant respectfully requests that this rejection be held abeyance until the claims are otherwise allowable, at which time Applicant will consider filing a terminal disclaimer.
Applications’ arguments have been fully considered but they are not persuasive, because Applicants did not distinctly and specifically point out the supposed errors in the double patenting rejection. A request to hold a rejection in abeyance is not a proper response to a rejection. Rather, a request to hold a matter in abeyance may only be made in response to an OBJECTION or REQUIREMENTS AS TO FORM (see MPEP 37 CFR 1.111(b) and 714.02). Thus, the Double Patenting rejections of record have been maintained as no action regarding these rejections has been taken by applicants at this time.
New Grounds of Double Patenting Rejection
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 24-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-31 of copending Application No. 19/029,154 (herein ‘154).
Although the claims at issue are not identical, they are not patentably distinct from each other because Instant Claims and ‘’154 claims are directed to common subject matter.
Instant claims are directed to a shear-thinning composition comprising silicate nanoparticles, gelatin or a derivative thereof; and a contrast agent comprising metallic particles, wherein the shear-thinning composition comprises about 0.5% to about 6.75% by weight of gelatin or a derivative thereof, wherein the shear-thinning composition comprises from about 1.5% to about 10% by weight of silicate nanoparticles, wherein the silicate nanoparticles are laponite, and further comprising a therapeutic agent. Water is present from 50-99% by weight.
‘154 claims are directed to a shear-thinning composition comprising about 0.5% to about 4.5% by weight of silicate nanoparticles; gelatin or a derivative thereof; and a contrast agent; wherein a ratio of the gelatin or a derivative thereof to the silicate nanoparticles ranges from about 0.1 to about 0.3; comprising about 1.5% to about 4.5% by weight of silicate nanoparticles; comprising about 1.5% to about 4.5% by weight of silicate nanoparticles; wherein the silicate nanoparticles are laponite; and further comprising a chemotherapeutic agent.
‘154 claims differ from Instant Claims in that Instant Claims comprise water is present from 50-99% by weight. However, ‘154 claims are open-ended and do not exclude additional, unrecited elements, for example water, See, e.g. Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004.). Furthermore, the ratio of gelatin or derivative thereof to silicate nanoparticles recited in ‘154 claims overlap with the ratio percent amounts by weight of the gelatin or derivative thereof to silicate nanoparticles recited in Instant Claims. Therefore, it would have been obvious to optimize the percent amounts by weight of the gelatin or derivative thereof to silicate nanoparticles recited in Instant Claims in view of the ‘154 claims having a reasonable expectation of success. Optimization of parameters is a routine practice that would be obvious to a person of ordinary skill in the art to employ and reasonably expect success. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233,235 (CCPA 1955) & MPEP 2144.05.
Accordingly, it would have been prima facie obvious to one of skill in the art to provide the shear-thinning composition of Instant claims in view of the subject matter as recited in the ‘154 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusions
No claim is allowed.
/T.W./Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619