DETAILED ACTION
In the Response filed 1/15/26, Applicant has amended claims 1, 13 and 15. Currently, claims 1-16 are pending.
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 .
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 because it includes legal phraseology (i.e. “comprising”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-13 and 15-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18429879 (reference application US 2025/0248855).
Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims would have been obvious in view of the ‘879 application to one having ordinary skill in the art at the time of the invention.
Specifically, all the limitations of claim 1 of the present application are found in claim 1 of the ‘879 application except that claim 1 does not recite the first surface having a dry peel strength of between about 0 and about 650 gf/inch and a wet peel strength of between about 0 and about 200 gf/inch. However, claim 1 of the ‘879 application recites that the first surface has a dry peel strength of between about 0 and about 700 gf/inch and a wet peel strength of between about 0 and about 150 gf/inch and it has been held that "[i]n the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists" (see In re Werthiem, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)). Thus, since the ranges in claim 1 lie inside and overlap with the ranges disclosed in claim 1 of the ‘879 application, this subject matter would have been obvious to one having ordinary skill in the art before the effective filing date of the invention. Furthermore, one would have been motivated to modify the range in claim 1 of the ‘879 application to be equivalent to the ranges recited in claim 1 of the present application since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Thus, claim 1 of the present application would have been obvious in view of claim 1 of the ‘879 application.
All the limitations of claim 2 are found in claim 2 of the ‘879 application; All the limitations of claim 3 are found in claim 3 of the ‘879 application; All the limitations of claim 4 are found in claim 4 of the ‘879 application; All the limitations of claim 5 are found in claim 5 of the ‘879 application; All the limitations of claim 6 are found in claim 6 of the ‘879 application; All the limitations of claim 7 are found in claim 7 of the ‘879 application; All the limitations of claim 8 are found in claim 8 of the ‘879 application; All the limitations of claim 9 are found in claim 9 of the ‘879 application; All the limitations of claim 10 are found in claim 10 of the ‘879 application; All the limitations of claim 11 are found in claim 11 of the ‘879 application; All the limitations of claim 12 are found in claim 12 of the ‘879 application; All the limitations of claim 13 are found in claim 13 of the ‘879 application; All the limitations of claim 15 are found in claim 14 of the ‘879 application; All the limitations of claim 16 are found in claim 15 of the ‘879 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18429879 (reference application US 2025/0248855) in view of Kistner (US 3708375).
Specifically, all the limitations of claim 14 of the present application are found in claim 1 of the ‘879 application except that claim 14 does not recite that it is a sterilized adhesive bandage. However, Kistner teaches that “[t]he United States Pharmacopoeia defines an adhesive bandage as ‘a sterile individual dressing prepared by affixing a plain absorbent compress to a strip of film or fabric coated with a pressure sensitive adhesive composition’…” and “further requires that each bandage be packaged individually in such a manner that its sterility is maintained until the individual package is opened. To meet these requirements, the manufacturer of adhesive bandages must first place each bandage in the prescribed package and thereafter sterilize the entire package” (col 1 lines 29-45). Thus, based on this teaching from Kistner, the adhesive bandage of the ‘879 application is interpreted as being “sterilized” so as to meet the requirements set forth for manufacture and distribution. Additionally, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the invention, to have sterilized the adhesive bandage of the ‘879 application in order to prevent infection due to contamination of an open wound from a non-sterile bandage.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 1-16 are free of art but are still subject to the rejections provided above. Additionally, any changes or amendments to the claims may result in new rejections under 35 USC 102 and/or 35 USC 103 being made in future Actions.
The following is a statement of reasons for the indication of allowable subject matter: The subject matter of independent claim 1 could either not be found or was not suggested in the prior art of record. The subject matter not found was an adhesive bandage comprising a hydrocolloid pad that includes a hydrocolloid layer forming a first surface and a polymeric film layer forming a second surface, the first surface having a dry peel strength of between about 0 and about 700 gf and a wet peel strength of between about 0 and 150 gf, wherein the hydrocolloid pad has a dry peel strength to wet peel strength ratio of about 3 to about 9, in combination with the other elements in the claims.
The closest prior art of record is JP 5342702 B1 (referred to as the ‘702 reference) which teaches a bandage which includes a hydrocolloid pad that has a polymeric film layer (translation pg 6; pad layer (b) comprises a flexible film layer (b1) and a hydrocolloid composition layer (b2)) wherein the first surface has a dry peel strength of between about 364-391gf/in (comparative examples 5-6 on pages 15-16 of the translation; values in table 3) and a wet peel strength of between 431-442gf/in (comparative examples 5-6 on pages 15-16 of the translation; values in table 3). As argued by Applicant in the remarks filed 1/15/26 (remarks page 7), the values taught in the ‘702 reference provide a dry peel:wet peel ratio of close to 1:1 and fail to teach a ratio of about 3 to about 9 as recited in amended claim 1. Applicant further argued that this specific ratio is critical in order to allow the bandage to be used as intended where it is removed and replaced daily without sticking. The Office notes that Applicant’s specification further provides that these specific wet and dry peel strength values and the resulting ratio render the bandage easier and less painful to remove after it absorbs wound exudate. Thus, the Office agrees that the claimed dry and wet peel strength values and the specifically claimed ratio of dry peel strength to wet peel strength are critical as they are responsible for providing desirable functionality in the claimed invention and are not merely a property or characteristic that is trivial or routinely optimized in the art. Therefore, for at least this reason, the Office agrees that the prior art of record fails to disclose or suggest the subject matter of claim 1 outlined above.
Independent claim 14 includes all the limitations of claim 1 and, thus, contains the same allowable limitations.
Independent claim 15 includes all the limitations of claim 1 and, thus, contains the same allowable limitations.
Claims 2-13 depend on claim 1, and claim 16 depends on claim 15 – thus, these claims contain the same allowable limitations as the claims from which they depend.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Amendments/Arguments
Applicant’s amendments and arguments filed 1/15/26 have been fully considered as follows:
Regarding the objections to the specification, in the absence of any amendments to the abstract or persuasive arguments in response to these objections, the objections have been maintained as noted above.
Regarding the objections to the claims, Applicant’s amendments have been fully considered and are sufficient to overcome the objections which, accordingly, have been withdrawn.
Regarding the claim rejections under 35 USC 103, Applicant’s amendments and arguments have been fully considered and are sufficient to overcome the rejections of record as outlined in the “allowable subject matter” section of this Action.
Regarding the Double Patenting rejections, in the absence of amendments to differentiate the claims from those of copending application no 18429879 or filing of a terminal disclaimer, the rejections have been maintained as noted above. The rejection has been modified with respect to claims 15 and 16 to correct a grammatical error. Additionally, claim 14 has now been provisionally rejected as necessitated by Applicant’s amendments to claim 1, which claim 14 depends from.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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