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, 3, 5-6, 10, 15-17, 19, 26, 31, 33, 35, 37 and 39 are pending. Claims 2, 4, 7-9, 11-14, 18, 20-25, 27-29, 32, 36 and 38 are canceled.
Claims 17 and 30 are withdrawn as being drawn to a non-elected invention or species, there being no linking or generic claim.
Claims 1, 3, 5-6, 10, 15-16, 19, 26 and 31, 33, 35, 37 and 39 are examined on their merits in light of the elected species.
Previous Rejections
Rejections and/or objections not reiterated from previous office actions are hereby withdrawn as are those rejections and/or objections expressly stated to be withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Objections/Rejections Withdrawn
Claim Objection
In light of the amendments to the claims, the objections to claims 1, 5, 10, 15, 16, 33 and 36 are withdrawn.
Claim Rejections - 35 USC §112(b)
In light of the amendments to the claims the rejection of claims 5-6, 10, 15 and 33 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn.
Rejections Maintained
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.
The rejection of claims 1, 3, 5-6, 10, 15-16, 19, 26, 31, 33-35 and 37 and newly applied to claim 39 under 35 U.S.C. 103 as being unpatentable over Issleib et al. US 2019/0374454 (12/12/2019) in view of Bernoud et al. WO 2014/016349 (1/3/2014) as evidenced by the specification is maintained.
Issleib et al. (Issleib) teaches a cosmetic, dermatological or pharmacological composition for the effective protection of human skin or hair against UV radiation wherein the composition is free of oxybenzone. Issleib teaches that a preferred embodiment contains zinc oxide. (See [0077]). Zinc oxide is present in an amount of from 0.1% to 20.0%. (See [0086]). Zinc oxide is called for in instant claims 3, 16, 19 and 34-35 and it is a metal oxide as called for in instant claims 1 and 26. 0.1% to 20.0% zinc oxide overlaps with the from 5 to about 25 wt% in instant claim 1. 0.1% to 20.0% zinc oxide overlaps with the about 5 to about 15 wt% in instant claim 19.
Issleib teaches octinoxate in an amount of 0.1 to 20.0 wt%. (See [0079]). 0.1 to 20.0 wt% overlaps with the about 1 to about 10 wt% of octinoxate called for in instant claim 19. 0.1 to 20.0 wt% overlaps with the about 1 to about 10 wt% of octinoxate called for in instant claim 19. Octinoxate is called for in instant claims 5-6, 19 and 31-33. Octinoxate is a SPF active ingredient as called for in instant claim 1 and an organic UV filter as called for in claim 26. Octinoxate and zinc oxide are taught to be UV filters in a preferred embodiment of the invention. (See [0077]).
Issleib teaches that it is well known to use SPF boosters such as butyloctyl salicylate and ethylhexylmethoxycrylene and they are useful but limited by the requirement that they be used in sufficiently low quantities so as to not generate a SPF when used alone. (See [0007]). Namely they cannot be present in an amount of more than 3 wt%. (See [0007]). Ethylhexyl methoxycrylene is called for in instant claim 39.
Issleib teaches ethylhexylmethoxycrylene as called for in instant claims 15, 19 and 26. Less than 3% ethylhexylmethoxycrylene overlaps with the from about 0.5 to about 5 wt% called for in instant claim 19 and also overlaps with the from about 0.1 to about 10 wt% called for in instant claim 1. Issleib teaches butyloctyl salicylate as called for in instant claims 1, 15, 19 and 26. Issleib teaches an amount of butyloctyl salicylate of 5 wt% in Example 11. 5 wt% falls within the from about 0.5 to about 5 wt% called for in instant claim 19 and also falls within with the from about 0.1 to about 10 wt% called for in instant claim 1.
Issleib does not teach pongamia pinnata extract. This deficiency is made up with the teachings of Bernoud et al.
Bernoud et al. (Bernoud) teaches a photoprotective composition containing a karanja oil and a polyester in a physiologically acceptable medium. (See Abstract). Bernoud teaches that karanja is also known as Pongamia pinnata. (See page 4, lines 5-10). The karanja oil is a water -insoluble fraction extracted from karanja seeds. The composition contains from 1 to 60% Pongamia pinnata extract (referred to as karanja oil). (See page 4, lines 10-20). Bernoud teaches that karanja oil is used for skin care and has antiseptic and eczema treating properties. (See page 1, lines 15-23).
