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
Claims 1-16 and 18-23 are pending. Claim 17 is canceled. This is the first office action on the merits.
Information Disclosure Statement
The Information Disclosure Statements filed August 11, 2023 and March 13, 2025 and December 5, 2025 have been reviewed.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election of Group I (claims 1-16 and 18-22), with traverse in the reply dated December 1, 2025 is acknowledged. The election of the species of ethylhexyl triazone as the single fat soluble UV filter, PBDT as the single particulate organic UV filter, C12-15 alkyl benzoate as the single lipophilic emollient and BEMT, diethylamino hydroxy benzoyl hexyl benzoate and ethyl hexyl triazone as the single fat soluble photoprotective system in the reply dated December 1, 2025 is acknowledged.
The traverse is on the basis that under unity of invention practice a composition and methods of making or using the composition are considered to be part of the same invention. Applicant further notes that the claim of Group II, i.e., claim 23, is directed to a method of using the product of elected Group I.
Applicant’s traversal of the restriction requirement is not found to be persuasive because the common technical feature of the groups is taught by the prior art, the groups lack unity of invention a posteriori and the common technical feature does not rise to the level of a special technical feature as required by PCT Rules 13.1 and 13.2. Thus, restriction between the groups is proper.
The international application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). PCT Rule 13.1; MPEP § 1850. The requirement for unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art. PCT Rule 13.2; MPEP § 1850.
Lack of unity of invention may be directly evident “a priori,” that is, before considering the claims in relation to any prior art, or may only become apparent “a posteriori,” that is, after taking the prior art into consideration. In the case of independent claims to A + X (i.e., composition claims) and A + Y (i.e., method claims), unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art. See MPEP § 1850(II).
In the instant case, it is the Examiner's position that the technical feature that is shared by the groups is the a cosmetic or dermatological composition, in the form of an emulsion, comprising: (a) a fat-soluble photoprotective system, consisting of one or more fat-soluble UV filters chosen from: (i) hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate, (ii) 2,4-bis[4-(2-ethylhexyloxy)-2-hydroxyphenyl]-6-(4-methoxyphenyl)-1,3, 5-triazine, (iii) butyl methoxydibenzoylmethane, (iv) ethylhexyl triazone, and (v) diethylhexyl butamido triazone; (b) a solubilizing system of the fat-soluble photoprotective system (a) comprising C12-C15 alkyl benzoate in a quantity greater than or equal to 80 wt%, relative to the total weight of the solubilizing system; and (c) one or more, particulate organic UV filters, chosen from: (vi) 5,6,5’, 6’ -tetraphenyl-3,3’ –(1,4-phenylene)-bis[1,2,4]triazine, (vii)methylene bis-benzotriazoyl tetramethylbutylphenol, and (viii) tris-biphenyl triazine; wherein the composition comprises from 3 wt% to 19 wt% of the fat-soluble photoprotective system (a) relative to the total weight of the composition; and wherein the composition comprises from 15 wt% to 30 wt% of the solubilising system (b) relative to the total weight of the composition; wherein the composition does not comprise ethylhexyl salicylate, octocrylene, ethylhexyl methoxycinnamate, isoamyl methoxylcinnamate, homosalate, para-aminobenzoic acid (PABA), octyl dimethyl PABA, 3-methylbenzylidene camphor, 4-methylbenzylidiene camphor, benzophenone-3 and benzophenone-4.
However, this composition is obvious in view of the prior art of Ebanks et al. US 2019/0091132 (3/28/2019).
Ebanks teaches a cosmetic composition capable of forming a multilayer structure after application to a keratinous material. (See Abstract). Ebanks teaches tris-biphenyl triazine UV filter and ethylhexyl triazone oil-soluble organic UV filters are suitable for use in its composition. (See [0256]). UV filters can be added to the composition in amount from 0 to 99%. (See [0240]). 0 to 99% ethylhexyl triazone overlaps with the from 1 to 6% ethylhexyl triazone called for in instant claim 11.
Ebanks also teaches that C12-C15 alkyl benzoates are suitable emollients and amounts such as from 0.1 to 20% of C12-C15 alkyl benzoates are taught. (See [0250]). Ebanks teaches that C12-C15 alkyl benzoates are an effective emollient and therefore they can be the only emollient used and comprise 100% of the solubilizing system of the fat-soluble ethylhexyl triazone oil-soluble organic UV filter.
