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 .
DETAILED ACTION
Claim Status
Claims 5-11 and 13-15 have been amended.
Claims 1-16 are pending and under consideration.
Election/Restrictions
Applicant's election with traverse, that the amphoteric surfactant is sodium cocoamphoacetate, the zwitterionic surfactant is cocamidopropyl betaine, that the nonionic surfactant is capryloyl/caproyl methyl glucamide, that the cationic polymer is cationic hydroxyethylcellulose, the anionic surfactant is sodium methyl cocoyl taurate, and the polyol is glycerin, in the reply filed on 29 Dec 2025 is acknowledged. The traversal is on the ground(s) that that the species may be searched and examined without undue burden. This is not found persuasive as such arguments do not apply when the restriction is required under 35 U.S.C. 121 and 372, as in the instantly filed application. Thus, when the Office considers international applications as an International Searching Authority, as an International Preliminary Examining Authority, and during the national stage as a Designated or Elected Office under 35 U.S.C. 371, PCT Rule 13.1 and 13.2 will be followed when considering unity of invention of claims of different categories without regard to the practice in national applications filed under 35 U.S.C. 111. As detailed in the Requirement for Restriction/Election dated 29 Oct 2025, unity of invention is lacking a posteriori, that is, after taking the prior art into consideration. Purkayastha et al. (WO 2020/127237) renders obvious the technical feature of the instantly filed application as detailed in the restriction requirement. The technical feature is alternatively obvious over the teachings of Ceballos et al. (US 2019/0365619) as detailed in the rejection below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-5 and 16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. The examiner notes that component i) of claim 1 requires that either an amphoteric surfactant or a zwitterionic surfactant is present. Claim 1 requires that when the amphoteric surfactant is present that it is a betaine. The applicant elected that the amphoteric surfactant is sodium cocoamphoacetate which is not a betaine. Claims 2-5 and 16 are withdrawn as they are understood to require a combination of amphoteric surfactants, namely the betaine recited in claim 1 and an additional amphoacetate or amphopropionate. The election for the amphoteric surfactant is not to a betaine and thus the claims are withdrawn as directed to non-elected subject matter.
Claims 1 and 6-15 are under consideration to the extent of the elected species, i.e., that the amphoteric surfactant is sodium cocoamphoacetate, the zwitterionic surfactant is cocamidopropyl betaine, that the nonionic surfactant is capryloyl/caproyl methyl glucamide, that the cationic polymer is cationic hydroxyethylcellulose, the anionic surfactant is sodium methyl cocoyl taurate, and the polyol is glycerin.
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Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10 Aug 2023 is in compliance with the provisions of 37 CFR 1.97, except where noted. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The use of the term “Tween” on page 14 line 29, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 7 and 10 are objected to because of the following informalities: Claim 7 recites the same component “cocamidopropyl betaine” four separate times and the component “(carboxymethyl) dimethyloleylammonium hydroxide” two separate times. Claim 10 lists the same components, “cocamidopropyl betaine,” “(carboxymethyl) dimethyloleylammonium hydroxide,” “lauryl betaine,” and “betaine citrate” two separate times. Each of the components only need to be listed once in the list.
Appropriate correction is required.
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 and 6-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the phrase “total weight of surfactant” three times in the second half of the claim. This lacks proper antecedent basis and it is unclear what “surfactant” is intended to refer to. The claim refers to several components as surfactant, including surfactant component, amphoteric surfactant, zwitterionic surfactant, nonionic surfactant and anionic surfactant. Use of the term “surfactant” without any other identifier renders the claim unclear as to what surfactant is intended to be referenced. Claims 6-15 are included in this rejection as they depend directly, indirectly, or include all the limitations of independent claim 1.
Claim 14 recites “wherein the either cationic polymer or nonionic surfactant is present.” Claim 1 in component ii) already requires that either cationic polymer or nonionic surfactant is present in the composition but also allows for a mixture of the two to be present. Claim 14 does not mention the mixture and it is not clear from the wording if it is intended to limit the composition so that only the cationic polymer or the nonionic surfactant is present in the absence of the other or if it is still intended to allow for a mixture of cationic polymer and nonionic surfactant.
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, 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 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.
Claims 1 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ceballos et al. (US 2019/0365619, 05 Dec 2019).
