DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of the species of borosilicate and with a coupling agent layer in the reply filed on 11/17/2025 is acknowledged.
Claims 3 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/2025.
Response to Amendment
The Abstract filed 11/30/2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
In the Abstract, the limitations that a generic “coating may have a coefficient of friction” and is applied to the pharmaceutical container is new matter. The coating described in the specification is a low-friction coating, and therefore it would be new matter to make the coefficient of friction an optional limitation as stated in this Abstract. This objection can be overcome by changing the limitations to a “coating has a coefficient of friction”.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
Claims 11, 12 and 14-20 are rejected under 35 U.S.C. 112, first paragraph, because the specification, while being enabling for specific polymer materials that lead to the functional limitations of a coating having a low coefficient of friction, does not reasonably provide enablement for any coating layer, known or that will be known, that comprises the functional limitations claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not all compounds within the scope of claims 11, 12 and 14-20 can be used as claimed and whether claims 11, 12 and 14-20 meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims 11, 12 and 14-20, it is believed that undue experimentation would be required because:
(a) The quantity of experimentation necessary is great since claims 11, 12 and 14-20 read on any coating that possesses the functional limitations of the independent or dependent claims. There would be undue experimentation to test all types of coatings to determine which ones would possess the functional limitations claimed. At best, applicants have support to claim the materials at [0091]-[0102] of the specification, but these polymers would not represent the entire scope of the terms "coating". There would undue experimentation to test all of the known materials other than those at [0091]-[0102] to figure out which may possess the functional limitations claimed.
(b) The breadth of the claims are drawn to any possible coating that possesses the functional limitations of the independent or dependent claims. Applicants’ specification is not enabling for any possible coating comprising any material that is known or has yet to be invented that has the functional limitations claimed.
It is noted that the scope of the claims are so broad that they would encompass any material. At best, applicants have only mentioned polymers at [0091]-[0102] for their coating and these polymers would not represent the entire scope of the term "coating", and therefore this means that the claims are not enabled for scope of materials described in the specification as there is no way for one of ordinary skill to know what materials or polymers other than those mentioned at [0091]-[0102] would have the functional limitations claimed.
(c) The working examples, out of all of the materials mentioned at [0091]-[0102], the examples only discuss four specific compounds, i.e. Novastrat 800, Kapton, DC806A, and DC255. These four specific compounds, i.e. only two classes of polymers, would not be sufficient to inform one of ordinary skill in the art to know in what direction to experiment in order to determine what materials would possess or do not possess the functional limitations of the independent or dependent claims. These four materials represent only two classes of materials, silicones and polyimides. One of ordinary skill in the art would have had undue experimentation to predict any chemical within the realm of a "coating" that would meet the functional limitations claimed based solely upon examples drawn only to two silicone materials and two polyimide materials.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 11, 12 and 14-20.
Claims 6, 7, 16 and 17 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.
With regard to claims 6 and 16, the phrase of “less than about 100” microns renders the claims indefinite because the term “about” in this instance would imply amounts slightly above 100 microns; hence, the range would then include amounts less than some value slightly above 100 microns, which would then also include 100 microns. This does not make sense as the range is seeking to exclude 100 microns. This rejection can be overcome by changing the phrase to “less than 100” microns, which is how the claims will be interpreted.
With regard to claims 7 and 17, the phrase of “less than about 100 nm” renders the claims indefinite because the term “about” in this instance would imply amounts slightly above 100 nm; hence, the range would then include amounts less than some value slightly above 100 nm, which would then also include 100 nm. This does not make sense as the range is seeking to exclude 100 nm. This rejection can be overcome by changing the phrase to “less than 100 nm”, which is how the claims will be interpreted.
Claim Rejections - 35 USC § 102
Claims 1, 4, 8-11, 14 and 18-20 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by De Rosa et al. (Journal of Adhesion, 2002, 78, pg. 113-127).
With regard to claims 1, 4, 8-11, 14 and 18-20, De Rosa et al. disclose scratch resistant polyimide coatings for ion-exchanged glass surfaces of centrifuge tubes, which reads on applicants' coating (pg. 114-115). The coating is made by first applying the organo-silane coupling agent APX-K1 by dipping, which reads on applicants' coupling agent layer, to the ion-exchanged glass and then applying the polyimide as a polyamic acid by dipping, which is then subsequently cured using heat to a polyimide (pg. 115-116). The best performing resin was PMDA-ODA (pg. 120-121), wherein the PMDA reads on pyromellitic dianhydride at [0098] of applicants' specification and ODA is 4,4'-oxydianiline also mentioned at [0098] of applicants' specification.