For the reasons set forth herein, the requirement for restriction is still deemed proper and is therefore made FINAL.
Claim 9-10, 19 and 23 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1-8, 11-16, 18 and 20-22 are examined on their merits in light of the elected species.
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 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.
Claims 1-8, 11-16, 18 and 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ebanks et al. US 2019/0091132 (3/28/2019) in view of KR 20170131350 (11/29/2017)(“KR”) and Ehlis et al. WO 2015155158 (10/15/2015).
Ebanks teaches a cosmetic composition capable of forming a multilayer structure after application to a keratinous material. (See Abstract). Ebanks teaches tris-biphenyl triazine UV filter and ethylhexyl triazone oil-soluble organic UV filters are suitable for use in its composition. (See [0256]). Ethylhexyl triazone is called for in instant claim 1 and it is the elected fat-soluble UV filter. UV filters can be added to the composition in amount from 0 to 99%. (See [0240]).
Ebanks also teaches that C12-C15 alkyl benzoates are suitable emollients and amounts such as from 0.1 to 20% of C12-C15 alkyl benzoates are taught. (See [0250]). C12-C15 alkyl benzoates are the elected species of emollient called for in instant claims 1, 2 and 18. Ebanks teaches that C12-C15 alkyl benzoates are an effective emollient compatible with UV filters and therefore they can be the only emollient used and comprise 100% of the solubilizing system of the fat-soluble ethylhexyl triazone oil-soluble organic UV filter. 100% is greater than 80% as called for in instant claim 1. 0.1% to 20% overlaps with the from 15% to 30% of the solubilizing system called for in instant claim 1.
Ebanks teaches that its composition can comprise an inorganic UV filter such as titanium dioxide. (See [0256]and claim 6). Titanium dioxide is also identified as a useful pigment for the composition. (See [0203, 206-208]). Titanium dioxide can be present in an amount of from 0.01% to 40%. (See [207-208]). Titanium dioxide is called for in instant claim 22.
Ebanks’ composition possesses no ethylhexyl salisate, octocrylene, ethylhexylcinnamatem isoamyl methoxycinnamate, homosalte, PABA, octyl dimethyl PABA, 3-methylbezylidene camphor, 4-methylbenzylidene camphor, benzophenone-3 or benzophenone-4 as called for in instant claim 1. Ebanks’ composition also possesses no C1-C4 alcohol as called for in instant claim 14.
Ebanks does not teach BEMT, diethylamino hydroxy benzoyl hexyl benzoate and ethyl hexyl triazone, PBDT, particle size or starch. These deficiencies are provided in the teachings of KR 20170131350 and Ehlis et al.
KR teaches a sprayable cosmetic sunscreen composition comprising at least one UV filter and at least one emollient in a physiologically acceptable medium. (See Abstract). KR teaches that desirable UV protection actives include BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), (See Example 1). Other desirable UV protection actives include diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone. (See KR claim 3 and page 4). BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone are called for in instant claims 4 and 5 and are the elected fat soluble photoprotective system. Combinations of UV filters are expressly taught by KR. (See page 4). C12-15 alkyl benzoate is taught as an acceptable emollient in the KR sunscreen. (See KR claim 9).
UV filters such as BEMT are taught to be present in an amount of 0.5 to 5%. (See KR claim 9). 0.5 to 5% overlaps with the from 3 to 19% of the fat-soluble photoprotective system called for in instant claim 1. 0.5 to 5% also overlaps with the from 2 to 4%, the from 5 to 7% and the from 3 to 5% called for in instant claim 19.
Ehlis et al. (Ehlis) teaches a sunscreen composition comprising a UV filter combination comprising phenylene bis-diphenyltriazine (5,6,5’,6’ -tetraphenyl-3,3’-(1,4-phenylene)-bis[1,2,4]triazine) which is also known as PBDT for cosmetic preparations. (See page 2 and Abstract). Ehlis teaches that surprisingly it has been found that PBDT in micronized form has very good properties in sunscreen compositions in combination with other inorganic and/or organic UV filters. Ehlis teaches an aqueous dispersion of PBDT. Ethylhexyl triazone is one such UV filter that PBDT has very good properties in combination with when in sunscreen compositions.