Ceballos teaches anti-dandruff cleansing compositions that include
(a) salicylic acid,
(b) a surfactant system comprising
(i) one or more non-sulfate anionic surfactants,
(ii) one or more amphoteric surfactants,
(iii) a plurality of nonionic surfactants including one or more alkyl polyglucosides and one or more amide surfactants and
(c) water ([0007]-[0015]).
Ceballos teaches the amphoteric surfactants include betaines ([0018]) such as cocamidopropyl betaine ([0096]) from about 1 to about 30 wt% ([0097]) rendering obvious the elected species of component (i) zwitterionic surfactant as in instant claims 1 and 6-12 and the amount of zwitterionic surfactant in claims 9 and 11. Ceballos teaches the amide surfactants include capryloyl/capryl methyl glucamide ([0020]) and the amide surfactants are from about 1 to about 15 wt% ([0014]) rendering obvious the elected species of component ii) nonionic surfactant as in instant claims 1 and 15. Ceballos teaches that the non-sulfate anionic surfactants include acyl taurates ([0017]) such as sodium methyl cocoyl taurate ([0081]) from amounts such as about 1 to about 10 wt% ([0082]), rendering obvious the elected species of component iii) anionic surfactant as in the instant claims. The percentages cited above for each of the components renders obvious the ratios as recited in claim 1. For example, 1-30% cocamidopropyl betaine (zwitterionic surfactant), 1-15% capryloyl/capryl methyl glucamide (nonionic surfactant), and 1-10% cocoyl taurate (anionic surfactant) gives a ratio of (betaine + glucamide):taurate ranging from 1:5 to 4.5:1, rendering obvious the 1:4 to 2:1 ratio of components (i + ii):(iii) as in claim 1. Similarly, the 1-30% cocamidopropyl betaine (zwitterionic surfactant), 1-15% capryloyl/capryl methyl glucamide (nonionic surfactant) gives a ratio the betaine to glucamide of 1:15 to 30:1, rendering obvious the 1:12 to 12:1 ratio of components (i):(ii) as in claim 1.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).
Ceballos teaches that the compositions may include one or more water-soluble solvents ([0206]) such as glycerin ([0208]) from about 0.01 to about 20 wt%, rendering obvious the polyol as in claims 1 and 13. Ceballos teaches that the composition may be used as both a hair and a body wash ([0274]), rendering obvious a 2-in-1 composition as in claim 14. The cationic polymer of the instant claims is not required to be present but the examiner notes that Ceballos teaches that the compositions may further include conditioning agents ([0022]) such as polyquaternium-10 (quaternized hydroxyethyl cellulose) ([0164]), rendering obvious the elected species of cationic polymer of cationic hydroxyethyl cellulose.
Ceballos does not expressly teach selecting the 1-30% cocamidopropyl betaine (zwitterionic surfactant), 1-15% capryloyl/capryl methyl glucamide (nonionic surfactant), 1-10% cocoyl taurate (anionic surfactant), and 0.1-20% glycerin discussed above as part of the anti-dandruff composition with sufficient specificity to rise to the level of anticipation.
However, it would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have formed an anti-dandruff cleansing composition including components of salicylic acid, water, 0.1-20% glycerin and a surfactant system with surfactants including 1-30% cocamidopropyl betaine (zwitterionic surfactant), 1-15% capryloyl/capryl methyl glucamide (nonionic surfactant), and 1-10% cocoyl taurate (anionic surfactant). One of ordinary skill in the art would have been motivated to do so as each of the components are taught by Ceballos as suitable in anti-dandruff compositions. One of ordinary skill in the art would have a reasonable expectation of successfully forming an anti-dandruff composition comprising 0.1-20% glycerin and a surfactant system with surfactants including 1-30% cocamidopropyl betaine (zwitterionic surfactant), 1-15% capryloyl/capryl methyl glucamide (nonionic surfactant), and 1-10% cocoyl taurate (anionic surfactant) as taught by Ceballos since the modification of the prior art represents nothing more than the predictable use of prior art elements according to their established functions.
Accordingly, the instant claims are rendered prima facie obvious over the teachings of Ceballos.
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 and 6-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 and 14 of U.S. Patent No. 8,778,910 in view of Ceballos et al. (US 2019/0365619, 05 Dec 2019).
The ‘910 patent recites in claim 1 an aqueous lamellar structure skin cleaning composition comprising 15-40% synthetic anion surfactant, 5-30% co-surfactant including amphoteric or nonionic surfactants or blends thereof, and additional components such as alkyl fatty acids and freeze-thaw stabilizers. The anionic surfactant to co-surfactant ratio is about 0.5 to 3. The composition may be diluted in water (claim 2). The co-surfactant may include cocamidopropyl betaine (claim 14).
