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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to for at least the following reasons:
The abstract exceeds 150 words in length;
The abstract includes phrases which can be implied such as, i.e. “there is provided a method of manufacturing….”;
Correction is required. See MPEP § 608.01(b).
Claim Objections
Claim 1 is objected to because of the following informalities which require appropriate correction:
In line 13: the term “wherein” should be added before “the method” for improved readability.
In line 16: “into substantially arcuate concave shape” should be “into a substantially arcuate concave shape”.
In line 28: “the effective shrink force” should be “an effective shrink force”.
Lines 30-31 should be amended as follows for clarity: “wherein the effective shrink force existing in the elastic base member portion is released by removing the internal stress holding portion at a time of use.”.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 6961116 B1 (hereinafter “JP ‘116).
With respect to claim 1, JP ‘116 discloses a method for manufacturing a medical tape (manufacturing method shown in figs 4-5; para [0034]), wherein the medical tape (medical tape shown in figs 3-7; para [0033]) includes: an elastic base member portion (2; para [0033]) having stretchability (elastic materials inherently are stretchable) for covering a wound and a skin around the wound (as shown in figs 1-2); an adhesion portion (3; para [0033]) having a function of sticking and holding the elastic base member portion on the skin (para [0033]); a release portion (peeling portion 4; para [0033]) having a function of protecting the adhesion portion (para [0033]); and a non-stretchable effective shrink force holding portion (plate-shaped restoring force-preserving part 1) having flexibility and restorability (para [0034]), the effective shrink force holding portion (1), the elastic base member portion (2), the adhesion portion (3), and the release portion (4) are provided in this order (shown in fig 7), the method comprises the steps of: layering a solution polymer that later forms the elastic base member portion over a substantially arcuate concave inner surface of the effective shrink force holding portion bent into substantially arcuate concave shape in cross section under an external force (para [0034]; fig 4-5), thereby obtaining a two-layered structure configured by the effective shrink force holding portion and the solution polymer (para [0034]), and drying the solution polymer to complete film formation of the elastic base member portion and lamination of the effective shrink force holding portion and the elastic base member portion (the film formation and lamination described in para [0034] are interpreted as including drying of the solution polymer in order to form the film), thereby obtaining a two-layered structure configured by the effective shrink force holding portion bent into substantially arcuate concave shape in cross section and the elastic base member portion (para [0034]; figs 4-5); and subsequently, removing the external force applied on the effective shrink force holding portion to cause the effective shrink force holding portion to exhibit restorability (para [0035]; fig 6), thereby obtaining a two-layered structure configured by the elastic base member portion in a state of retaining the effective shrink force and the effective shrink force holding portion (para [0035]), and the effective shrink force retained in the elastic base member portion is released by removing the effective shrink force holding portion at a time of use (para [0037]).
With respect to claim 2, JP ‘116 discloses a medical tape (medical tape shown in figs 3-7; para [0033]) comprising: an elastic base member portion (2; para [0033]) having stretchability (elastic materials inherently are stretchable) for covering a wound and a skin around the wound (as shown in figs 1-2); an adhesion portion (3; para [0033]) having a function of sticking and holding the elastic base member portion on the skin (para [0033]); a release portion (peeling portion 4; para [0033]) having a function of protecting the adhesion portion (para [0033]); and a non-stretchable effective shrink force holding portion (plate-shaped restoring force-preserving part 1) having flexibility and restorability (para [0034]), wherein the effective shrink force holding portion (1), the elastic base member portion (2), the adhesion portion (3), and the release portion (4) are provided in this order (shown in fig 7), and the elastic base member portion internally has a shrink force having occurred due to forming shrinkage of a solution polymer that later forms the elastic base member portion and a shrink force generated by stretching an upper base part of the elastic base member portion (para [0034-0037]).
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11642434 (hereinafter “the ‘434 Patent”) in view of JP 6961116 B1 (hereinafter “JP ‘116).
Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims would have been obvious over the ‘434 patent in view of JP ‘116 to one having ordinary skill in the art, before the effective filing date of the invention. Specifically, claims 1-2 of the present application differ from claim 1 of the ‘434 Patent in that claim 1 of the ‘434 Patent does not explicitly recite a medical tape comprising an elastic base member portion having stretchability for covering a wound and a skin around the wound; an adhesion portion having a function of sticking and holding the elastic base member portion on the skin; a release portion having a function of protecting the adhesion portion; and a non-stretchable effective shrink force holding portion having flexibility and restorability, wherein the effective shrink force holding portion, the elastic base member portion, the adhesion portion, and the release portion are provided in this order. However, JP ‘116 teaches a method of manufacturing a medical tape as recited in claims 1-2 and also teaches a medical tape (medical tape shown in figs 3-7; para [0033]) comprising: an elastic base member portion (2; para [0033]) having stretchability (elastic materials inherently are stretchable) for covering a wound and a skin around the wound (as shown in figs 1-2); an adhesion portion (3; para [0033]) having a function of sticking and holding the elastic base member portion on the skin (para [0033]); a release portion (peeling portion 4; para [0033]) having a function of protecting the adhesion portion (para [0033]); and a non-stretchable effective shrink force holding portion (plate-shaped restoring force-preserving part 1) having flexibility and restorability (para [0034]), wherein the effective shrink force holding portion (1), the elastic base member portion (2), the adhesion portion (3), and the release portion (4) are provided in this order (shown in fig 7), and the elastic base member portion internally has a shrink force having occurred due to forming shrinkage of a solution polymer that later forms the elastic base member portion and a shrink force generated by stretching an upper base part of the elastic base member portion (para [0034-0037]). It has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01(I). Thus, in the present case, the medical tape recited in claims 1-2 of the present application would have been obvious over the ‘434 patent in view of JP ‘116 to one having ordinary skill in the art, before the effective filing date of the invention because it is produced by a process that is substantially to that disclosed in the ‘434 patent in view of JP ‘116.
Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12109092 (hereinafter “the ‘092 Patent”) in view of JP 6961116 B1 (hereinafter “JP ‘116).
Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims would have been obvious over the ‘092 patent in view of JP ‘116 to one having ordinary skill in the art, before the effective filing date of the invention. Specifically, claims 1-2 of the present application differ from claim 1 of the ‘092 Patent in that claim 1 of the ‘092 Patent does not explicitly recite a medical tape comprising an elastic base member portion having stretchability for covering a wound and a skin around the wound; an adhesion portion having a function of sticking and holding the elastic base member portion on the skin; a release portion having a function of protecting the adhesion portion; and a non-stretchable effective shrink force holding portion having flexibility and restorability, wherein the effective shrink force holding portion, the elastic base member portion, the adhesion portion, and the release portion are provided in this order. However, JP ‘116 teaches a method of manufacturing a medical tape as recited in claims 1-2 and also teaches a medical tape (medical tape shown in figs 3-7; para [0033]) comprising: an elastic base member portion (2; para [0033]) having stretchability (elastic materials inherently are stretchable) for covering a wound and a skin around the wound (as shown in figs 1-2); an adhesion portion (3; para [0033]) having a function of sticking and holding the elastic base member portion on the skin (para [0033]); a release portion (peeling portion 4; para [0033]) having a function of protecting the adhesion portion (para [0033]); and a non-stretchable effective shrink force holding portion (plate-shaped restoring force-preserving part 1) having flexibility and restorability (para [0034]), wherein the effective shrink force holding portion (1), the elastic base member portion (2), the adhesion portion (3), and the release portion (4) are provided in this order (shown in fig 7), and the elastic base member portion internally has a shrink force having occurred due to forming shrinkage of a solution polymer that later forms the elastic base member portion and a shrink force generated by stretching an upper base part of the elastic base member portion (para [0034-0037]). It has been held that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); MPEP 2112.01(I). Thus, in the present case, the medical tape recited in claims 1-2 of the present application would have been obvious over the ‘092 patent in view of JP ‘116 to one having ordinary skill in the art, before the effective filing date of the invention because it is produced by a process that is substantially to that disclosed in the ‘092 patent in view of JP ‘116.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN CARREIRO whose telephone number is (571)270-7234. The examiner can normally be reached M-F 7:30am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael Bredefeld can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAITLIN A CARREIRO/Primary Examiner, Art Unit 3786
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