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 .
Claims 1-20 are pending.
Applicants have amended the independent claims.
This application is a continuation of 18/531447, which is a divisional of 18/054449.
Response to Arguments
Applicant's arguments filed 4/13/2026, based upon the latest amendment, have been fully considered but they are not persuasive in regards to claims 17-19. The arguments for the remaining claims have been considered and are persuasive.
In regards to independent claim 18, the rejection of the claim (and its dependent claims) remain despite the arguments presented by the applicants. First, the changes made to the claim in the latest amendment still does not resolve the issue that the elastomeric mold was not positively claimed and instead the system claim is still directed to only a backer board structure that is claimed. There is an intended use of the backer board in being capable of use with an elastomeric mold, but the only positively claimed structure currently for the system is in regards to a backer board. It is noted that applicants have positively claimed the mold in instant Claims 1 and 15.
Secondly, the applicants have argued that the reference of BOSTICK does not teach all of the claimed features of claim 18. However, in the interpretation of the claims, it is claimed only of two states of a flat surface in a first condition and a folded surface when oriented in a second condition. The interpretation of the BOSTICK would encompass these with the flat surface and folded surface in second condition. The raised edges are seen as being formed but these are not preconditioned of when the these are to occur, and thus BOSTICK would also include these elements when forming the edges and further when the sheet is capable of having a flat surface when supported from below. The claimed invention does not further define the amount of flat surface in relation to the raised edges and
Lastly, the double patenting rejection of the claims remain pending.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by
BOSTICK (US 7007838 B1).
Re: 17, BOSTICK teaches of a system, the system comprising:
a backer board comprising:
a flat surface when oriented in a first condition and a folded surface when oriented in a second condition;
two raised edges disposed at a periphery of the flat surface along adjacent sides of the backer board, the raised edges converging toward but not meeting at a corner between the adjacent sides in a manner forming a gap therebetween, the gap being sized to pour therethrough from the flat surface when in the second condition.
Here, BOSTICK teaches of a foldable tray of the flat surface and raised edges along the adjacent sides and forming a gap between at a corner, see Figs. 1-7, see abstract, and wherein, the foldable state of BOSTICK would encompass the claimed first and second conditions.
Further, regarding the “system for forming in an elastomeric mold defining one or more cavities”, the only positively described features pertains to a backer board and the features to this, as the claim does not positively claim for an elastomeric mold. Similarly, “the board configured to removably support the elastomeric mold during a molding process, the backer board having rigidity to support the mold while filling the mold with a therapeutic material to form the therapeutic pellets” are intended use of the of the apparatus.
Regarding forming and to pour the formed therapeutic pellets, this is an intended use of the apparatus. Further, the claimed material worked upon does not further limit the structure, see MPEP 2115. Lastly, the claimed material worked upon by the mold is note, however, the mold structure itself does not appear to be positively claimed.
Re: 18 (upon 17), wherein the backer board comprises a first cutout in the flat surface configured to further form a spout sized to pour the formed therapeutic pellets therethrough. See also the spout 54 that is interpreted as the claimed cut out, and would be capable of pouring the desired materials.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over BOSTICK as applied to claim 18 above, and further in view of KRIDLE (US 3477604 A).
Re: 19 (upon 18), wherein the backer board comprises a relief configured to facilitate bending of the backer board between the first condition and the second condition about the relief, the relief being oriented toward the first cutout.
Wherein, the KRIDLE reference teaches of a known top/lid which corresponds to the claimed board, and further that it can be made of a single piece that is sufficiently flexible and having a notch or slits 53, 88 that facilitates bending, see Fig. 3 and 5, and see also gap 101 in Fig. 7, allowing for bending, see also Col. 15, lines 45-65. The notches and slits taught by KRIDLE is seen as aiding in the bending of a flat surface particularly in regards to a particular desired direction and orientation.
Wherein, it would have been obvious for one of ordinary skill in the art to have further modified the board of BOSTICK with relief and cutout as taught by KRIDLE as additional features for the bending of the board along the desired orientation.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12151075. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed system of the ‘075 patent having the same features concerning thebacker board, the elastomeric mold, and of the raised edges and of the materials of the parts including groove/cut out for the folding of the backer board which encompasses the claimed invention of the instant application.
Allowable Subject Matter
Claims 1-17 are allowed over the prior art references.
The following is a statement of reasons for the indication of allowable subject matter over the prior art references: The prior art references fail to teach the claimed invention regarding the elastomeric mold with the claimed surfaces and mold cavities, and of the backer board arrangement including the raised edges and cutout at a corner, and further includes the features of how the backer board is in relation to the elastomeric mold.
The closest prior art include LION that teaches of a mold and backerboard but lacks the particular cut out and raised edges, and also fails to teach the arrangement between the backer board and elastomeric mold including the dimensions regarding the raised edges to the elastomeric mold thickness.
The CUTLER reference teaching of a tray/pan in general with a cutout for pouring.
The remaining references of SLAPPAY, DE GROOTE, and KRIDLE were used for dependent claim features and do not resolve the deficiencies of the LION and CUTLER references over the invention of independent claims 1 and 15.
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 EMMANUEL S LUK whose telephone number is (571)272-1134. The examiner can normally be reached Monday-Friday 9 to 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao S Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMMANUEL S LUK/Primary Examiner, Art Unit 1744
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