The ’910 patent does not recite that the nonionic surfactant is capryloyl/caproyl methyl glucamide (elected species), the anionic surfactant is sodium methyl cocoyl taurate (elected species), or 5-55% polyol such as glycerin. These deficiencies are made up for in the teachings of Ceballos.
The teachings of Ceballos are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included a nonionic surfactant such as capryloyl/caproyl methyl glucamide, the anionic surfactant sodium methyl cocoyl taurate, and about 0.01-20% polyol such as glycerin. Compositions for hair and body wash are known from Ceballos and components of capryloyl/caproyl methyl glucamide, the anionic surfactant sodium methyl cocoyl taurate, and about 0.01-20% polyol such as glycerin are known to be suitable for such compositions. The ‘910 patent claims are directed to a skin cleansing composition with surfactant components such as cocamidopropyl betaine and anionic and nonionic surfactants. The use of specific surfactants such as capryloyl/caproyl methyl glucamide and sodium methyl cocoyl taurate and the component glycerin is thus obvious as they are also know to be suitable for wash compositions. Their inclusion thus merely represents the use of known prior art element for their known purpose, namely forming washing type compositions.
Claims 1 and 6-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-13 of copending Application No. 18/288,111 in view of Ceballos et al. (US 2019/0365619, 05 Dec 2019).
The ‘111 application recites a hydratable concentrated surfactant composition comprising components including 3-20% anionic surfactant that is an acyl taurate, an amphoteric or 6-25% zwitterionic surfactant and water (claims 1-4). The reference claims recite additional components not required in the instant claims but the instant claims are open to the addition of the elements.
The ‘111 application does not recite that the acyl taurate is sodium methyl cocoyl taurate (elected species), the zwitterioinic surfactant is cocamidopropyl betaine, a nonionic surfactant such as capryloyl/caproyl methyl glucamide (elected species) and glycerin. These deficiencies are made up for in the teachings of Ceballos.
The teachings of Ceballos are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included cocamidopropyl betaine as the zwitterioinic surfactant, sodium methyl cocoyl taurate as the acyl taurate, 1-15% capryloyl/caproyl methyl glucamide and 0.01-20% glycerin. Wash related compositions are known from Ceballos and include similar components of surfactants such as acyl taurates. Ceballos specifically teaches the surfactant sodium methyl cocoyl taurate and other surfactants such as cocaimodpropyl betaine and 1-15% capryloyl/caproyl methyl glucamide as well as 0.1-20% glycerin as suitable for such compositions. Given the component similarity of the ‘111 claims and the components for the wash related composition of Ceballos, it would be obvious to include the components above as they are all suitable for wash type compositions and their inclusion just represents the combination of known components for their known purpose. The inclusion of the components in the amounts listed above renders obvious the ratios as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 6-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-36 of copending Application No. 18/392,507 in view of Ceballos et al. (US 2019/0365619, 05 Dec 2019).
The ‘507 application recites a concentration surfactant composition comprising components including 0.8-20% acyl taurate anionic surfactant, 12-25% cocamidopropyl betaine, water, and glycerin (claim 18). The reference claims recite additional components not required in the instant claims but the instant claims are open to the addition of the elements.
The ‘507 application does not recite that the acyl taurate is sodium methyl cocoyl taurate (elected species), a nonionic surfactant such as capryloyl/caproyl methyl glucamide (elected species) and the amount of glycerin. These deficiencies are made up for in the teachings of Ceballos.
The teachings of Ceballos are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included sodium methyl cocoyl taurate as the acyl taurate, 1-15% capryloyl/caproyl methyl glucamide and 0.01-20% glycerin. Wash related compositions are known from Ceballos and include similar components of surfactants such as acyl taurates and cocamidopropyl betaine. Ceballos specifically teaches the surfactant sodium methyl cocoyl taurate and other surfactants such as cocaimodpropyl betaine and 1-15% capryloyl/caproyl methyl glucamide as well as 0.1-20% glycerin as suitable for such compositions. Given the component similarity of the ‘507 claims and the components for the wash related composition of Ceballos, it would be obvious to include the components above as they are all suitable for wash type compositions and their inclusion just represents the combination of known components for their known purpose. The inclusion of the components in the amounts listed above renders obvious the ratios as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 6-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6 of copending Application No. 18/572,036 in view of Ceballos et al. (US 2019/0365619, 05 Dec 2019).