Pongamia pinnata extract is called for in instant claims 1, 10, 19, and 26. While 1 to 60% Pongamia pinnata extract does not overlap with the 0.1 to 0.8 wt% in claim 19, it is considered to be close enough to the claimed range to render it obvious, given that there is no reason to expect a substantially different result when using 0.8 to using 1%. See MPEP 2144.05 I. Also, Applicant is reminded that 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. See MPEP 2144.05 II.
It would be prima facie obvious before the earliest effective filing date for one of ordinary skill in the art making the Issleib sunscreen composition of from 0.1% to 20.0 wt% zinc oxide, 0.1 to 20 wt% octinoxate, less than 3% of ethylhexylmethoxycrylene and butyloctyl salicylate to add 1 to 60% Pongamia pinnata extract in order to have a component that can soothe eczema and that gives the composition antiseptic properties.
There would be a reasonable expectation of success because Bernoud teaches that Pongamia pinnata extract (karanja oil) is used for skincare and is usable in a sunscreen composition.
With respect to the UVAI/UVI ratio of the sunscreen and the exact SPF called for in instant claims 1 and 37, the prior art is silent as to these exact properties. The prior art of the combined teachings of Issleib in view of Bernoud, however, teaches all of the claimed components in the same amounts (at the overlap of the ranges). Issleib in view of Bernoud teaches a sunscreen composition of from 0.1% to 20.0 wt% zinc oxide, 0.1 to 20 wt% octinoxate, less than 3% of ethylhexylmethoxycrylene, 5% butyloctyl salicylate and 1 to 60% Pongamia pinnata extract.
Since Issleib in view of Bernoud teaches the elected species of zinc oxide, octinoxate, ethylhexylmethoxycrylene, butyloctyl salicylate and Pongamia pinnata extract in the same amounts (at the overlaps of the ranges) the properties of the prior art composition would be the same as those of the claimed composition. See, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019), where the court stated that a proper finding of inherency does not require that all limitations are taught in a single reference, and that inherency may meet a missing claim limitation when the limitation is "the natural result of the combination of prior art elements. Therefore, the properties of SPF and UVAI/UV ratio would necessarily follow. This composition would necessarily provide a UVAI/UV ratio of 71 and have an SPF of 52 as evidenced by the specification at [154].
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.
The provisional rejection of claims 1, 3, 5-6, 10, 15-16, 19, 26, 31, 33-35 and 37 and newly applied to claim 39 as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent Appn No. 18/902326 in view of Issleib et al. US 20190374454 (12/12/2019) and Bernoud et al. WO 2014/016349 (1/3/2014) is maintained.
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 sunscreen composition comprising from about 5% to 25 wt% of zinc oxide, about 1% to about 10 wt% octinoxate, about 0.1 to about 10 wt% ethylhexylmethoxycrylene, butyloctyl salicylate and Pongamia pinnata extract.
Claims 1-20 of US Patent Appn. No. 18/902326 are drawn to a sunscreen composition comprising zinc oxide, octinoxate, ethylhexylmethoxycrylene, butyloctyl salicylate, Pongamia pinnata extract, and an amino acid.
Claims 1-20 differ from those of the instant application in that they do not teach amounts of zinc oxide, octinoxate, ethylhexylmethoxycrylene, butyloctyl salicylate, or Pongamia pinnata extract. These deficiencies are made up for with the teachings of Issleib and Bernoud.
The teachings of Issleib 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. 18/902326 to use from 0.1% to 20.0 wt% zinc oxide, 0.1 to 20 wt% octinoxate, less than 3% of ethylhexylmethoxycrylene and 5% butyloctyl salicylate in light of Issleib’s teachings that these are effective amounts of these components for a sunscreen.