Given the fact that the article of De Rosa et al. possesses the same materials as claimed and preferentially disclosed in applicants' specification, the article of De Rosa will inherently possess the hydrolytic resistance, coefficient of friction of the coating, the thermal stability, the coefficient of friction difference relative to an uncoated container and the light transmission as claimed.
With regard to the limitations of a "pharmaceutical container", the Examiner interprets these limitations as functional limitations such that they would require any prior art article to be capable of performing as a "pharmaceutical container". Given the fact that the coated centrifuge tubes of De Rosa et al. possess all of the structural limitations of the body of the claim and the preferential materials disclosed in applicants' specification, it is the position of the Examiner that it would meet the functional limitations of being a pharmaceutical container as claimed.
Claims 1, 2, 4, 5, 8-12, 14, 15, 18-20 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Perrot (US 2012/0061342).
With regard to claims 1, 2, 4, 5, 8-12, 14, 15, 18-20, Perrot discloses a coated glass bottle that is suitable for packaging pharmaceuticals that may comprise a borosilicate/Pyrex or a type I glass [0030], [0037], and [0038]. The coating on the outside face may be a silicone that is substantially transparent [0041] and [0048].
Given the fact that the bottle is made from the same type of glass and polymer as is preferentially disclosed in applicants' specification and the fact that the container may be used for pharmaceuticals, it is the position of the Examiner that the article of Perrot would inherently meet the hydrolytic resistance, the coefficient of friction of the coating, the thermal stability, the coefficient of friction difference relative to an uncoated container, the type 1 criteria according to USP <660> and the light transmission claimed.
Claim Rejections - 35 USC § 103
Claims 6, 7, 16 and 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over De Rosa et al. (Journal of Adhesion, 2002, 78, pg. 113-127).
De Rosa et al. teach all of the limitations of claims 1 and 11 above; however, they do not specifically teach the thickness of the coating layer.
It would have been obvious to one having ordinary skill to have made the thickness of the coating any amount, including less than 100 nm, such that the coating had enough thickness to provide abrasion resistance while not being so thick as to waste materials.
Claims 1, 2, 4-6, 8-12, 14-16 and 18-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Romberg et al. (4,882,210) in view of "European Pharmacopoeia 5.0" (http://pharmacyebooks.com/2009/09/european-pharmacopoeia-5-0-online.html, pg. 303) as evidenced by "Parylene Conformal Coating Specifications & Properties" (https://www.nbtc.cornell.edu/sites/default/files/Parylene%20Information%20Sheets.pdf).
With regard to claims 1, 2, 4-6, 8-12, 14-16 and 18-20, Romberg et al. disclose polyparaxylylene coatings, i.e. Parylene N that reads on applicants’ polymer, on the outside of glass containers meant for pharmaceuticals (col. 3, lines 54-66 and col. 4, lines 23-32). The thickness of the coating may be 1 micron (col. 4, lines 38-41); however, Romberg et al. do not disclose what type of glass to use for the pharmaceutical container.
The "European Pharmacopoeia 5.0" standard for pharmaceutical containers teaches that the containers may be a Type I colourless glass container that is borosilicate glass (pg. 303).
Since Romberg et al. and the "European Pharmacopoeia 5.0" are both drawn to glass containers for pharmaceuticals; it would have been obvious to one having ordinary skill in the art to have used the known borosilicate glass for pharmaceuticals as the glass container of Romberg et al. This is a mere substitution of a known material for a known purpose.
As evidenced by "Parylene Conformal Coating Specifications & Properties", Parylene N has a coefficient of friction of 0.25 (Table 3), a melting point of 420 C (Table 4), and is transparent and colorless in the visible region (pg. 8).
Given the fact that the article of Romberg et al. in view of "European Pharmacopoeia 5.0" possesses the same materials for the same intended use as is claimed and as is preferentially disclosed in applicants' specification, the article rendered obvious above would intrinsically meet the hydrolytic resistance, the coefficient of friction of the coating, the thermal stability, the coefficient of friction difference relative to an uncoated container, the type 1 criteria according to USP <660> and the light transmission claimed.
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.
