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 .
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on March 27, 2026 is acknowledged.
The restriction is deemed proper and therefore made FINAL.
Claims 14-17, 19-20, 22-23, and 25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-10 and 12-13 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.
Claims 9 and 10 require that the composition be made from calcining a reactant composition at a temperature below the meting point of the reactant composition and falls within a range of about 1000⁰C to about 1150⁰C or about 900⁰C to about 1150⁰C. However, B2O3, which is required component in the reactant composition, melts at 450⁰C (see Boron Oxide MSDS 2015). It is not clear if the term “about” is extremely broad, if some structure or treatment has been omitted that is required for this functionality, or if the claims fail to further limit their parent. Paragraphs 57-61 in the specification recites that the claimed combinations of components are melted at 1000⁰C to 1150⁰C which makes the applicant’s view of the meaning of the terms “calcine” and “melt” unclear.
Claim 12 recites that the composition forms calcium phosphate. This is a functional recitation whose corresponding structure is unclear. In one regard, it is unclear whether any of the compositions of claim 1 are unable to form calcium phosphate, given the general discussion in the specification that the bioactive glasses of the invention form calcium phosphate (see paragraph 41). In addition, the circumstances under which this formation occurs are not detailed nor are any requirements for particular proportions of constituent material recited in the claim. Thus it is unclear which subset of compositions has the claimed functionality.
Claim 13 recites that the composition maintains a neutral pH as it degrades. pH is a solution property, but the claim does not recite the environment in which the composition is located. Thus the presence of the composition in small amount in a basic environment is likely to yield a different pH profile than if located in a neutral or acidic environment. Thus a single composition may be both inside and outside the scope of the claims, depending on the conditions to which it is subjected.
For the sake of application of prior art, the functional limitations of these claims will be deem as met when the structural limitations of the claims are met. Clarification is still required.
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.
The factual inquiries 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.
Claim 1, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. (previously cited).
Claim 1 and those that depend from it recite a product-by-process. “’[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)….The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)” (see MPEP 2113). Therefore when no structure is implied, the product-by-process recitation does not add any limitations that affect patentability. Here a bioactive glass that occurs due to calcining a mixture of oxides is recited but it is not apparent that this product is distinct from a bioactive glass with oxide proportions in this same range made from a sol-gel that has undergone calcination. Nazhat et al. detail a bioactive glass mixture of 35 wt.% to about 80 wt.% B2O3, about 1 wt.% to about 40 wt.% P2O5, about 10 wt.% to about 40 wt.% CaO, about 1 wt.% to about 40 wt.% Na2O made from calcining a dried sol-gel of a similar if not the same mixture of components as reactants (see paragraphs 9-10, 34, and 64). They detail that their bioactive glass forms hydroxyapatite which is a variety of calcium phosphate (see paragraph 8; instant claim 12). While a full example of each embodiment that follows from the teachings of Nazhat et al. is not detailed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make their bioactive glass with the reactant components at recited proportions. These ranges overlap with or embrace those instantly claimed, thereby rendering the claimed ranges obvious. “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990)” (see MPEP 2144.05). According to MPEP 2145II, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). In addition, the fact that an inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus claimed functionalities would also follow, given that the composition rendered obvious by Nazhat et al. has the instantly claimed components. Therefore claims 1, 7-10, and 12-13 are obvious over Nazhat et al.
Claims 1, 5-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. as applied to claims 1, 7-10, and 12-13 above, and further in view of Jung et al. (US PGPub No. 2017/0014542).
Nazhat et al. render obvious the limitations of instant claims 1, 7-10, and 12-13. The presence of CuO is not explicitly detailed.
Jung et al. teach bioactive glass particles for wound healing applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract, paragraph 12, paragraph 55 table, and tables 1-2). They detail the additional presence of CuO at 0.06 to 6 wt% as useful (see paragraph 41-42; instant claims 5-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CuO in the bioactive glass material of Nazhat et al. as taught by Jung et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Jung et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1, 7-10, and 12-13 are obvious over Nazhat et al. in view of Jung et al.
Claims 1-4, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. as applied to claims 1, 7-10, and 12-13 above, and further in view of Fechner et al. (US Patent No. 7,709,027).
Nazhat et al. render obvious the limitations of instant claims 1, 7-10, and 12-13. The presence of CoO is not explicitly detailed.
