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
The preliminary amendment of 06/08/2023 is acknowledged. Claims 1-14 are amended and claim 15 is new. Claims 1-15 are currently pending and are examined on the merits herein.
Priority
The instant application filed 06/08/2023, is a 371 filing of PCT/JP2021/045450, filed 12/10/2021, which claims foreign priority to JP2020-206184, filed 12/11/2020.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 06/08/2023 and 04/04/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1-15 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 “a non-volatile oil agent, other than the component (c), having a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less”. Claim 9, which depends from claim 1, further defines several specific species of (d). Many of these species, however, do not possess a viscosity within the range of claim 1. For example, isododecane has a viscosity at 20oC of 3-5 mPa s as evidenced by Creasil®ID CG technical data sheet (2006) (PTO-892). As such, it is unclear if the non-volatile oil agent as recited in claim 1 must have a viscosity at 35oC of 50-3,000 mPa s, since several of the examples listed in claim 9 do not, or if the composition as a whole possesses a viscosity at 35oC of 50-3,000 mPa s. The claim is therefore indefinite. For the sake of compact prosecution, instant claim 1 will be interpreted as a composition comprising a non-volatile oil agent (i.e., any single species selected from claim 9), wherein the composition as a whole has a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less.
Claims 2 and 9 recite “wherein the component (d) is one or more non-volatile oil agents” (singular and plural). Parent claim 1 recites “a non-volatile oil agent” (singular). Thus, there is insufficient antecedent basis for the plural recitation of a non-volatile oil agent in claims 2 and 9.
Claim 12 recites “a non-volatile oil agent, other than the component (c), having a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less”. Claim 13, which depends from claim 12, further defines several specific species of (d). Many of these species, however, do not possess a viscosity within the range of claim 12. For example, isododecane has a viscosity at 20oC of 3-5 mPa s as evidenced by Creasil®ID CG technical data sheet (2006) (PTO-892). As such, it is unclear if the non-volatile oil agent as recited in claim 12 must have a viscosity at 35oC of 50-3,000 mPa s, since several of the examples listed in claim 13 do not, or if the composition as a whole possesses a viscosity at 35oC of 50-3,000 mPa s. The claim is therefore indefinite. For the sake of compact prosecution, instant claim 12 will be interpreted as a composition comprising a non-volatile oil agent (i.e., any single species selected from claim 13), wherein the composition as a whole has a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less.
Claim 13 recites “wherein the component (d) is one or more non-volatile oil agents” (singular and plural). Parent claim 12 recites “a non-volatile oil agent” (singular). Thus, there is insufficient antecedent basis for the plural recitation of a non-volatile oil agent in claim 13.
Claim 15 recites “one or more non-volatile oil agents other than the component (c), having a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less, selected from the group consisting of” several specific species. Many of these species, however, do not possess a viscosity within the range of 50-3,000 mPa s. For example, isododecane has a viscosity at 20oC of 3-5 mPa s as evidenced by Creasil®ID CG technical data sheet (2006) (PTO-892). As such, it is unclear if the non-volatile oil agent is a single species having a viscosity at 35oC of 50-3,000 mPa s, since several of the example species do not, or if a combination of species results in the claimed viscosity, or if the composition as a whole possesses a viscosity at 35oC of 50-3,000 mPa s. The claim is therefore indefinite. For the sake of compact prosecution, instant claim 15 will be interpreted as a composition comprising a non-volatile oil agent (i.e., any single species selected from the list of claim 15), wherein the composition as a whole has a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less.
Claims 1, 4, 12, and 15 recite amounts in terms of a “mass%”, however, the claims do not specify if this mass% is based on the mass of the total composition. As such, the claims are indefinite. For the sake of compact prosecution the claims will be interpreted as mass% based on total mass of the composition.
