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 .
Response to Argument and Amendment
The response filed on 2/18/26 has been entered.
Applicant’s arguments filed 2/18/26 have been fully considered but they are not deemed to be persuasive.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 are pending in this office action.
The provisional rejection of Claims 1-20 under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-7 of U.S. Patent Application No. 18/645416 is withdrawn based on the argument and amendment to the claims.
Maintained 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.
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Claims 1 - 20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 - 5 of U.S. Patent Application No. 18/999,497. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
· The claims of the instant application refers to elongated medical device, wherein a coating film on a surface of a base material, and the coating film is composed of a polymeric material in which a copolymer containing a polymerization unit having a hydrophilic structure has been crosslinked by a structure given by any of formulas (1) to (3)…. And the copending application claims are drawn to an elongated medical appliance, comprising: a substrate, a base layer on the substrate, and a top layer on the base layer and on a side opposite to the substrate, wherein the top layer includes a polymer material with a copolymer comprising a polymer unit having a hydrophilic structure and being crosslinked by a structure represented by one of following formulas (1) to (3): The current application claims anticipate and or obvious of each other.
· Both set of claims 1-17 (current claims) and copending claims 1-4 recite using the same compositions and/or derivatives thereof. Therefore it would have been obvious to one of ordinary skill in the art to use either the instant claims or the copending claims to practice the instant claimed invention with a reasonable expectation of success.
· As to Claims 18-20 of the instant application and claim 5 of the copending application claims refer to a method for producing an elongated medical appliance, the method comprising: a base coat film forming step of applying a base layer composition containing an isocyanate compound having two or more isocyanate groups onto a substrate for the elongated medical appliance to form a base coat film; a top coat film forming step of applying a top layer composition containing a polyamine compound and a copolymer including a polymer unit having a hydrophilic structure and a polymer unit having a cyclic carbonate structure onto a surface of the base coat film on a side opposite to the substrate to form a top coat film; and a heating step of heating and curing the base coat film and the top coat film to form a base layer of the cured base coat film and a top layer of the cured top coat film. It would have been obvious to one of ordinary skill in the art to have used the instant claims in practicing, the copending application claims 5.
In view of the foregoing, the copending application claims and the current application claims are obvious variations.
Applicant argues that the limitation “polymerization unit having a hydrophilic structure has been crosslinked by a reaction between a cyclic carbonate structure and an amine crosslinking agent to form a crosslinked” is not recited in the copending claims.
In response, Applicant’s argument is found unpersuasive because when the specification of the copending is used as a dictionary in aiding the practice of the claims it does teach specifically a reaction between the cyclic carbonate group of the copolymer and a polyamine compound (see 0107). Additionally, the copending claims do recite a cyclic carbonate structure see copending claims 3 and 5 thus the presence of both and the teaching by the copending specification would motivate one of ordinary skill in the art to practice the instant claims using the copending claims.
Applicant’s argument is found unpersuasive and the rejection is maintained
Claims 1 - 20 are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 - 11 of U.S. Patent Application No. 18/574,107. Although the conflicting claims are not identical, they are not patentably distinct from each other. The reasons are as follows:
The claims of the instant application refers to elongated medical device, wherein a coating film on a surface of a base material, and the coating film is composed of a polymeric material in which a copolymer containing a polymerization unit having a hydrophilic structure has been crosslinked by a structure given by any of formulas (1) to (3)…. And the claims of the copending is to a copolymer comprising at least a structural unit (A) having a cyclic carbonate structure and a structural unit (B) having a hydrophilic structure, wherein the hydrophilic structure is at least one structure selected from the group consisting of a betaine structure, an amide structure, an alkylene oxide structure, and a lactam structure. One of ordinary skill in the art would have used the copolymer to coat an elongated medical device with a betaine structure because the formulae recited in the instant claims would have resulted in a betaine structure with a reasonable expectation of success.
Applicant argues that the limitation “polymerization unit having a hydrophilic structure has been crosslinked by a reaction between a cyclic carbonate structure and an amine crosslinking agent to form a crosslinked” is not recited in the copending claims.
In response, Applicant’s argument is found unpersuasive because when the specification of the copending is used as a dictionary in aiding the practice of the claims it does teach specifically a reaction between the cyclic carbonate group of the copolymer and a polyamine compound (see 0049). The copending claims recite the structure having a cyclic carbonate structure (see claim 1) and an amine as the crosslinking agent.
Applicant’s argument is found unpersuasive and the rejection is maintained
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIRLEY V GEMBEH whose telephone number is (571)272-8504. The examiner can normally be reached M-F 9am-6pm.
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/SHIRLEY V GEMBEH/Primary Examiner, Art Unit 1615 3/25/26
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