DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Election/Restriction
Applicant’s election without traverse of Group I, claims 1-6 and 14, and the species palm oil, carboxymethyl cellulose, water, sucrose palmitate, and ethanol in the reply filed on 14 July 2026, is acknowledged.
Status of Claims
Claims 1-15 are pending in the instant Office Action.
Claims 7-13 and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 14 July 2026.
Claims 1-6 and 14 are under consideration in the instant Office Action, to the extent of the following elected species:
the specific fat and oil is palm oil;
the specific one or more water-soluble gelling agents is carboxymethyl cellulose;
the specific solvent is water;
the specific emulsifier is sucrose palmitate; and
the specific aqueous organic solvent is ethanol.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of parent Japanese Patent Application No. JP 2022-049699, filed on 25 March 2022, has been received from the International Bureau.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on 19 July 2024, and 30 April 2026, were filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs are being considered by the examiner.
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 1-6 and 14 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.
Claim 1 recites a ratio of amounts of the fat and oil to the sum of the cyclodextrin and water-soluble gelling agent, followed by a statement in parentheses. It is unclear if the statement in the parentheses is further limiting the claim, attempting to clarify the preceding limitation, or is intending to communicate another meaning, and is therefore indefinite. Claims 2-6 and 14 depend from claim 1, incorporate all of its limitations, and fail to resolve the indefiniteness, therefore the claims are also rejected as being indefinite. Applicant may overcome this rejection by amending claim 1 to remove the parenthetical statement.
Claim 1 also recites a ratio range of “1 or more and less than 9:9 or less and more than 1 in mass ratio” in the final two lines. The recited range is unclear because “1 or more” and “more than 1” are equivalent and a different format than the ratio “9:9”, which is also equivalent to a ratio of 1. Para. [0043] of the instant spec. recites example weight ratios of 1:9, 5:5, and 8:2, therefore the limitation is interpreted as being a range of weight ratios from 1:9 to 9:1 for the purpose of examination. If this interpretation is correct, Applicant may overcome this rejection by amending the quoted limitation above to read “a range of 1:9 to 9:1”. Claims 2-6 and 14 depend from claim 1 and incorporate all of its limitations, therefore the claims are also rejected as being indefinite.
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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over INA Food Industry Co LTD (Japanese Patent Application Publication No. JP 2016-204311 A, published on 8 December 2016, provided by Applicant in the IDS filed on 19 July 2024, references to English translation, hereafter referred to as INA) in view of Cash et al. (Cellulose Derivatives in Food Stabilisers, Thickeners and Gelling Agents. 2010, pp. 95-115, Blackwell Publishing Ltd., hereafter referred to as Cash) and San Ei Gen FFI Inc. (WIPO International Patent Publication No. WO 2019/208539 A1, published on 31 October 2019, provided by Applicant in the IDS filed on 19 July 2024, references to English translation, hereafter referred to as San Ei Gen).
INA teaches emulsified compositions comprising water, an oil component, a-cyclodextrin, and gel forming components (Abstract). The cyclodextrin is taught to be present in an amount from 0.1-10% w/w (pg. 2, Cyclodextrin), the gel forming component is taught to be a polysaccharide, preferably an agar or gellan gum, in an amount from 0.05-5.0% w/w (pg. 2, Gel forming component), and the oil component is taught to be in one embodiment palm oil and present in an amount from 3-80% w/w (pg. 3, Oil component). The oil component is present in a ratio with the sum of the cyclodextrin and gelling component of (3-80%):(0.1-10% + 0.05-5.0%) → (3-80%):(0.15-15%), which is equivalent to a ratio range of 1:5 to 533:1 and encompasses the range of ratios recited in instant claim 1.
INA teaches that the gel forming component must be dissolved in water and combined with the cyclodextrin and oil component prior to emulsification but does not teach the quantity of water required to dissolve the gelling component (pg. 3, Method for producing emulsified composition). Following emulsification, INA teaches that an additive may be added to the composition, including an emulsifier that is a sugar (pg. 3, Additive). Finally, in Example 35 INA teaches the additional of ethanol to the emulsified blend of gelling component, cyclodextrin, and water to form a cream with “excellent” physical properties.
INA does not teach the gelling component to be carboxymethyl cellulose, the amount of water used to dissolve the gelling component, nor the mixture of water, palm oil, cyclodextrin, and gelling component to be in the form of a powder. These deficiencies are offset by the teachings of Cash and San Ei Gen.