The remaining claims are rejected by virtue of their dependency on independent claims 1 and 12.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 9 and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Independent claims 1 and 12 recite wherein component (d) is “a non-volatile oil agent” (i.e., singular). Dependent claims 2, 9 and 13 recite “wherein the component (d) is one or more non-volatile oil agents” (i.e., singular and plural). Claim 2 is drawn to several broad classes of oils, which are too general to be characterized by their viscosity. Furthermore, many of the individual species recited in dependent claims 9 and 13 do not possess a viscosity within the range of claims 1 and 12. For example, isododecane has a viscosity at 20oC of 3-5 mPa s as evidenced by Creasil®ID CG technical data sheet (2006) (PTO-892). As discussed in the 112(b) rejection above, the claims are unclear. For the sake of compact prosecution, instant claims 1 and 12 are being interpreted as a composition comprising a non-volatile oil agent (i.e., any single species selected from claim 9 or 13), wherein the composition as a whole has a viscosity at 35oC of 50 mPa s or more and 3,000 mPa s or less. However, if the applicant intends to define component (d) as having a specific viscosity, independent claims 1 and 12 are narrower (i.e., a single oil with a specific viscosity) than the dependent claims (i.e., one or more oils with viscosities outside the range of claims 1 and 12).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
1. Claims 1-2 and 4-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshino, T., et al. (WO 2019156146 A1, 08/15/2019, US 20210038530 A1 used as English equivalent, PTO-892), hereinafter Yoshino.
Yoshino discloses a composition for forming a coating film composed of fibers directly on the skin by an electrostatic spray, the composition comprises the following components (a), (b), (c), and (d): (a) a polymer having a coating film forming ability; (b) one or more volatile substances selected from the group consisting of an alcohol and a ketone; (c) a plasticizer; (d) a feel modifier other than Component (c) (abstract; claim 1). The composition for forming a coating film has a viscosity of 2mPa s or more and 3,000 mPa s or less at 25oC (claim 2).
Table 4 discloses several examples which use isododecane or neopentyl glycol dicaprate as component (d). Specifically, the composition of example 4-2 comprises polyvinyl butyral (12%); ethanol (70%); PEG-8 (4%); dimethicone (4%); and isododecane (10%). The composition of example 4-5 comprises polyvinyl butyral (12%); ethanol (70%); PEG-8 (4%); dimethicone (4%); and neopentyl glycol dicaprate (10%). Both compositions read on the composition of claim 1 which comprises (a) a polymer having a coating film forming ability (i.e., PVB); (b) one or more volatile substances selected form alcohols and ketones (i.e., ethanol); (c) a plasticizer (i.e., PEG-8); and (d) 3 mass % to 15 mass % of a non-volatile oil agent (i.e., 10% isododecane or neopentyl glycol dicaprate). The isododecane and neopentyl glycol dicaprate of each composition further read on the specific oils of claims 2 and 9. Compositions 4-2 and 4-5 each comprise 10% of isododecane or neopentyl glycol dicaprate which fall within the range of claim 4. The ratio of PEG-8 (i.e., instantly claimed (c)) to isododecane or neopentyl glycol dicaprate (i.e., instantly claimed (d)) is 0.4 in both compositions, which falls within the range of claims 5 and 6. The ratio of polyvinyl butyral (i.e., instantly claimed (a)) to isododecane or neopentyl glycol dicaprate (i.e., instantly claimed (d)) is 1.2 in both compositions, which falls within the range of claims 7 and 8. The PEG-8 reads on a polyoxyalkylene glycol as recited in claim 10. Since the compositions taught by Yoshino comprise the same components and amounts as instantly claimed, it is inherent that the composition would have a viscosity at 35 oC of 50 to 3,000 mPa s as defined in claim 1 and as best interpreted given the 112(b) issues above. When the composition anticipated by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference.
Yoshino further teaches a method wherein the composition for forming a coating film is applied by an electrostatic spray to the skin to which skincare cosmetics were previously applied, thereby forming a coating film composed of fibers ([0155]; claim 20). This method reads on the method of claim 11. The film that results from such a method further reads on a sheet-like composition for skin obtained by electrostatically spraying the composition of Yoshino which possesses all of the components of claim 12, as applied to claim 1 above. The composition used to form the sheet-like composition also reads on claims 13-14, as applied to claims 9-10 above.
