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 .
Responsive to claim set of 23JUN2026
Claims pending 1-14,17-26
Claims currently under consideration 1-14,17-26
Priority
This application has an actual filing date of 03/07/2023 and is a
371 of PCT/EP2021/074724 filed 09/08/2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d) to European patent document EP 20195132.4, filed 09/08/2020. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Withdrawn Objection(s) and/or Rejection(s)
Any rejections from the previous action not reiterated below are hereby withdrawn in light of Applicant’s amendments
Maintained & Updated 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 1-10,12-14,17-18 plus 19-25 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-13,16-17 plus 18-27 of copending Application No. 18/025107.
Although said rejected and ‘107 claims are not identical, they are not patently distinct from each other because said present claims represent minor variations of all that is recited in the conflicting claims of ‘107 and moreover the claimed subject matter of present sole independent claim 1 and ‘107 sole independent claim 1 is identical under the embodiment when volume organic solvent Vos and volume compatible solute Vcs are the same in each solution, and, as a result the conflicting claims are rendered particularly obvious.
The following is illustrative: regarding instant claims 2-9, said copending application is drawn to the same compatible solutes and organic solvents (cf ‘107 claims 2-9,21,22); regarding instant claim 10 and ‘107 claim 10 are both drawn to the same procedure; and regarding instant claim 12, ‘107 is drawn to the same salts (cf ‘107 claim 11). The subject matter of new claims 19-25 is echoed in ‘107 claims 18-20,23-27.
Additionally, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify embodiments of ‘107 that fall outside the scope of the present application to select a specifically disclosed embodiment that falls within the scope of the present application because each set of claims concern equipment and materials with similar with similar physiochemical properties in that they all possess a common core structure both applied toward dissolving hydrophobic ligands and/or preventing undesirable biological activities such as crystal cracking upon ligand soaking. Furthermore, one of ordinary skill in the art would have been motivated to make such a modification because such modifications are disclosed as “preferred” in so far as the dependent claims of ‘107 “teach toward” Applicant’s presently claimed methods performed in the same array device.
This is a provisional obviousness-type double patenting rejection.
Response to Arguments
In the pertinent section, page 14 of the current remarks urges that Applicants will attend to this rejection upon indication of allowable subject matter.
In response, since matters under 35 USC 112 remain, until a terminal disclaimer is filed or Applicant persuasively argues the present claims are not obvious over ‘100, the foregoing double patenting rejection shall be maintained.
New Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14,17-26 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships which render the metes and bounds uncertain are as follows.
Claim 1 lines 2-3 specifies water in the alternative (and/or) to either a crystallization solution (crs) or an equivalent salt solution thereof, yet line 13 specifies varying volumes of water are required. It is not uncertain if water is needed or not. For the purposes of this action, the claim has been interpreted as requiring water volumes.
Additionally claim 1 line 31 is drawn to a mixture of “such” solvents, whereas it is not clear which solvents ‘such’ is referring to in so far as a crystallization solution includes various solvents (e.g. commonly PEGs, one of Applicant’s “compatible solutes”); methylamine is a solvent, glycerol is a solvent and even water in of itself is a solvent. Accordingly, it is not clear what organic solvent mixtures the claim intends to encompass.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The terms “2-aminoacetic acid (glycine)” and ” 2-aminoethanesulfonic acid (taurine)” in claim 25 are used by the claim to mean “a L- or D amino acid,” whereas glycine and taurine are both achiral The term(s) is(are) indefinite because the specification does not clearly redefine the term(s).
Indeed, according to MPEP 2173.02: If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112, second paragraph, would be appropriate. See Morton Int ’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
In so far as the metes and bounds of the offending claim(s) may not be interpreted properly for the reasons above, all dependent claims therefrom claim 1 is rejected as being indefinite as well.
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 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.
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 CHRISTOPHER M GROSS whose telephone number is (571)272-4446. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heather Calamita can be reached on (571)272-2876. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M GROSS/
Primary Examiner, Art Unit 1684
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