Cash teaches a review of cellulose derivatives and their use as viscosifiers, stabilizers, and rheology modifiers (Abstract). Sodium carboxymethyl cellulose, also known as cellulose gum or CMC, is taught to be a water-soluble, anionic cellulose derivative that is generally recognized as safe under the U.S. Code of Federal Regulations (pg. 65, 6.1 Introduction and pg. 96-97, 6.3.1 Carboxymethyl cellulose). CMC is taught to be highly modifiable, with solubility, viscosity, and other solution characteristics being dependent on the degree of polymerization and degree of substitution in the polymer (pg. 97, para. 2 - pg. 98, para. 1). Finally, Cash teaches that cellulose is a “naturally occurring substance which constitutes about one-third of all vegetable matter” (pg. 95, 6.1 Introduction) and that cellulose derivatives offer economic benefits in the form of reducing or replacing the use of more expensive components due to the low cost of cellulose derivatives (pg. 113, 6.5 Future developments).
San Ei Gen teaches emulsion compositions with high stability which comprise water, an oil component, and gati gum and processed starch as thickening components (Abstract, pg. 4, Gati gum, and pg. 5, Processed starch). In some embodiments, San Ei Gen teaches that the composition may be formulated as a powder (pg. 2, Item 8), which has the advantage of having excellent dispersibility in an aqueous medium and emulsion stability following dispersion (pg. 7, lines 9-11). When formulated as a powder, San Ei Gen teaches that an appropriate quantity of water is 0.05-15% w/w, such as 1-10% w/w (pg. 7, lines 25-27).
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “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). These guidelines apply to the range of ratios taught by INA, which encompass the range of ratios recited in instant claim 1, and the range of quantity of water taught by San Ei Gen, which significantly overlaps with the range recited in instant claim 2.
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to combine the teachings of INA, Cash, and San Ei Gen to arrive at the invention of instant claims 1-4 and 6 because combining elements known in the prior art from similar products to impart known benefits yields predictable results. INA teaches emulsified compositions comprising water, an oil component that may be palm oil, a-cyclodextrin, and gel forming components in a range of ratios that encompasses the range of ratios recited in instant claim 1. INA also teaches that their compositions may further comprise an emulsifier, which may be a sugar, and ethanol.
In view of the teaching of Cash, one of ordinary skill would be motivated to use CMC as the gelling agent because Cash teaches the species to be highly modifiable, safe to users, abundantly available, and inexpensive to produce and use. The ordinary artisan would recognize these attributes as desirable in a gelling agent and would be motivated to use CMC in their composition. In view of the teachings of San Ei Gen, the ordinary artisan would be motivated to formulate the emulsion of water, palm oil, cyclodextrin, and gelling agent as a powder because Cash does not teach a form for their emulsion composition and San Ei Gen teaches that formulating a mixture of water, oil, and thickening components as a powder imparts excellent dispersibility and stability, which a person of ordinary skill would find desirable. In addition, Cash does not teach a quantity of water to be used in the mixture of water, palm oil, cyclodextrin, and gelling agent and San Ei Gen teaches that an appropriate amount of water to be used is 0.05-15% w/w, providing missing information that an ordinary artisan would need to complete their invention. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-4 and 6 in view of the teachings of INA, Cash, and San Ei Gen.
Claims 5 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over INA (Japanese Patent Application Publication No. JP 2016-204311 A, published on 8 December 2016, provided by Applicant in the IDS filed on 19 July 2024, references to English translation) in view of Cash (Cellulose Derivatives in Food Stabilisers, Thickeners and Gelling Agents. 2010, pp. 95-115, Blackwell Publishing Ltd.) and San Ei Gen (WIPO International Patent Publication No. WO 2019/208539 A1, published on 31 October 2019, provided by Applicant in the IDS filed on 19 July 2024, references to English translation) as applied to claims 1-4 and 6 above, and further in view of Partal et al. (J. Texture Stud. 1994, 25, 331., hereafter referred to as Partal).
INA, Cash, and San Ei Gen have been described above.
INA, Cash, and San Ei Gen do not teach the emulsifier to be sucrose palmitate. This deficiency is offset by the teachings of Partal.
Partal teaches the flow behavior and stability of oil-in-water emulsions stabilized by the sucrose ester sucrose palmitate (Title and Abstract). Sucrose esters of fatty acids are taught to be nonionic surfactants that are known to have applications in cosmetics, foods, and pharmaceuticals due to having low toxicity and a range of hydrophilic-lipophilic balance (HLB) values that vary depending on the length of the fatty acid chain (pg. 331, Introduction, para. 1-2). Utilizing a rheometer and other techniques (pg. 332, Experimental), Partal analyzed the flow behavior and stability of O/W emulsions stabilized by sucrose palmitate and found that the sucrose ester is “able to form highly stable emulsions over a wide range of concentrations” (pg. 346, Conclusions).