Lastly, as established above, the composition for forming a coating film of Yoshino comprises polyvinyl butyral (12%); ethanol (70%); PEG-8 (4%); and isododecane or neopentyl glycol dicaprate (10%). These components reads on the instantly claimed components (a)-(d) and their amounts as defined in claim 15. Since the compositions taught by Yoshino comprise the same components and amounts as instantly claimed, it is inherent that the compositions would have a viscosity at 35 oC of 50 to 3,000 mPa s as defined in claim 15 and as best interpreted given the 112(b) issues above.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshino, T., et al. (WO 2019156146 A1, 08/15/2019, US 20210038530 A1 used as English equivalent, IDS dated 06/08/2023), hereinafter Yoshino as evidenced by Kitajima, M., et al. (EP 2873413 B1, 09/05/2028, PTO-892), hereinafter Kitajima.
The teachings of Yoshino and rejections of claims 1-2 and 4-15 are discussed above.
Yoshino further discloses the composition of example 1-10 which comprises polyvinyl butyral (12.1%); ethanol (80.9%); PEG-8 (5%); di(phytosteryl/octyldodecyl) lauroyl glutamate (2%); and distearyldimonium chloride (0.5%) (table 1). Di(phytosteryl/octyldodecyl) lauroyl glutamate is a high viscosity liquid with a viscosity of 1,640 mPa s as evidenced by Kitajima ([0074]). Yoshino further teaches that when the viscosity of the composition for forming a coating film is suitably adjusted, specifically increased, the composition is likely to deposit at an application site in the form of fibers ([0086]).
The teachings of Yoshino differ from that of the instantly claimed invention in that Yoshino does not explicitly teach component (d) to have the specific viscosity of claim 3.
It would have been obvious to combine the embodiments of Yoshino before the effective filing date of the claimed invention by using a high viscosity oil such as di(phytosteryl/octyldodecyl) lauroyl glutamate as component (d) in an amount of 3 to 15 mass% in the composition for forming a coating film to yield the instantly claimed invention. First, it would have been prima facie obvious to replace the 10% of isododecane or neopentyl glycol dicaprate of examples 4-2 or 4-5, respectively, with 10% di(phytosteryl/octyldodecyl) lauroyl glutamate since this is a simple substitution of one known element for another (i.e., a non-volatile oil agent) to yield predictable results. Alternatively, it would have been obvious to simply increase the amount of di(phytosteryl/octyldodecyl) lauroyl glutamate in the composition of example 1-10 since it is well within the abilities of an ordinary artisan to optimize the amount of di(phytosteryl/octyldodecyl) lauroyl glutamate in the composition depending on the desired consistency of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed range of 3 to 15 mass% of a non-volatile oil agent with the viscosity of claim 3 through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Finally, one of ordinary skill in the art would have been motivated to either substitute a low viscosity oil for a high viscosity oil or to increase the amount of high viscosity oil, since Yoshino teaches that increasing the viscosity of the composition is beneficial for depositing fibers at an application site.
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.
1. Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, and 14 of U.S. Patent No. 11,534,411.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘411 recites a composition, comprising: (a) a polymer capable of forming a coating film; (b) at least one volatile substance selected from the group consisting of an alcohol and a ketone,(c) a plasticizer; and (d) a feel modifier other than the Component (c), wherein the composition is suitable for forming a coating film composed of fibers directly on the skin by an electrostatic spray, wherein said Component (d) comprises a silicone oil and at least one member selected from the group consisting of a hydrocarbon oil, an isononanoic acid ester, neopentyl glycol diethylhexanoate, and neopentyl glycol dicaprate. Components (a)-(d) of ‘411 read on components (a)-(d) of instant claims 1, 12, and 15. Claim 12 of ‘411 recites wherein a content of the Component (a) is 2.0 mass% to 35 mass% and a content of the Component (b) is 45 mass% to 97 mass%. Claim 14 of ‘411 recites wherein a content of the Component (c) is 0.50 mass% to 30 mass% and a content of the Component (d) is 0.50 mass% to 40 mass%. While the amounts of components (a)-(d) are not identical to the amounts as instantly claimed, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP 2144.05. Regarding the viscosity of the composition. Since the composition made obvious by ‘411 comprises the same components and amounts as instantly claimed, it is inherent that the composition would have a viscosity at 35 oC of 50 to 3,000 mPa s. When the composition anticipated by the prior art is identical to the composition claimed, the composition must necessarily have the characteristics claimed as an inherent property. It is noted that In re Best (195 USPQ 430) and In re Fitzgerald (205 USPQ 594) discuss the support of rejections wherein the prior art discloses subject matter, which there is reason to believe inherently includes functions that are newly cited, or is identical to a product instantly claimed. In such a situation the burden is shifted to the applicants to “prove that subject matter to be shown in the prior art does not possess the characteristic relied on” (205 USPQ 594). There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the time of invention, but only that the subject matter is in fact inherent in the prior art reference. Lastly, claim 20 of ‘411 recites a method for treating the skin, comprising: applying a composition to the skin by an electrostatic spraying device, wherein said composition comprises: (a) a polymer capable of forming a coating film; (b) at least one volatile substance selected from the group consisting of an alcohol and a ketone; (c) a plasticizer; and (d) a feel modifier other than the Component (c), wherein the composition is suitable for forming a coating film composed of fibers directly on the skin by an electrostatic spraying device. This method reads on the method of instant claim 11.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,571,381 in view of Yoshino.
Claim 1 of ‘381 recites a method of forming a coating continuous fibers on a target object by electrostatic spraying a composition comprising (a) 1 mass% or more and 30 mass% or less of a polymer having a film-forming ability; (b) 50 mass% to 94 mass% of one or more volatile substances selected from the group consisting of an alcohol and a ketone; (c) a conductivity controlling agent; (d) water. Claim 2 of ‘381 recites wherein the composition has a viscosity of from 2 to 3,000 mPa s at 25°C. The ‘381 claims differ from the instant claims in that they do not recite a plasticizer, 3-15 mass% of a non-volatile agent or a viscosity at 35°C of 50 to 3,000 mPa s. Yoshino discloses a composition for forming a coating film composed of fibers directly on the skin by an electrostatic spray, the composition comprises the following components (a), (b), (c), and (d): (a) a polymer having a coating film forming ability; (b) one or more volatile substances selected from the group consisting of an alcohol and a ketone; (c) a plasticizer; (d) a feel modifier other than Component (c) (abstract; claim 1). Yoshino discloses several examples which use PEG-8 at 4% as a plasticizer and isododecane or neopentyl glycol dicaprate at 10% as an oil (table 4). It would have been obvious to combine the compositions of ‘381 and Yoshino to yield the instantly claimed invention by adding the plasticizer and feel modifier of Yoshino to the composition of ‘381. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Regarding the viscosity of the composition, while 2 to 3,000 mPa s at 25°C differs from the instantly claimed range (i.e., 50 to 3,000 mPa s at 35°C of) it is well within the abilities of an ordinary artisan to optimize the amount of oil in the composition depending on the desired viscosity of the final product. As such, one of ordinary skill in the art would have arrived at the instantly claimed viscosity range through no more than routine experimentation. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Regarding the mass% amounts of components (a)-(d), the instantly claimed amounts of each component are taught by ‘381 and Yoshino individually. As such, it would have been obvious to maintain these amounts when combining the components of ‘381 and Yoshino since they are known and effective amounts for a composition used for forming a coating film via electrospinning. Thus, the combined composition of ‘381 and Yoshino reads on instant claims 1, 12, and 15 while the method of ‘381 reads on instant claim 11.
Conclusion
No claims are allowed.
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/SUSANNAH S ARMSTRONG/Examiner, Art Unit 1616
/SUE X LIU/Supervisory Patent Examiner, Art Unit 1616