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
Claims 4, 6, 9, 15, 21, 24, 26, 32, 33, 35-37, 39, 41, 42, 44-46, 48 and 78 are pending.
Election/Restrictions
Applicant's election with traverse of the Invention of Group I, claims 4, 6, 9, 15, 21, 24, 26, 32, 33, 35-37 and 78 in the reply filed on 10/31/25 is acknowledged. The traversal is on the ground(s) that Groups I and II share a general inventive concept and should be rejoined. The Examiner agrees and claims 39, 41 and 42 will be examined as part of Group I.
Applicant’s election of the species of:
a. Chitosan for the species of biopolymer;
b. Consisting essentially of biopolymer and water for the species of biopolymer
composition as defined by the ingredients therein; and
c. Ball milling for the species of process for obtaining the biopolymer,
in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the species requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
The requirement is still deemed proper and is therefore made FINAL.
Claims 44-46 and 48 are withdrawn as being drawn to a nonelected invention.
Claims 39, 41, 42, 78 are withdrawn as not being directed to the elected species (i.e. they require inclusion of other ingredients and are therefore not “consisting essentially of biopolymer and water”).
Claims 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are under consideration to the extent that the biopolymer composition comprises the elected species.
Information Disclosure Statement
Acknowledgement is made of Applicant’s information disclosure statements (IDS) submitted on 6/22/23, 6/14/24, 12/13/24, and 10/31/25. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
Claim 9 is objected to because of the following informalities:
In claim 9, line 1 a space is needed in “claim4”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 4, 6, 9, 33, and 35-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (CN 103316641; cited in IDS and relying on provided translation thereof).
Li et al. teach a nanofiber suspension of chitin or its deacetylated derivative chitosan (e.g. abstract, paragraph 0005).
Regarding Claims 4, 6, 9, 33, and 35, Li et al. disclose a composition comprising a stable homogeneous suspension consisting of chitosan in water (i.e. elected biopolymer and polar solvent) (e.g. Examples 3 and 4 [0037-0041]).
Regarding Claims 36 and 37, Example 3 of Li et al. utilized a ball milling process for forming the biopolymer composition and does not include chemical processing (e.g. [0038].
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.
Claims 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 103316641; cited in IDS and relying on provided translation thereof) in view of Davidson et al. (US 6,638,918; cited in IDS).
Li et al. teach a nanofiber suspension of chitin or its deacetylated derivative chitosan (e.g. abstract, paragraph 0005).
Claims 4, 6, 9, 33, and 35-37 are anticipated by Li et al. as described supra and are therefore also rendered obvious.
While Li et al. describe the fibers as “nanofibers” (i.e. nanosized), they are silent as to the fiber width, length, or particle size. These are made up for by the teachings of Davidson et al.
Davidson et al. teach compositions comprising chitosan in the form of a network of nano-sized fibers (e.g. abstract). The compositions have improved solubility and activity, and are useful in hair care, skin care, odor control, wound care, blood management, sanitary compositions, oral care, film formation, hard surface treatment, fabric treatment, release of hydrophobic or hydrophilic materials, plant care, water purification and drug delivery (e.g. abstract; column 1, lines 5-10). Davidson et al. teach that the nano-size fibers have an average length ranging from about 50 nm to about 100 nm, a width ranging from about 5 nm to about 30 nm, and a thickness ranging from about 1 nm to about 10 nm, as determined by cryogenic transmission electron microscopic imaging, which overlap with the claimed ranges.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the fiber/particle sizes of Davidson et al. for use with the nanofibers of Li et al. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions directed to nano-scale fibers of chitosan, and one of ordinary skill would have been motivated to select the sized of Davidson et al. as their particles are taught to have improved solubility and activity.
Regarding Claim 15, the values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claims 21, 24 and 26, it is noted that the instant Specification definition of “particle” includes “fiber” (e.g. paragraphs 0009, 000102). Table 4 includes chitosan sizes of 85, 103 and 110 nm. The values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 32, as the composition of Li et al. and Davidson et al. comprises the claimed ingredients (chitosan and water) in the claimed sizes, prepared by the claimed method, then the viscosity of the resulting solution would necessarily be within the claimed ranges. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 28-33, and 35-45 of copending Application No. 18/379,362 in view of Davidson et al. (US 6,638,918; cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims require a biopolymer composition comprising a stable homogeneous suspension of an insoluble and/or semi-soluble biopolymer in a polar solvent.
Claims 4 and 9 are met by copending Claim 1.
Claim 6 is met by copending Claim 33.
Claims 33 and 35 are met by copending Claim 32.
Claims 36 and 37 are met by copending Claim 29.
Copending ‘362 does not teach the size of the biopolymers. This is made up for by the teachings of Davidson et al.
Davidson et al. teach compositions comprising chitosan in the form of a network of nano-sized fibers (e.g. abstract). The compositions have improved solubility and activity, and are useful in hair care, skin care, odor control, wound care, blood management, sanitary compositions, oral care, film formation, hard surface treatment, fabric treatment, release of hydrophobic or hydrophilic materials, plant care, water purification and drug delivery (e.g. abstract; column 1, lines 5-10). Davidson et al. teach that the nano-size fibers have an average length ranging from about 50 nm to about 100 nm, a width ranging from about 5 nm to about 30 nm, and a thickness ranging from about 1 nm to about 10 nm, as determined by cryogenic transmission electron microscopic imaging, which overlap with the claimed ranges.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the fiber/particle sizes of Davidson et al. for use with the biopolymers of ‘362. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions directed to fibers of chitosan, and one of ordinary skill would have been motivated to select the sized of Davidson et al. as their particles are taught to have improved solubility and activity.