Claims 1, 2, 4-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21, 23-54, 56, 58-68, 70-72, 74-76, 78-80, 82-85, 87-91, 93-95, and 97 of U.S. Patent No. 9918898.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to coated glass articles comprising a low-friction coating comprising the same polymers as claimed on a borosilicate container. The coated glass article may have the same light transmission, thermal stability, coefficient of friction and coefficient of friction difference as claimed; however, they do not teach the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 9, lines 30-38 and col. 19, lines 10-21 of US 9918898 which define the thickness of the low-friction layer, hydrolytic resistance and the type 1 glass; therefore, it would have been obvious to one of ordinary skill in the art to have made the polymer of the coating of the copending claims be the thickness as presently claimed, and to have made the glass and the coated glass article have the same properties as claimed.
Claims 1, 2, 4-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 and 32-35 of U.S. Patent No. 10034816.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to coated glass pharmaceutical package comprising a low-friction coating of polyimide having the same coefficient of friction on a borosilicate container of the same type as claimed. The coated glass article may have the same coefficient of friction, the coefficient of friction difference relative to an uncoated container, light transmission and the type 1 glass according to USP <660> as claimed; however, they do not teach the thermal stability, or the thickness of the low-friction coating as claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 9, lines 35-43, col. 19, lines 10-21 and col. 30 of US 10034816 which define the thickness of the low-friction layer, the hydrolytic resistance, and the thermal stability; therefore, it would have been obvious to one of ordinary skill in the art to have made the polymer of the coating of the copending claims be the same thickness as presently claimed, and to have made the glass and the coated glass article have the same properties as claimed.
Claims 1, 2, 4-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 9034442.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of borosilicate glass having a low-friction coating. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the light transmission, the thermal stability, and a coupling agent layer and a polymer layer as dependent claims; however, the copending claims do not specifically teach the relative coefficients of friction, the thermal stability, the glass type, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to Col. 17, col. 31-39, col. 42, and col. 48 to col. 54 of US 9034442 which define what is meant by the polymer of the low-friction coating, including its relative coefficient of friction, the absolute coefficient of friction, and what may be glass type and its' properties; therefore, it would have been obvious to one of ordinary skill in the art to have made the polymer and coupling agent of the lubricious coating of the copending claims be the same materials and have the same properties as presently claimed.
Claims 1, 2, 4-12 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 9428302.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of aluminosilicate glass having a coating, wherein the copending heat-tolerant coatings reads on the pending coating. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the light transmission, the thermal stability, the type 1 criteria of USP <660> and a coupling agent layer and a polymer layer as dependent claims; however, the copending independent claims do not specifically teach the light transmission, the coefficient of friction properties, the composition of the polymer layer, the glass type and its properties, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 20-22, col. 32 to col. 39 and col. 43-46 of US 9428302 which define what is meant by the polymer of the low-friction layer of the coating, including the relative coefficient of friction, and the absolute coefficient of friction, and what may be the glass type and its' properties; therefore, it would have been obvious to one of ordinary skill in the art to have made the polymer and coupling agent of the coating of the copending claims be the same materials as presently claimed.
Claims 1, 4 6-11, 14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-60 of US Patent No. 10273048.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending heat-tolerant coatings reads on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the light transmission, the coefficient of friction, the thermal stability, the hydrolytic resistance and a coupling agent layer and a polymer layer as dependent claims; however, the copending independent claims do not specifically teach the coefficient of friction properties or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to col. 27 and col. 40 of US 10273048 which define what the coefficient of friction of the coating may be; therefore, it would have been obvious to one of ordinary skill in the art to have made the polymer and coupling agent of the coating of the copending claims be the same materials as presently claimed, and it would also have been obvious to have had the coatings have the same properties as presently claimed.