The teachings of Bernoud 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. 18/902326 to use to add 1 to 60% Pongamia pinnata extract in order to have a component that can soothe eczema and that gives the sunscreen composition antiseptic properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 5-6, 10, 15-16, 19, 26, 31, 33-35, 37 and 39 are rejected as being directed to an invention not patentably distinct from claims 1-20 of commonly assigned U.S. Patent Appn. No. 18/902326 in view of Issleib et al. US 20190374454 (12/12/2019) and Bernoud et al. WO 2014/016349 (1/3/2014) 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. 18/902326, 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.
The provisional rejection of claims 1, 3, 5-6, 10, 15-16, 19, 26, 31, 33-35 and 37 and newly applied to claim 39 as being directed to an invention not patentably distinct from claims 1-16 of commonly assigned U.S. Patent Appn. No. 19/415177 in view of Issleib et al. US 20190374454 (12/12/2019) and Bernoud et al. WO 2014/016349 (1/3/2014) is maintained.
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 sunscreen composition comprising from about 5% to 25 wt% of zinc oxide, about 1% to about 10 wt% octinoxate, about 0.1 to about 10 wt% ethylhexylmethoxycrylene, butyloctyl salicylate and Pongamia pinnata extract.
Claims 1-16 of US Patent Appn. No. 19/415177 are drawn to a sunscreen composition comprising zinc oxide, octinoxate, ethylhexylmethoxycrylene, butyloctyl salicylate, ct, a water in oil emulsion that is substantially free of an emulsifier and film-former.
Claims 1-20 differ from those of the instant application in that they do not teach amounts of zinc oxide or ethylhexylmethoxycrylene or butyloctyl salicylate, and do not teach octinoxate or Pongamia pinnata extract. These deficiencies are made up for with the teachings of Issleib and Bernoud.
The teachings of Issleib 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. 19/415177 to use from 0.1% to 20.0 wt% zinc oxide, 0.1 to 20 wt% octinoxate, less than 3% of ethylhexylmethoxycrylene and 5% butyloctyl salicylate in light of Issleib’s teachings that these are effective components and effective amounts of these components for a sunscreen.
The teachings of Bernoud 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. 19/415177 to use to add 1 to 60% Pongamia pinnata extract in order to have a component that can soothe eczema and that gives the sunscreen composition antiseptic properties.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 5-6, 10, 15-16, 19, 26, 31, 33-35, 37 and 39 are rejected as being directed to an invention not patentably distinct from claims 1-16 of commonly assigned U.S. Patent Appn. No. 19/415177 in view of Issleib et al. US 20190374454 (12/12/2019) and Bernoud et al. WO 2014/016349 (1/3/2014) 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. 19/415177, 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.
Response to Arguments
Applicants’ remarks filed February 3, 2026 have been fully considered and are found to be mostly unpersuasive in view of the amendments to the claims.
I. Claim Rejections under 35 USC Sec. §112
Applicants note the amendments to the claims and assert that these amendments address the indefiniteness rejections and claim objections. The Office agrees and the indefiniteness rejections and claim objections have been withdrawn above.
II. Claim Rejections under 35 USC Sec. §103
With respect to the obviousness rejection Applicants argue that there is a lack of motivation to combine the specific photostabilizer pair. Applicants assert that the prior art contains no teaching, suggestion or motivation to specifically combine butyloctyl salicylate and ethylhexyl methoxycrylene in a single composition. Issleib teaches alternatives, not combinations of SPF boosters and does not exemplify their use together. Applicants argue that Issleib teaches away because it teaches that the use of these ingredients should be minimized and used in quantities less than 3% and this discourages a person of ordinary skill in the art from combining two such boosters.
Applicants assert that the butyloctyl salicylate, ethylhexyl methoxycrylene and Pongamia extract achieves unexpected synergistic results in a UVAI/UV greater than or equal to 0.7 and an SPF that is greater than or equal to 40. Applicants note that the data in Tables 4 and 5 shows that adding these components individually or in partial pairs fail to reach these thresholds. It is only the claimed combination that yields the unexpected jump in both broad-spectrum protection and SPF value.
Applicants also assert that there are unexpected aesthetic properties in that the composition exhibits lower whiteness than market standards despite containing 22% more zinc oxide. A person of ordinary skill in the art would expect an increase in mineral metal oxides to result in a more opaque, white case on the skin. The achievement of higher protection with improved transparency is an unexpected result that further supports the patentability of the claims.