Fechner et al. teach bioactive glass particles for wound healing applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract and column 12 lines 49-58). They detail the presence of CoO at up to 4 wt% to provide color as desired as useful (see column 4 liens 9-12; instant claims 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CoO in the bioactive glass material of Nazhat et al. as taught by Fechner et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Fechner et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1-4, 7-10, and 12-13 are obvious over Nazhat et al. in view of Fechner et al.
Claims 1, 5-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. as applied to claims 1, 7-10, and 12-13 above, and further in view of Da Fonte Ferreira et al. (US PGPub No. 2014/0193499).
Nazhat et al. render obvious the limitations of instant claims 1, 7-10, and 12-13 where a phosphorous source is included as a reactant (see paragraph 100). The presence of phosphoric acid as a reactant is not detailed.
Da Fonte Ferreira et al. teach bioactive glass particles for wound healing applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract, paragraphs 52-53 and example 4). They additionally teach of the inclusion of phosphoric acid as a phosphorus source (see paragraph 12; instant claim 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include phosphoric acid as an additional source of phosphorus in the reactant mixture of Nazhat et al. in light of Da Fonte Ferreira et al. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (see MPEP 2144.06). Therefore claims 1 and 7-13 are obvious over Nazhat et al. in view of Da Fonte Ferreira et al.
Claims 1, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. as applied to claims 1, 7-10, and 12-13 above, and further in view of Lin et al. (Journal of Biomedical Materials Research Part A 2014 102A:4491-4499) as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS (2015), the Calcium oxide MSDS (2015), and the Sodium oxide MSDS (2006).
Nazhat et al. render obvious the limitations of instant claims 1, 7-10, and 12-13, but do not explicitly discuss calcining the B2O3, P2O5, CaO, and Na2O when present at the claimed proportions.
Lin et al. teach glass based particles for implantation applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract and table I). They detail forming the glass particles into a solid via compression and heat treatment (calcining) at 300⁰C (see page 4492 second column first full paragraph; instant specification paragraph 40). Jung et al. additionally detail the benefit of the particular ceramic oxide materials that are present at encouraging blood vessel growth when implanted in vivo (see page 4499 first column second full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the finished bioactive glass material of Nazhat et al. in a similar application as taught by Lin et al. where it is processed into a mass in order to support regenerative growth in vivo. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement (e.g. added therapeutic utility). The heat treatment (calcining) of Jung et al. occurs at a temperature below the melting point of B2O3, P2O5, CaO, and Na2O (see the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS). Therefore claims 1, 7-10, and 12-13 are obvious over Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS.
Claims 1, 5-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS as applied to claims 1, 7-10, and 12-13 above, and further in view of Jung et al.
Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS render obvious the limitations of instant claims 1, 7-10, and 12-13. The presence of CuO is not explicitly detailed.
Jung et al. teach bioactive glass particles for wound healing applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract, paragraph 12, paragraph 55 table, and tables 1-2). They detail the additional presence of CuO at 0.06 to 6 wt% as useful (see paragraph 41-42; instant claims 5-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CuO in the bioactive glass material of Nazhat et al. in view of Lin et al. as taught by Jung et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Jung et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1, 7-10, and 12-13 are obvious over Nazhat et al. in view of Lin et al. and Jung et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS.
Claims 1-4, 7-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS as applied to claims 1, 7-10, and 12-13 above, and further in view of Fechner et al.
Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS render obvious the limitations of instant claims 1, 7-10, and 12-13. The presence of CoO is not explicitly detailed.
Fechner et al. teach bioactive glass particles for wound healing applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract and column 12 lines 49-58). They detail the presence of CoO at up to 4 wt% to provide color as desired as useful (see column 4 liens 9-12; instant claims 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CoO in the bioactive glass material of Nazhat et al. in view of Lin et al. as taught by Fechner et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Fechner et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1-4, 7-10, and 12-13 are obvious over Nazhat et al. in view of Lin et al. and Fechner et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS.
Claims 1, 5-10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS as applied to claims 1, 7-10, and 12-13 above, and further in view of Da Fonte Ferreira et al.
Nazhat et al. in view of Lin et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS render obvious the limitations of instant claims 1, 7-10, and 12-13 where a phosphorous source is included as a reactant (see paragraph 100). The presence of phosphoric acid as a reactant is not detailed.