The ‘036 application recites a surfactant composition comprising an acyl taurate anionic surfactant, an amphoteric or zwitterionic surfactant, an alcohol and water. The reference claims recite additional components not required in the instant claims but the instant claims are open to the addition of the elements.
The ‘036 application does not recite that the acyl taurate is sodium methyl cocoyl taurate (elected species), a nonionic surfactant such as capryloyl/caproyl methyl glucamide (elected species), the zwitterionic surfactant is cocamidopropyl betaine and glycerin. These deficiencies are made up for in the teachings of Ceballos.
The teachings of Ceballos are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included sodium methyl cocoyl taurate as the acyl taurate, 1-15% capryloyl/caproyl methyl glucamide, 1-30% cocamidopropyl betaine (zwitterionic surfactant) and 0.01-20% glycerin. Wash related compositions are known from Ceballos and include similar components of surfactants such as acyl taurates and cocamidopropyl betaine. Ceballos specifically teaches the surfactant sodium methyl cocoyl taurate and other surfactants such as 1-30% cocaimodpropyl betaine and 1-15% capryloyl/caproyl methyl glucamide as well as 0.1-20% glycerin as suitable for such compositions. Given the component similarity of the ‘036 claims and the components for the wash related composition of Ceballos, it would be obvious to include the components above as they are all suitable for wash type compositions and their inclusion just represents the combination of known components for their known purpose. The inclusion of the components in the amounts listed above renders obvious the ratios as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 6-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6 of copending Application No. 18/572,059 in view of Ceballos et al. (US 2019/0365619, 05 Dec 2019).
The ‘059 application recites a surfactant composition comprising an acyl taurate anionic surfactant, an amphoteric or zwitterionic surfactant, an alcohol and water. The reference claims recite additional components not required in the instant claims but the instant claims are open to the addition of the elements.
The ‘059 application does not recite that the acyl taurate is sodium methyl cocoyl taurate (elected species), a nonionic surfactant such as capryloyl/caproyl methyl glucamide (elected species), the zwitterionic surfactant is cocamidopropyl betaine and glycerin. These deficiencies are made up for in the teachings of Ceballos.
The teachings of Ceballos are described supra.
Therefore, it would have been prima facie obvious to one of ordinary skill in the
art, before the effective filing date of the claimed invention to have included sodium methyl cocoyl taurate as the acyl taurate, 1-15% capryloyl/caproyl methyl glucamide, 1-30% cocamidopropyl betaine (zwitterionic surfactant) and 0.01-20% glycerin. Wash related compositions are known from Ceballos and include similar components of surfactants such as acyl taurates and cocamidopropyl betaine. Ceballos specifically teaches the surfactant sodium methyl cocoyl taurate and other surfactants such as 1-30% cocaimodpropyl betaine and 1-15% capryloyl/caproyl methyl glucamide as well as 0.1-20% glycerin as suitable for such compositions. Given the component similarity of the ‘059 claims and the components for the wash related composition of Ceballos, it would be obvious to include the components above as they are all suitable for wash type compositions and their inclusion just represents the combination of known components for their known purpose. The inclusion of the components in the amounts listed above renders obvious the ratios as recited in the instant claims.
This is a provisional nonstatutory double patenting rejection.
Claim 1 and 6-15 are directed to an invention not patentably distinct from claims 1-12 and 14 of commonly assigned U.S. Patent No. 8,778,910. Specifically, see above.
Claim 1 and 6-15 are directed to an invention not patentably distinct from claims 1-4 and 6-13 of commonly assigned application 18/288,111. Specifically, see above.
Claim 1 and 6-15 are directed to an invention not patentably distinct from claims 18-36 of commonly assigned application 18/392,507. Specifically, see above.
Claim 1 and 6-15 are directed to an invention not patentably distinct from claims 1-3 and 6 of commonly assigned application 18/572,036. Specifically, see above.
Claim 1 and 6-15 are directed to an invention not patentably distinct from claims 1-3 and 6 of commonly assigned application 18/572,059. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned patent 8,778,910 and applications 18/288,111; 18/392,507; 18/572,036, and 18/572,059, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claim is allowed.
Correspondence
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/E.C.M./Examiner, Art Unit 1619
/ANNA R FALKOWITZ/Primary Examiner., Art Unit 1600