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 .
Status of Claims
A new claim set was filed on 2/20/26 with the following:
Amended claims
8 and 12-14
Newly canceled claims
11
Newly added claims
Previously canceled claims
Previously withdrawn claims
Claims under instant examination
1-10 and 12-19
Withdrawn Claim Rejections
All rejections pertaining to claim 11 are moot because the claim was cancelled in view of the amendments filed on 2/20/26.
The rejections of:
claim(s) 8-10 and 15-19 under 35 U.S.C. 102(a)(1) as being anticipated by Borelli et al. (US 2014/0017462; published: 1/16/14; in IDS dated 10/4/22)
are hereby withdrawn in view of the claim amendments filed on 2/20/26.
Maintained 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 obviousness-type 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); 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 conflicting 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.
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 1-10 and 12-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,464,232. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to the same glass comprising SiO2, copper-containing oxide, R2O (R = K and/or Na), a glassy phase enriched in silicon relative to the degradable phase, a degradable phase and a cuprite crystalline phase (particle of less than 5 µm or less) disposed within the degradable phase. The ‘232 claims are directed to the method of making the abovementioned composition, whereas the instant claims are directed to the composition. However, one of ordinary skill in the art would recognize that if he/she knew how to use the instantly claimed composition (method of ‘232), then it is obvious that the instant composition was known at the time of filing. Thus, the instant claims and the application claims are obvious variants. It is also noted that the ‘232 composition made represents a species (with regards to the amount of SiO2, copper-containing oxide, R2O; additional ingredients such as Al2O3, B2O3 and P2O5) within the scope of the instantly claimed genus. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cor. 1993). Thus, the instant claims and the application claims are obvious variants.
Claims 1-10 and 12-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 9,622,483. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim sets are drawn to the same article comprising a glass, wherein the glass comprises a cuprite phase comprising a plurality of Cu1+ ions; a first phase comprising at least one of B2O3, P2O5 and R2O, wherein R is selected from the group consisting of K, Na, Li, Rb, Cs and combinations thereof and Cu; a second phase comprising SiO2, and a polymer, wherein the polymer comprises a thermoplastic polymer, a polyolefin, an injection moldable thermosetting polymer or combinations thereof; wherein the glass comprises a surface portion having a depth of less than about 5 nanometers (nm), the surface portion comprising a plurality of copper ions wherein at least 75% of the plurality of copper ions are Cu1+; wherein the glass to polymer ratio in the range from about 10:90 to about 90:10, based on weight percent; wherein the article exhibits the same biological effect (e.g., log reduction of bacteria, virus); wherein the cuprite phase is dispersed in at least one of the first phase and the second phase; wherein the cuprite phase comprises at least about 10 weight percent of the glass. It is noted that the ‘483 composition represents a species (with regards to the first phase comprising at least one of B2O3, P2O5 and R2O, wherein R is selected from the group consisting of K, Na, Li, Rb, Cs and combinations thereof and wherein the plurality of Cu1+ ions is disposed on the surface and in at least one of the glass network and glass matrix) within the scope of the instantly claimed genus. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cor. 1993). Thus, the instant claims and the application claims are obvious variants.
Response to Arguments
Applicants’ arguments have been fully considered, but are not found persuasive.
Applicants argue that the double patenting rejections should be withdrawn in view of the terminal disclaimers submitted [Remarks: p. 6].
This is not found persuasive. In response, terminal disclaimers have not been filed.
Conclusion
THIS ACTION IS MADE FINAL. 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 GENEVIEVE S ALLEY whose telephone number is (571)270-1111. The examiner can normally be reached Monday-Friday 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 at 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617