Da Fonte Ferreira et al. teach bioactive glass particles for wound healing applications that are similar to those of Nazhat et al. and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract, paragraphs 52-53 and example 4). They additionally teach of the inclusion of phosphoric acid as a phosphorus source (see paragraph 12; instant claim 11).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include phosphoric acid as an additional source of phosphorus in the reactant mixture of Nazhat et al. in view of Lin et al. in light of Da Fonte Ferreira et al. “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (see MPEP 2144.06). Therefore claims 1 and 7-13 are obvious over Nazhat et al. in view of Lin et al. and Da Fonte Ferreira et al. as evidenced by the Boron oxide MSDS, the Phosphorous pentoxide MSDS, the Calcium oxide MSDS, and the Sodium oxide MSDS.
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 and 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 9,561,303 or claims 1-23 of U.S. Patent No. 9,561,250, or claims 1-74 of U.S. Patent No.8,173,154.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a bioactive glass material with B2O3, P2O5, CaO, Na2O, and CuO. Claim 1 and those that depend from it recite a product-by-process. “’[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)….The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)” (see MPEP 2113). Therefore when no structure is implied, the product-by-process recitation does not add any limitations that affect patentability. Here a bioactive glass that occurs due to calcining a mixture of oxides is recited but it is not apparent that this product is distinct from a bioactive glass with oxide proportions in this same range. It also is not clear that the presence of phosphoric acid as a reactant changes the outcome/structure of the product in manner not embraced by the patented claims. The proportions for these oxide components overlap or meet those instantly recite, thereby rendering the claimed ranges obvious (see MPEP 2144.05). According to MPEP 2145II, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). In addition, the fact that an inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus claimed functionalities would also follow, given that the composition rendered obvious by the patented claims has the instantly claimed components. Therefore claims 1 and 5-13 are obvious over claims 1-21 of U.S. Patent No. 9,561,303 or claims 1-23 of U.S. Patent No. 9,561,250, or claims 1-74 of U.S. Patent No.8,173,154.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 9,561,303 or claims 1-23 of U.S. Patent No. 9,561,250, or claims 1-74 of U.S. Patent No.8,173,154 as applied to claims 1 and 5-13 above, and each separately further in view of Fechner et al.
claims 1-21 of U.S. Patent No. 9,561,303 or claims 1-23 of U.S. Patent No. 9,561,250, or claims 1-74 of U.S. Patent No.8,173,154 render obvious the limitations of instant claims 1 and 5-13 in a bioactive glass material. The presence of CoO is not explicitly detailed.
Fechner et al. teach bioactive glass particles for wound healing applications that are similar to those of patented claims and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract and column 12 lines 49-58). They detail the presence of CoO at up to 4 wt% to provide color as desired as useful (see column 4 liens 9-12; instant claims 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CoO in the bioactive glass material of patented claims as taught by Fechner et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Fechner et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1-13 are obvious over claims 1-21 of U.S. Patent No. 9,561,303 or claims 1-23 of U.S. Patent No. 9,561,250, or claims 1-74 of U.S. Patent No.8,173,154, each separately in view of Fechner et al.
Claims 1 and 7-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a bioactive glass material with B2O3, P2O5, CaO, and Na2O. Claim 1 and those that depend from it recite a product-by-process. “’[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)….The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)” (see MPEP 2113). Therefore when no structure is implied, the product-by-process recitation does not add any limitations that affect patentability. Here a bioactive glass that occurs due to calcining a mixture of oxides is recited but it is not apparent that this product is distinct from a bioactive glass with oxide proportions in this same range. It also is not clear that the presence of phosphoric acid as a reactant changes the outcome/structure of the product in manner not embraced by the patented claims. The proportions for these oxide components overlap or meet those instantly recite, thereby rendering the claimed ranges obvious (see MPEP 2144.05). According to MPEP 2145II, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). In addition, the fact that an inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus claimed functionalities would also follow, given that the composition rendered obvious by the patented claims has the instantly claimed components. Therefore claims 1 and 7-13 are obvious over claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710.
Claims 1-4 and 7-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710 as applied to claims 1 and 5-13 above, and each separately further in view of Fechner et al.
Claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710 render obvious the limitations of instant claims 1 and 7-13 in a bioactive glass material. The presence of CoO is not explicitly detailed.
