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 is a Continuation of 17869665, filed 07/20/2022, 17869665 is a Continuation of 16920460, filed 07/03/2020, 16920460 Claims Priority from Provisional Application 62870154, filed 07/03/2019.
Information Disclosure Statement
The IDS filed on 6/20/2024 has been considered. See the attached PTO 1449 form.
Election/Restrictions
Applicant’s election of Group I (claims 1-16) and hyaluronic acid as the species of extracellular matrix component and acetyl hexapeptide-3 as the species of therapeutic peptide, in the reply filed on 8/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3, 11-12 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention or species, there being no allowable generic or linking claim.
Claim Status
Receipt of Remarks filed on 8/20/2026 is acknowledged. Claims 1-20 are currently pending. Claims 3, 11-12 and 17-20 have been withdrawn. Accordingly, claims 1, 2, 4-10, 13-16 are currently under examination.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 4, the recitation “Daltons,;” should delete the extra comma or semicolon.
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4-10, 13-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12036263B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because ‘263 also claims a composition comprising an extracellular matrix component and a therapeutic peptide, wherein the extracellular matrix component consists of an extracellular matrix component with an average molecular weight of less than about 100,000 Daltons, wherein the extracellular matrix component is at a concentration of about 0.1 wt. % to about 5 wt. % based on the total weight of the composition; and wherein the therapeutic peptide is at a concentration of about 5 wt. % to about 25 wt. % based on the total weight of the composition. The extracellular matrix component or fragment thereof is selected from the group consisting of hyaluronic acid, collagen, fibronectin, elastin, lectin, and a combination thereof. The therapeutic peptide is selected from the group consisting of palmitoyl oligopeptide, palmitoyl tripeptide-1, palmitoyl tetrapeptide-7, acetyl hexapeptide-3, and combinations thereof. The concentration of therapeutic peptide is about 5 wt. % to 20 wt. %. The composition further comprising one or more pharmaceutical additives selected from the group consisting of diluents, fillers, disintegrants, binders, lubricants, surfactants, hydrophobic vehicles, water soluble vehicles, emulsifiers, buffers, humectants, moisturizers, solubilizers, preservatives, colorants, plasticizers, carriers, excipients, and a combination thereof. The therapeutic peptide is selected from the group consisting of dipeptides, tripeptides, tetrapeptides, pentapeptides, hexapeptides and a combination thereof. The composition further comprising a vitamin selected from the group consisting of vitamin D, vitamin K, vitamin B, vitamin A, vitamin E, and vitamin C, or a combination thereof. The composition further comprising an oil control agent selected from the group consisting of salicylic acid, dehydroacetic acid, benzoyl peroxide, and vitamin B3, or a mixture thereof. The composition further comprising a skin care agent selected from the group consisting of retinal, salicylate, minocycline, and lidocaine. The composiion further comprising a hydrating composition, which is a lubricating vehicle, which is selected from the group consisting of petrolatum, petrolatum plus volatile silicone, lanolin, cold cream, and hydrophilic ointment.
Conclusion
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/ALI S SAEED/ Examiner, Art Unit 1616