Regarding Claim 15, the values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claims 21, 24 and 26, it is noted that the instant Specification definition of “particle” includes “fiber” (e.g. paragraphs 0009, 000102). Table 4 includes chitosan sizes of 85, 103 and 110 nm. The values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 32, as the composition of ‘362 and Davidson et al. comprises the claimed ingredients (chitosan and water) in the claimed sizes, prepared by the claimed method, then the viscosity of the resulting solution would necessarily be within the claimed ranges. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are directed to an invention not patentably distinct from claims 1, 3, 28-33, and 35-45 of commonly assigned 18/879,362. 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 18/879,362, 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 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 17-22 of copending Application No. 18/379,363 in view of Davidson et al. (US 6,638,918; cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims require a biopolymer composition comprising a stable homogeneous suspension of an insoluble and/or semi-soluble biopolymer in a polar solvent.
Claims 4 and 9 are met by copending Claims 1 and 17.
Claim 6 is met by copending Claim 8 and 22.
Claims 33 and 35 are met by copending Claim 7.
Claims 36 and 37 are met by copending Claim 17.
Copending ‘363 does not teach the size of the biopolymers. This is made up for by the teachings of Davidson et al.
Davidson et al. teach compositions comprising chitosan in the form of a network of nano-sized fibers (e.g. abstract). The compositions have improved solubility and activity, and are useful in hair care, skin care, odor control, wound care, blood management, sanitary compositions, oral care, film formation, hard surface treatment, fabric treatment, release of hydrophobic or hydrophilic materials, plant care, water purification and drug delivery (e.g. abstract; column 1, lines 5-10). Davidson et al. teach that the nano-size fibers have an average length ranging from about 50 nm to about 100 nm, a width ranging from about 5 nm to about 30 nm, and a thickness ranging from about 1 nm to about 10 nm, as determined by cryogenic transmission electron microscopic imaging, which overlap with the claimed ranges.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the fiber/particle sizes of Davidson et al. for use with the biopolymers of ‘363. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions directed to fibers of chitosan, and one of ordinary skill would have been motivated to select the sized of Davidson et al. as their particles are taught to have improved solubility and activity.
Regarding Claim 15, the values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claims 21, 24 and 26, it is noted that the instant Specification definition of “particle” includes “fiber” (e.g. paragraphs 0009, 000102). Table 4 includes chitosan sizes of 85, 103 and 110 nm. The values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 32, as the composition of ‘363 and Davidson et al. comprises the claimed ingredients (chitosan and water) in the claimed sizes, prepared by the claimed method, then the viscosity of the resulting solution would necessarily be within the claimed ranges. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are directed to an invention not patentably distinct from claims 1-11 and 17-22 of commonly assigned 18/879,363. 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 18/879,363, 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 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, 9, and 11-15 of copending Application No. 18/878,991 in view of Davidson et al. (US 6,638,918; cited in IDS).
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant and copending claims require a biopolymer composition comprising a stable homogeneous suspension of an insoluble and/or semi-soluble biopolymer in a polar solvent.
Claims 4 and 9 are met by copending Claims 4 and 5.
Claim 6 is met by copending Claim 7.
Claims 33 and 35 are met by copending Claim 6.
Claims 36 and 37 are met by copending Claim 3.
Copending ‘991 does not teach the size of the biopolymers. This is made up for by the teachings of Davidson et al.
Davidson et al. teach compositions comprising chitosan in the form of a network of nano-sized fibers (e.g. abstract). The compositions have improved solubility and activity, and are useful in hair care, skin care, odor control, wound care, blood management, sanitary compositions, oral care, film formation, hard surface treatment, fabric treatment, release of hydrophobic or hydrophilic materials, plant care, water purification and drug delivery (e.g. abstract; column 1, lines 5-10). Davidson et al. teach that the nano-size fibers have an average length ranging from about 50 nm to about 100 nm, a width ranging from about 5 nm to about 30 nm, and a thickness ranging from about 1 nm to about 10 nm, as determined by cryogenic transmission electron microscopic imaging, which overlap with the claimed ranges.
It would have been obvious to one of ordinary skill in the art at the time of filing to select the fiber/particle sizes of Davidson et al. for use with the biopolymers of ‘991. It would have been obvious to one of ordinary skill in the art to combine the elements as claimed by known methods with no change in their respective functions, and the combination yielding nothing more than predictable results. One of ordinary skill in the art would have predicted success as both of the compositions directed to fibers of chitosan, and one of ordinary skill would have been motivated to select the sized of Davidson et al. as their particles are taught to have improved solubility and activity.
Regarding Claim 15, the values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claims 21, 24 and 26, it is noted that the instant Specification definition of “particle” includes “fiber” (e.g. paragraphs 0009, 000102). Table 4 includes chitosan sizes of 85, 103 and 110 nm. The values disclosed by Davidson et al. overlap those 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05.I).
Regarding Claim 32, as the composition of ‘991 and Davidson et al. comprises the claimed ingredients (chitosan and water) in the claimed sizes, prepared by the claimed method, then the viscosity of the resulting solution would necessarily be within the claimed ranges. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4, 6, 9, 15, 21, 24, 26, 32, 33, and 35-37 are directed to an invention not patentably distinct from claims 1, 3-7, 9, and 11-15 of commonly assigned 18/878,991. 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 18/878,991, 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE PLOURDE BABSON whose telephone number is (571)272-3055. The examiner can normally be reached M-Th 8-4:30; F 8-12:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Blanchard can be reached on 571-272-0827. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE P BABSON/ Primary Examiner, Art Unit 1619