Fechner et al. teach bioactive glass particles for wound healing applications that are similar to those of patented claims and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract and column 12 lines 49-58). They detail the presence of CoO at up to 4 wt% to provide color as desired as useful (see column 4 liens 9-12; instant claims 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CoO in the bioactive glass material of patented claims as taught by Fechner et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Fechner et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1-4 and 7-13 are obvious over claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710, each separately in view of Fechner et al.
Claims 1 and 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710 as applied to claims 1 and 5-13 above, and each separately further in view of Jung et al.
Claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710 render obvious the limitations of instant claims 1 and 7-13 in a bioactive glass material. The presence of CuO is not explicitly detailed.
Jung et al. teach bioactive glass particles for wound healing applications that are similar to those of the patented claims and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract, paragraph 12, paragraph 55 table, and tables 1-2). They detail the additional presence of CuO at 0.06 to 6 wt% as useful (see paragraph 41-42; instant claims 5-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CuO in the bioactive glass material of patented as taught by Jung et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Jung et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1 and 5-13 are obvious over claims 1-32 of U.S. Patent No. 8,337,875 or claims 1-20 of U.S. Patent No. 8,821,919, or claims 1-16 of U.S. Patent No.10,624,982 or claims 1-19 of U.S. Patent No. 8,481,066 or claims 1-23 of U.S. Patent No. 9,486,554, or claims 1-20 of U.S. Patent No. 8,535,710, each separately in view of Jung et al.
The following are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Claims 1 and 7-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 21-30 of copending Application No. 18/608445.
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims recite a bioactive glass material with B2O3, P2O5, CaO, and Na2O. Claim 1 and those that depend from it recite a product-by-process. “’[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)….The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979)” (see MPEP 2113). Therefore when no structure is implied, the product-by-process recitation does not add any limitations that affect patentability. Here a bioactive glass that occurs due to calcining a mixture of oxides is recited but it is not apparent that this product is distinct from a bioactive glass with oxide proportions in this same range. It also is not clear that the presence of phosphoric acid as a reactant changes the outcome/structure of the product in manner not embraced by the copending claims. The proportions for these oxide components overlap or meet those instantly recite, thereby rendering the claimed ranges obvious (see MPEP 2144.05). According to MPEP 2145II, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979). In addition, the fact that an inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus claimed functionalities would also follow, given that the composition rendered obvious by the copending claims has the instantly claimed components. Therefore claims 1 and 7-13 are obvious over 1-10 and 21-30 of copending Application No. 18/608445.
Claims 1-4 and 7-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 21-30 of copending Application No. 18/608445 as applied to claims 1 and 5-13 above, and further in view of Fechner et al.
Claims 1-10 and 21-30 of copending Application No. 18/608445 render obvious the limitations of instant claims 1 and 7-13 in a bioactive glass material. The presence of CoO is not explicitly detailed.
Fechner et al. teach bioactive glass particles for wound healing applications that are similar to those of patented claims and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract and column 12 lines 49-58). They detail the presence of CoO at up to 4 wt% to provide color as desired as useful (see column 4 liens 9-12; instant claims 2-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CoO in the bioactive glass material of copending claims as taught by Fechner et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Fechner et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1-4 and 7-13 are obvious over claims 1-10 and 21-30 of copending Application No. 18/608445 in view of Fechner et al.
Claims 1 and 5-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 21-30 of copending Application No. 18/608445 as applied to claims 1 and 5-13 above, and further in view of Jung et al.
Claims 1-10 and 21-30 of copending Application No. 18/608445 render obvious the limitations of instant claims 1 and 7-13 in a bioactive glass material. The presence of CuO is not explicitly detailed.
Jung et al. teach bioactive glass particles for wound healing applications that are similar to those of the patented claims and are envisioned to include B2O3, P2O5, CaO, and Na2O (see abstract, paragraph 12, paragraph 55 table, and tables 1-2). They detail the additional presence of CuO at 0.06 to 6 wt% as useful (see paragraph 41-42; instant claims 5-7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include CuO in the bioactive glass material of copending claims as taught by Jung et al. This modification would have been obvious as the application of the same technique to a similar product in order to yield the same improvement. The proportion of Jung et al. overlaps that the instantly claimed range thereby rendering the instantly claimed range obvious (see MPEP 2144.05). Therefore claims 1 and 5-13 are obvious over claims 1-10 and 21-30 of copending Application No. 18/608445 in view of Jung et al.
Conclusion
No claim is allowed.
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/CARALYNNE E HELM/ Examiner, Art Unit 1615
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