Response
Applicants’ arguments that Issleib teaches alternatives, not combinations of SPF boosters and does not exemplify their use together is not found to be persuasive. Issleib teaches “these SPF boosters” and lists several of them. (See [0007]). The total amount of SPF boosters is capped at 3% but that is the total amount of SPF boosters. The SPF boosters are taught together as examples of SPF boosters: “Other examples of SPF boosters are the use of esters which also have a UV absorbing chromophore such as butyloctyl salicylate, polycrylene and ethylhexylmethoxycrylene.” (See [0007]). This is a listing of examples that are together. Issleib does not expressly teach either alternatives or combinations. However, nowhere in Issleib is it suggested that only one SPF booster be used.
Applicants’ argument that Issleib teaches away because it teaches that the use of these ingredients should be minimized and used in quantities less than 3% is not found to be persuasive. There is absolutely no discouragement of using a combination of SPF boosters, which are listed as examples in a list together as long as the total amount of SPF boosters does not exceed 3% by weight of the composition. This does not disparage or discourage a combination of butyloctyl salicylate and ethylhexylmethoxycrylene. Silence regarding the claimed solution does not disparage or discourage such a modification. A teaching away must be clear. See MPEP Sec. 2143.03 (VI).
Applicants’ argument that the butyloctyl salicylate, ethylhexyl methoxycrylene and Pongamia extract achieve unexpected synergistic results in a UVAI/UV greater than or equal to 0.7 and an SPF that is greater than or equal to 40.
Applicants’ assertion of unexpected results is also not persuasive because the showing in the Examples is still not commensurate in scope with the claimed invention. Claim 1 is directed to any metal oxide and any SPF active ingredient in ranges of amounts that are very broad in relation to the particular amounts tested. "[O]bjective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980).
Applicants’ argument that adding these components individually or in partial pairs fail to reach these thresholds, so there is synergy, is not found to be persuasive. Where the combined action of two or more agents is greater than the sum of the action of one of the agents used alone, “synergy” according to the legally accepted definition exists. In re Kollman, 201 USPQ 193 (CCPA 1979). Applicants’ experimental results do not demonstrate synergy. Respectfully, Formula 17, 18 and 19, testing each of the SPF booster components alone in the Examples, each have a UVA/UV ratio of 0.7. Indeed, the control, Formula 16 which does not have any of the SPF boosters has a UVA/UV ratio of 0.7.
With respect to the whiteness results, respectfully, the results do not seem to be that impressive. The whiteness at the end of application, whiteness-immediate and whiteness at 5 mins are approximately the same, with the whiteness at 5 mins actually being greater for the claimed formulation.
III. Obviousness Type Double Patenting Rejections
With respect to the obviousness type double patenting rejection over US Patent Appn. No. 18/902326, Applicants note the recitation twice in the body of the rejection of U.S. Patent App. No. 17/980,199 and mention that this application is not commonly owned by the Applicant, nor subject to an obligation of assignment to the same person and is directed to an unrelated filed of technology.
Applicants argue that the present application is the earlier filed application when compared to Appn. No. 18/902326, so the disclosure of Appn. No. 18/902326 was not available before the earliest effective filing date of the present application and request the withdrawal of the obviousness-type double patenting rejection.
Applicants argue that the present application is the earlier filed application when compared to Appn. No. 19/415177, so the disclosure of Appn. No. 18/902326 was not available before the earliest effective filing date of the present application and request the withdrawal of the obviousness-type double patenting rejection.
Response
The Examiner apologizes for the inadvertent error of reciting US Patent Appn. No. 17/980,199 in the body of the obviousness type double patenting rejection over US Patent Appn. No. 18/902326.
The obviousness-type double patenting rejections are maintained because they are not the only remaining rejections in the application. The withdrawal of an obviousness-type double patenting rejection over an application that has a later earliest effective filing date is only appropriate when it is the only remaining rejection in the application. However, the obviousness rejections are maintained as explained above, so there are other rejections in the instant application. See MPEP §804, subsection I.B.1.(b)(i).
Conclusion
No claims are allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CHICKOS whose telephone number is (571)270-3884. The examiner can normally be reached on M-F 9-6. 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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SARAH CHICKOS
Examiner
Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619