PBDT is exemplified in amounts of from 1.0% to 8% by weight. (See Example B7). 1 to 8% overlaps with the from 1 to 8% of the particulate organic UV filter called for in instant claim 3, overlaps with the from 1 to 4% called for in instant claim 9 and also overlaps with the from 2 to 5% called for in claim 21. C12-15 alkyl benzoate is taught as an acceptable emollient in the formulation. (See Example B8).
Ehlis teaches particle sizes for UV absorber dispersions of D50 = 130 nm. (See Preparation Example A). D50 = 130 nm falls within the D50 of from 100 to 1000 nm as called for in instant claim 20. Ehlis also teaches consistency regulators in its dispersion that can include starch particles as called for in instant claim 16. (See page 22, lines 19-35).
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Ebanks sunscreen cosmetic composition of 0 to 99% ethylhexyl triazone oil-soluble organic UV filter in 0.1 to 30% C12-C15 alkyl benzoates and 0.1 to 40% titanium dioxide to add 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone as taught by KR in order to have desirable UV filters that are compatible with C12-C15 alkyl benzoate emollients as taught by KR.
It would have been prima facie obvious for one of ordinary skill in the art before the earliest effective filing date making the Ebanks sunscreen cosmetic composition of 0 to 99% ethylhexyl triazone oil-soluble organic UV filter in 0.1 to 30% C12-C15 alkyl benzoates and 0.1 to 40% titanium dioxide to add from 1.0% to 8% PBDT as taught by Ehlis, have particle size particle sizes for all UV absorbers be D50 = 130 nm and starch particles as consistency regulators in order to have the excellent properties of PBDT in sunscreen compositions in combination with other inorganic and/or organic UV filters and the ability to regulate consistency as taught by Ehlis.
With respect to claims 6 and 7, with Ebanks teaching from 0.1 to 20% C12-15 alkyl benzoates and KR teaching 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone, this ratio of 0.5 to 5% BEMT, diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone to 0.1 to 20% C12-15 alkyl benzoates overlaps with the greater than or equal to 0.5 called for in instant claims 6 and 7.
With respect to claim 8, with Ehlis teaching from 1.0% to 8% PBDT and KR teaching 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone, this ratio of 1.0 to 8% PBDT to 0.5 to 5% BEMT, diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone overlaps with the less than or equal to 0.35 called for in instant claim 8.
With respect to claim 13, with Ehlis teaching from 1.0% to 8% PBDT and KR teaching 0.5 to 5% BEMT (Bis-ethylhexyloxyphenol methoxyphenyltriazine), diethylaminohydroxybenzoyl hexyl benzoate and ethylhexyl triazone, the total number of UV filters present in the composition is 4 which is less than or equal to 5 as called for in instant claim 13.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8, 11-16, 18 and 20-22 are provisionally rejected as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent Appn No. 17/609971 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims are drawn to a cosmetic emulsion comprising (a) a fat-soluble photoprotective system, consisting of one or more fat-soluble UV filters chosen from: (i) hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate, (ii) 2,4-bis[4-(2-ethylhexyloxy)-2-hydroxyphenyl]-6-(4-methoxyphenyl)-1,3, 5-triazine, (iii) butyl methoxydibenzoylmethane, (iv) ethylhexyl triazone, and (v) diethylhexyl butamido triazone; (b) a solubilizing system of the fat-soluble photoprotective system (a) comprising C12-C15 alkyl benzoate in a quantity greater than or equal to 80 wt%, relative to the total weight of the solubilizing system; and (c) one or more, particulate organic UV filters, chosen from: (vi) 5,6,5’, 6’ -tetraphenyl-3,3’ –(1,4-phenylene)-bis[1,2,4]triazine, (vii) methylene bis-benzotriazoyl tetramethylbutylphenol, and (viii) tris-biphenyl triazine; wherein the composition comprises from 3 wt% to 19 wt% of the fat-soluble photoprotective system (a) relative to the total weight of the composition; and wherein the composition comprises from 15 wt% to 30 wt% of the solubilising system (b) relative to the total weight of the composition; wherein the composition does not comprise ethylhexyl salicylate, octocrylene, ethylhexyl methoxycinnamate, isoamyl methoxylcinnamate, homosalate, para-aminobenzoic acid (PABA), octyl dimethyl PABA, 3-methylbenzylidene camphor, 4-methylbenzylidiene camphor, benzophenone-3 and benzophenone-4 and titanium dioxide and particulate starch.
