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 .
Priority
This application, filed 04/24/2024 is a Continuation of 17559571, filed 12/22/2021, now U.S. Patent # 11980624.
17559571 is a Continuation of 16830454, filed 03/26/2020, now U.S. Patent # 11241444.
16830454 is a Continuation of 16382672, filed 04/12/2019, now U.S. Patent # 10722524.
16382672 is a Continuation of 15494022, filed 04/21/2017, now U.S. Patent # 10342802.
15494022 is a Continuation of PCT/US17/28857, filed 04/21/2017.
PCT/US17/28857 Claims Priority from Provisional Application 62403807, filed 10/04/2016.
Status of Claims
Claims 1-20 are currently pending.
Claims 1-20 were examined and are rejected.
Claim Rejections-Nonstatutory 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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 10342802 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a combination of hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid; additionally, both sets of claims recite hydroxytyrosol in an amount from about 0.28-4.60 mg/kg, and from about 0.15-2.5 mg/kg (see instant claims 1 & 4, and patented claims 14-15); and 3-O-acetyl-11-keto-β-boswellic acid in an amount from about 1.24-4.98 mg/kg, and from about 0.67-2.70 mg/kg (see instant claims 1 & 4, and patented claims 12-13). Additionally, both sets of claims recite 3-O-acetyl-11-keto-β-boswellic acid from extract of Boswellia serrata (instant claim 3 & patented claim 3), and hydroxytyrosol from an olive extract (instant claim 2 & patented claim 2). Therefore, both sets of claims encompass the same combination of agents, within the same amount ranges, and are not patentably distinct.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 10722524 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a combination of hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid; additionally, both sets of claims recite hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid in overlapping amounts. For instance, patented claim 6 recites 3-O-acetyl-11-keto-β-boswellic acid from about 0.8-2.5 mg/kg, which overlaps with about 1.24-4.98 mg/kg, and 0.67-2.7 mg/kg recited by instant claims 1 and 4. Patented claim 8 recites the amount of hydroxytyrosol in an amount of about 0.2-2 mg/kg, which overlaps with about 0.28-4.6 mg/kg, and about 0.15-2.5 mg/kg recited by instant claims 1 and 4. Additionally, both sets of claims recite 3-O-acetyl-11-keto-β-boswellic acid from extract of Boswellia serrata (instant claim 3 & patented claim 3), and hydroxytyrosol from an olive extract (instant claim 2 & patented claim 2). Therefore, both sets of claims encompass the same combination of agents, within overlapping amount ranges, and are not patentably distinct.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11241444 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a combination of hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid; additionally, both sets of claims recite hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid in the same amounts. For instance, patented claim 6 recites 3-O-acetyl-11-keto-β-boswellic acid from about 0.67-2.7 mg/kg, and patented claim 8 recites the amount of 1.24-4.98 mg/kg, which are recited by instant claims 1 and 4. Patented claims 12 and 10 recite the amount of hydroxytyrosol in an amount of about 0.28-4.6 mg/kg, and about 0.15-2.5 mg/kg, respectively, both recited by instant claims 1 and 4. Additionally, both sets of claims recite 3-O-acetyl-11-keto-β-boswellic acid from extract of Boswellia serrata (instant claim 3 & patented claim 5), and hydroxytyrosol from an olive extract (instant claim 2 & patented claim 3). Therefore, both sets of claims encompass the same combination of agents, within the same amount ranges, and are not patentably distinct.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11980624 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims encompass a combination of hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid; additionally, both sets of claims recite hydroxytyrosol and 3-O-acetyl-11-keto-β-boswellic acid in the same amounts. For instance, patented claims 6 & 7 recite 3-O-acetyl-11-keto-β-boswellic acid from about 0.67-2.7 mg/kg, and 1.24-4.98 mg/kg, respectively, which are recited by instant claims 1 and 4. Patented claims 8 & 9 recite the amount of hydroxytyrosol in an amount of about 0.28-4.6 mg/kg, and about 0.15-2.5 mg/kg, both recited by instant claims 1 and 4. Additionally, both sets of claims recite 3-O-acetyl-11-keto-β-boswellic acid from extract of Boswellia serrata (instant claim 3 & patented claim 5), and hydroxytyrosol from an olive extract (instant claim 2 & patented claim 4). Therefore, both sets of claims encompass the same combination of agents, within the same amount ranges, and are not patentably distinct.
Information Disclosure Statements
The IDS filed on 7/15/24, 12/30/24, 11/13/25, 3/12/26, and 6/23/26 have been considered.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH PIHONAK whose telephone number is (571)270-7710. The examiner can normally be reached Monday-Friday 9:00-5:30 EST.
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SARAH . PIHONAK
Primary Examiner
Art Unit 1627
/SARAH PIHONAK/Primary Examiner, Art Unit 1627
Prosecution Insights