Claims 1, 4 6-11, 14 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of US Patent No. 10273049.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending heat-tolerant coatings reads on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the light transmission properties, the coefficient of friction, thermal stability, the hydrolytic resistance, and a coupling agent layer and a polymer layer as dependent claims; however, the copending independent claims do not specifically teach the coefficient of friction properties, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 22, 32 and 44 of US 10273049 which define what is meant by the polymer of the low-friction layer of the coating, including the relative coefficient of friction, the thickness of the coating and what the properties of the coated glass container may be; therefore, it would have been obvious to one of ordinary skill in the art to make the container have the properties and thicknesses claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 41-60 of US Patent No. 10307333.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending lubricious coatings, i.e. tenacious organic coatings, read on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the light transmission, the glass resistance, the glass type, and a coupling agent layer and a polymer layer as dependent claims; however, the copending independent claims do not specifically teach the relative coefficients of friction, the thermal stability, the glass type, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 37, 41 and 49 of US 10307333 which define what is meant by the relative coefficient of friction and what the properties of the lubricious coating may be; therefore, it would have been obvious to one of ordinary skill in the art to have made the properties of the coated glass container be the same as claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24, 29 and 30 of US Patent No. 10023495.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending lubricious coatings reads on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the coefficient of friction, the thermal stability, the light transmission and a coupling agent layer and a polymer layer; however, the copending claims do not specifically teach the relative coefficients of friction, the glass resistances, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 32, 33, 36 and 49 of US 10023495 which define what is meant by the polymer of the polymer layer, including the relative coefficient of friction, and the properties of the glass container with a lubricous coating; therefore, it would have been obvious to one of ordinary skill in the art to have made the glass container with a lubricous coating have the same properties as claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-40, 44-46, and 54-65 of US Patent No. 10117806.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending lubricious coatings reads on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the coefficient of friction, the light transmission, the glass resistance, the glass type, and a coupling agent layer and a polymer layer as dependent claims; however, the copending independent claims do not specifically teach the relative coefficients of friction, the glass resistances, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 33, 37 and 48 of US 10117806 which define what is meant by the coefficient of friction difference and the properties of the coated glass containers; therefore, it would have been obvious to one of ordinary skill in the art to have made the copending glass container have the properties claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of US Patent No. 9763852.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending low-friction coatings reads on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the hydrolytic resistance, the type 1 criteria and the coefficient of friction; however, the copending claims do not specifically teach the relative coefficients of friction, the light transmission, or the thicknesses claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 9, 26, 30 and 34 of US 9763852 which define what the relative coefficient of friction may be of the low-friction layer, the light transmission, the thicknesses and the thermal stability; therefore, it would have been obvious to one of ordinary skill in the art to have made the glass and the coated glass article have the same properties as claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of US Patent No. 9775775.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to glass containers comprising a body of glass having a coating, wherein the copending low-friction coatings reads on a coating having the same coefficient of friction. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the hydrolytic resistance, the light transmission, the thermal stability, and the coating layer thickness; however, all of the copending independent claims do not specifically teach the relative coefficients of friction or the glass properties.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 19, 26, 30 and 34 of US 9775775 which define the relative coefficient of friction may be of the low-friction layer, the properties/type of the glass, the light transmission, and the thermal stability; therefore, it would have been obvious to one of ordinary skill in the art to have made the glass and the coated glass article have the same properties as claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of US Patent No. 10737973.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to coated glass containers comprising a body of glass having a coating, wherein the copending coating reads on the low-friction coating. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the hydrolytic resistance and the type 1 criteria; however, the copending claims do not specifically teach the coefficient of friction, the light transmission, the thermal stability, or the thickness claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 8, 25, 29 and 32 of US 10737973 which define what is meant by the coating and the coated glass article, including that it is a low-friction coating, the thermal stability, the light transmission and the coating thickness; therefore, it would have been obvious to one of ordinary skill in the art to have made the coating/coated glass article of the copending claims have the same properties as presently claimed.
Claims 1, 2, 4-12 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of US Patent No. 10507164.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both drawn to coated glass containers comprising a body of glass having a coating, wherein the copending coating reads on the coating. The present claims are broad enough to have all of the other limitations of the copending claims. The copending claims teach the type 1 criteria, the relative coefficients of friction and the coefficient of friction; however, the copending claims do not specifically teach the hydrolytic resistance, the thermal stability, the light transmission or the thicknesses claimed.
Applicant’s attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of a term in a patent claim.” In re Boylan, 392 F.2d 1017, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. (underlining added by examiner for emphasis) In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above underlined portion of the MPEP citation, attention is drawn to cols. 32, 40, 44 and 48 of US 10507164 which define what is meant by the thermal stability, the hydrolytic resistance, the coating layer thickness, and the light transmission; therefore, it would have been obvious to one of ordinary skill in the art to have made the coated glass package of the copending claims be the same materials and the same properties as presently claimed.
Conclusion
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/Gerard Higgins/Primary Examiner, Art Unit 1785