It would have been prima facie obvious to a person of ordinary skill in the art, prior to the filing of the instant application, to modify the invention rendered obvious by the teachings of INA, Cash, and San Ei Gen to use sucrose palmitate as an emulsifier in view of the teachings of Partal because simple substitution of one element for another to impart a known benefit yields predictable results. The teachings of INA, Cash, and San Ei Gen rendered obvious an emulsion of water, cyclodextrin, palm oil, and CMC, in a range of ratios that encompasses the range of ratios recited in instant claim 1, in the form of a powder, which is subsequently combined with water and ethanol. In addition, INA teaches the use of an emulsifier to stabilize the O/W emulsion.
In view of the teachings of Partal, a person of ordinary skill would be motivated to use sucrose palmitate as the emulsifier in the invention rendered obvious above because Partal teaches the sucrose ester to have low toxicity, to be appropriate for use in cosmetics, foods, and pharmaceuticals, and to provide a highly stable emulsion. The ordinary artisan would recognize these properties and wide range of applications to be desirable and would be motivated to use sucrose palmitate in their composition to impart the properties. As a result, there is a reasonable expectation of success in arriving at the invention of claims 5 and 14 in view of the teachings of INA, Cash, and San Ei Gen and further in view of the teachings of Partal.
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 1-6 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 9-10 of copending Application No. 18/028,683 in view of INA (Japanese Patent Application Publication No. JP 2016-204311 A, published on 8 December 2016, provided by Applicant in the IDS filed on 19 July 2024, references to English translation), San Ei Gen (WIPO International Patent Publication No. WO 2019/208539 A1, published on 31 October 2019, provided by Applicant in the IDS filed on 19 July 2024, references to English translation), and Partal (J. Texture Stud. 1994, 25, 331.).
This is a provisional nonstatutory double patenting rejection.
Commonly assigned copending Application No. 18/028,683 recites an emulsified composition comprising water, fat, a-cyclodextrin, and a water-soluble gelling agent which may be CMC (claim 1). The fat may be an edible vegetable oil (claim 2), the CMC is present in an amount from 0.1-1% w/w (claim 10), and the composition may be in the form of a “dried body” (claim 9). Finally, ‘683 recites their emulsified composition to be a hand cream (claim 3).
Application ‘683 does not recite the edible vegetable oil to be palm oil, the ratio of the fat to the sum of the cyclodextrin and CMC, the quantity of water, the dried body to be a powder, nor the composition to further be emulsified with water, ethanol, and sucrose palmitate. These deficiencies are offset by the teachings of INA, San Ei Gen, and Partal.
INA, San Ei Gen, and Partal have been described above.
Instant claims 1-6 and 14 are obvious variations of copending Application No. ‘683 because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to modify the invention recited in Application ‘683 to use palm oil, to use palm oil and cyclodextrin in the quantities recited in instant claim 1, to use water in the quantity recited in instant claim 2, to choose the dried body to be a powder, and to further emulsify the composition with water, ethanol, and sucrose palmitate in view of the teachings of INA, San Ei Gen, and Partal.
One of ordinary skill would be motivated to select palm oil as the edible vegetable oil in view of the teachings of INA because ‘683 does not recite a specific species and INA teaches palm oil to be appropriate for use in an emulsion with cyclodextrin, water, and a gelling component, providing missing information that an ordinary artisan would require to complete their invention. INA further teaches quantities of palm oil and cyclodextrin to be used in their emulsion, which is information that is missing from the invention recited in Application ‘683, and the person of ordinary skill would be motivated to use these quantities to complete their invention.
In view of the teachings of San Ei Gen, an ordinary artisan would be motivated to formulate the emulsion of water, palm oil, cyclodextrin, and gelling agent as a powder because ‘683 recites their emulsion to be in the form of a “solid body” but does not recite a specific solid body and San Ei Gen teaches that formulating a mixture of water, oil, and thickening components as a powder imparts excellent dispersibility and stability, which a person of ordinary skill would find desirable. In addition, Application 18/028,683 recites their invention to comprise water but does not recite a quantity of water and San Ei Gen teaches that an appropriate amount of water to be used is 0.05-15% w/w, providing missing information that an ordinary artisan would need to complete their invention.