Claims 1-20 differ from those of the instant application in that they do not teach amounts of C12-15 alkyl benzoate and do not teach titanium dioxide pigment or starch particles. These deficiencies are made up for with the teachings of Ebanks and Ehlis.
The teachings of Ebanks are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the sunscreen composition of US Patent Appn. No. 17/609971 to use from 0.1% to 20.0% C12-C15 alkyl benzoates and 0.01% to 40% titanium dioxide in light of Ebanks teaching that C12-C15 alkyl benzoates is an effective emollient compatible with UV filters and titanium dioxide is an effective pigment.
The teachings of Ehllis are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the sunscreen composition of US Patent Appn. No. 17/609971 to add starch particles as consistency regulators in order to have the ability to regulate consistency as taught by Ehlis.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8, 11-16, 18 and 20-22 are provisionally rejected as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent Appn No. 17/609971 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015) as described 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 U.S. Patent Appn. No. 17/609971, 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.
Claims 1-8, 11-16, 18 and 20-22 are rejected as being directed to an invention not patentably distinct from claims 1-19, 21 and 23-25 of commonly assigned U.S. Patent No. 9763867 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015).
Specifically, although the claims at issue are not identical, they are not patentably distinct from each other because in the instant case the claims are drawn to a cosmetic emulsion comprising (a) a fat-soluble photoprotective system, consisting of one or more fat-soluble UV filters chosen from: (i) hexyl 2-[4-(diethylamino)-2-hydroxybenzoyl]benzoate, (ii) 2,4-bis[4-(2-ethylhexyloxy)-2-hydroxyphenyl]-6-(4-methoxyphenyl)-1,3, 5-triazine, (iii) butyl methoxydibenzoylmethane, (iv) ethylhexyl triazone, and (v) diethylhexyl butamido triazone; (b) a solubilizing system of the fat-soluble photoprotective system (a) comprising C12-C15 alkyl benzoate in a quantity greater than or equal to 80 wt%, relative to the total weight of the solubilizing system; and (c) one or more, particulate organic UV filters, chosen from: (vi) 5,6,5’, 6’ -tetraphenyl-3,3’ –(1,4-phenylene)-bis[1,2,4]triazine, (vii) methylene bis-benzotriazoyl tetramethylbutylphenol, and (viii) tris-biphenyl triazine; wherein the composition comprises from 3 wt% to 19 wt% of the fat-soluble photoprotective system (a) relative to the total weight of the composition; and wherein the composition comprises from 15 wt% to 30 wt% of the solubilising system (b) relative to the total weight of the composition; wherein the composition does not comprise ethylhexyl salicylate, octocrylene, ethylhexyl methoxycinnamate, isoamyl methoxylcinnamate, homosalate, para-aminobenzoic acid (PABA), octyl dimethyl PABA, 3-methylbenzylidene camphor, 4-methylbenzylidiene camphor, benzophenone-3 and benzophenone-4 and titanium dioxide and particulate starch.
Claims 1-19, 21 and 23-25 differ from those of the instant application in that they do not teach amounts of C12-15 alkyl benzoate and do not teach titanium dioxide pigment or starch particles. These deficiencies are made up for with the teachings of Ebanks and Ehlis.
The teachings of Ebanks are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the sunscreen composition of US Patent No. 9763867 to use from 0.1% to 20.0% C12-C15 alkyl benzoates and 0.01% to 40% titanium dioxide in light of Ebanks teaching that C12-C15 alkyl benzoates is an effective emollient compatible with UV filters and titanium dioxide is an effective pigment.
The teachings of Ehllis are described supra. It would be prima facie obvious for a skilled artisan before the earliest effective filing date making the sunscreen composition of US Patent Appn. No. 9763867 to add starch particles as consistency regulators in order to have the ability to regulate consistency as taught by Ehlis.
Claims 1-8, 11-16, 18 and 20-22 are rejected as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent No. 9763867 in view of Ebanks et al. US 2019/0091132 (3/28/2019) and Ehlis et al. WO 2015155158 (10/15/2015) as described 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 U.S. Patent No. 9763867, 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 claims are allowed.
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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619