DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claim 11 in the reply filed on January 23, 2026 is acknowledged. Claims 1-10 and 12-15 are withdrawn for consideration.
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.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 4,385,094.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 5 of the co-owned patent require all of the limitations of instant claim 11, with the exception of not reciting a median pore diameter. In particular, patented claim 1 recites a porous hollow fiber membrane (i.e. “porous object”) comprising ethylene-vinyl alcohol (“EVOH”) copolymer and having an average pore diameter of 0.1 to 10 µm and claim 5, which depends from claim 1, recites that the EVOH copolymer has been acetalized, thereby making it “an acetylation product of an ethylene/vinyl alcohol copolymer”.
As just noted, although the patented claims differ from the current invention in that a median pore diameter is not recited, it would have been obvious to one of ordinary skill in the art to configure all of the pores within the patented product to have a size in the range of 0.1 to 10 µm, thereby necessarily achieving a median pore diameter also in that range, because the patented claims explicitly recite that pores in the range of 0.1 to 10 µm are appropriate. Additionally, as no criticality has been established, the claimed median pore size is a prima facie obvious selection of dimension that does not distinguish the claimed product over the prior art. See MPEP 2144.04.
Claim 11 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/286245 in view of Tanaka (US Pat. No. 4,385,094).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, and 5 of the copending application require all of the limitations of instant claim 11, with the exception of the copending claims not reciting pores of the instantly claimed median pore diameter. However, Tanaka teaches using an acetalized ethylene-vinyl alcohol (“EVOH”) copolymer as a material for porous membranes (i.e. “porous object”) that preferably has pores with an average diameter of 0.1 to 5 µm (Abstract; col 4, ln. 63-65). Tanaka discloses that EVOH copolymer membranes are useful for medical applications and advantageously provide satisfactory biocompatibility, improved durability, and superior chemical stability (col. 1, ln. 17-21). Accordingly, it would have been obvious to one of ordinary skill in the art to configure the acetalization product of an EVOH copolymer of the copending claims to include pores having an average diameter of 0.1 to 5 µm in order to make the material suitable for use in/as a membrane for medical applications. Although the copending claims and Tanaka differ from the current invention in that a median diameter is not recited, it would have been obvious to one of ordinary skill in the art to configure all of the pores within the copending claimed product to have a size in the range of 0.1 to 5 µm, thereby necessarily achieving a median pore diameter also in that range, because Tanaka explicitly teaches that pores in the range of 0.1 to 5 µm are appropriate for such membranes and because doing so would achieve a substantially uniform pore distribution, as desired by Tanaka (col. 1, ln. 10-12; col. 4, ln. 62-67). Additionally, as no criticality has been established, the claimed median pore size is a prima facie obvious selection of dimension that does not distinguish the claimed product over the prior art. See MPEP 2144.04.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (US Pat. No. 4,269,713).
Regarding claim 11, Yamashita teaches a membrane (i.e. “porous object”) comprising an ethylene-vinyl alcohol copolymer, which has been acetalized (i.e. the porous object is an “acetylation product of an ethylene/vinyl alcohol copolymer”), and having an average pore diameter of 0.1 to 5 µm (Abstract; col. 3, ln. 25-33).
Although Yamashita may be considered to differ from the current invention in that a median pore diameter is not disclosed, as just noted, Yamashita does teach that the porous object should have an average pore diameter of 0.1 to 5 µm. As such, it would have been obvious to one of ordinary skill in the art to configure all of the pores within the copending claimed product to have a size in the range of 0.1 to 5 µm, thereby necessarily achieving a median pore diameter also in that range, because Yamashita explicitly teaches that pores in the range of 0.1 to 5 µm are appropriate for his product. Additionally, as no criticality has been established, the claimed median pore size is a prima facie obvious selection of dimension that does not distinguish the claimed product over the prior art. See MPEP 2144.04.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (US Pat. No. 4,385,094).
Regarding claim 11, Tanaka teaches a hollow fiber membrane (i.e. “porous object”) comprising an ethylene-vinyl alcohol copolymer, which has been acetalized (i.e. the object is an “acetylation product of an ethylene/vinyl alcohol copolymer”), and having an average pore diameter of 0.1 to 10 µm (claims 1 and 5).
Although Tanaka may be considered to differ from the current invention in that a median pore diameter is not disclosed, as just noted, Tanaka does teach that the porous object has a substantially uniform distribution of micropores, which preferably have an average pore diameter of 0.1 to 5 µm (col 4, ln. 63-65). As such, it would have been obvious to one of ordinary skill in the art to configure all of the pores within the prior art porous product to have a size in the range of 0.1 to 5 µm, thereby necessarily achieving a median pore diameter also in that range, because Tanaka explicitly teaches that pores in the range of 0.1 to 5 µm are preferable for his product and because doing so would achieve a substantially uniform pore distribution, as desired by Tanaka. Additionally, as no criticality has been established, the claimed median pore size is a prima facie obvious selection of dimension that does not distinguish the claimed product over the prior art. See MPEP 2144.04.
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baba (JP 2019-119891 A), cited herein according to an English language translation.
Regarding claim 11, Baba teaches a water-absorbing resin (i.e. “porous object”) comprising an ethylene-vinyl alcohol (“EVOH”) copolymer, which has been acetalized (i.e. the object is an “acetylation product of an ethylene/vinyl alcohol copolymer”), and having an average pore diameter of 0.1 to 10 µm (Abstract; par. 7, 13, 21).
Baba’s teachings might be considered to differ from the current invention in that he does not explicitly teach the median diameter of pores in a porous, acetalized EVOH copolymer object. However, as just noted, Baba does teach that the product should have an average pore diameter of 0.1 to 10 µm. Baba also exemplifies various porous products all having a median pore diameter of greater than 0.005 µm, which he discloses demonstrate low moisture absorption and excellent storage ability (par. 41, 59, Table 1). Accordingly, it would have been obvious to one of ordinary skill in the art to configure all of the pores within the prior art porous product to have a size in the range of 0.1 to 10 µm, thereby necessarily achieving a median pore diameter also in that range, because Baba explicitly teaches that pores in the range of 0.1 to 10 µm are preferable for his product. It also would have been obvious to configure the product to have a median pore diameter commensurate with the exemplary products, which all have median diameters pore diameters of greater than 0.005 µm, because Baba demonstrates that such median diameters are appropriate and teaches that products with such median pore diameters demonstrate low moisture absorption and excellent storage ability. Additionally, as no criticality has been established, the claimed median pore size is a prima facie obvious selection of dimension that does not distinguish the claimed product over the prior art. See MPEP 2144.04.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784