Finally, in view of the teachings of INA and Partal, one of ordinary skill would be motivated to emulsify the mixture of water, palm oil, cyclodextrin, and CMC with water, ethanol, and an emulsifier because INA teaches this mixture to produce a cream with excellent physical properties, which the ordinary artisan would recognize as desirable. In view of the teachings of Partal, the ordinary artisan would be motivated to select sucrose palmitate as the emulsifier because Partal teaches the sucrose ester to have low toxicity, to be appropriate for use in cosmetics, foods, and pharmaceuticals, and to provide a highly stable emulsion. The ordinary artisan would recognize these properties and wide range of applications to be desirable and would be motivated to use sucrose palmitate in their composition to impart the properties.
Claims 1-6 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of copending Application No. 18/697,189 in view of INA (Japanese Patent Application Publication No. JP 2016-204311 A, published on 8 December 2016, provided by Applicant in the IDS filed on 19 July 2024, references to English translation), San Ei Gen (WIPO International Patent Publication No. WO 2019/208539 A1, published on 31 October 2019, provided by Applicant in the IDS filed on 19 July 2024, references to English translation), and Partal (J. Texture Stud. 1994, 25, 331.).
This is a provisional nonstatutory double patenting rejection.
Commonly assigned copending Application No. 18/697,189 recites a liquid emulsion comprising water, an oil and fat present in an amount of ≤50% w/w, a cyclodextrin, a water-soluble gelling agent, and a dextrin (claim 1). The cyclodextrin is recited to be a-cyclodextrin (claim 5) and the water-soluble gelling agent is recited in one embodiment to be CMC (claim 6).
Application ‘189 does not recite the oil and fat to be palm oil, the ratio of the oil and fat to the sum of the cyclodextrin and CMC, the quantity of water, nor first forming the emulsion as a powder before further being emulsified with water, ethanol, and sucrose palmitate. These deficiencies are offset by the teachings of INA, San Ei Gen, and Partal.
INA, San Ei Gen, and Partal have been described above.
Instant claims 1-6 and 14 are obvious variations of copending Application No. ‘189 because it would have been prima facie obvious to a person of ordinary skill in the art at the time of filing to modify the invention recited in Application ‘189 to use palm oil, to use palm oil and cyclodextrin in the quantities recited in instant claim 1, to use water in the quantity recited in instant claim 2, and to first form the emulsion as a powder before further emulsifying the composition with water, ethanol, and sucrose palmitate in view of the teachings of INA, San Ei Gen, and Partal.
One of ordinary skill would be motivated to select palm oil as the oil and fat in view of the teachings of INA because ‘189 does not recite a specific species and INA teaches palm oil to be appropriate for use in an emulsion with cyclodextrin, water, and a gelling component, providing missing information that an ordinary artisan would require to complete their invention. INA further teaches quantities of cyclodextrin to be used in their emulsion and a range of ratios of oil and fat to cyclodextrin and gelling agent to be used, which is information that is missing from the invention recited in Application ‘189, and the person of ordinary skill would be motivated to use this quantity to complete their invention.
In view of the teachings of San Ei Gen, an ordinary artisan would be motivated to formulate the emulsion of water, palm oil, cyclodextrin, and gelling agent as a powder prior to further emulsion into a final composition because San Ei Gen teaches that formulating a mixture of water, oil, and thickening components as a powder imparts excellent dispersibility and stability, which a person of ordinary skill would find desirable. In addition, Application 18/697,189 recites their invention to comprise water but does not recite a quantity of water and San Ei Gen teaches that an appropriate amount of water to be used in the powder form is 0.05-15% w/w, providing missing information that an ordinary artisan would need to complete their invention.
Finally, in view of the teachings of INA and Partal, one of ordinary skill would be motivated to emulsify the mixture of water, palm oil, cyclodextrin, and CMC with water, ethanol, and an emulsifier because INA teaches this mixture to produce a cream with excellent physical properties, which the ordinary artisan would recognize as desirable. In view of the teachings of Partal, the ordinary artisan would be motivated to select sucrose palmitate as the emulsifier because Partal teaches the sucrose ester to have low toxicity, to be appropriate for use in cosmetics, foods, and pharmaceuticals, and to provide a highly stable emulsion. The ordinary artisan would recognize these properties and wide range of applications to be desirable and would be motivated to use sucrose palmitate in their composition to impart the properties.
Claims 1-6 and 14 are directed to an invention not patentably distinct from claims 1-3 and 9-10 of copending Application No. 18/028,683 in view of INA, San Ei Gen, and Partal and claims 1 and 5-6 of commonly assigned copending Application No. 18/697,189 in view of INA, San Ei Gen, and Partal. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application Nos. 18/028,683 and 18/697,189, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Conclusion
No claims are allowed.
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/S.J.S./
Examiner, Art Unit 1619
/TIGABU KASSA/Primary Examiner, Art Unit 1619
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