DETAILED ACTION
Status of Application
Receipt of the amended claims filed 11/4/2024 are acknowledged.
Claims 1-30 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Allowable Subject Matter
In a prior art search, Examiner identified the references Gantner et al. (WO 2008/057155 A1) and Lorentz et al. (USPN 8,586,191 B2), drawn to adhesive skin gel compositions which are based on the presence of one or more polyorganosiloxanes (alternatively referred to as organopolysiloxanes). Both references discuss the presence of addition components such as hydrosilylation catalysts and hydrosilylation reaction inhibitors. However, neither reference discloses amounts of the three recited organopolysiloxane components which result in a composition which meets the two recited molar ratio limitations or the mol% limitation a) through c) as instantly recited.
Of the two references, Gantner comes the closest. However, the compositions produced only achieve a molar ratio for “RHAlk” of 0.7-1.5 at its broadest and, therefore, falls short of the required limitation of “2-5”.
Thus, the Examiner’s search has elicited no results which either anticipate or render obvious (e.g., by way of teaching or suggesting), the instantly amended invention. This is to say that the instant pending claims are immediately free and clear of the prior art.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US Patent 10,758,640.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and U.S. Patent No. 10,758,640 are directed to a silicone composition comprising at least one organopolysiloxane, at least one organopolysiloxane CE, at least one organopolysiloxane XL, a hydrosilylation catalyst, a hydrosilylation inhibitor and optionally an additive. The only difference lies in the fact that U.S. Patent No. 10,758,640 is directed to a molar ratio RHAlk=tH/tAlk>3, molar ratio of RHCEV=nHCEtAlk ≥4.5, and mol% RHCE=(nHCE/tH)x100 greater than or equal to 90 mol% which is much more specific than the instant application. Thus, the invention of the patent is in effect a "species" of the "generic" invention of the instant application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus the two are not patentably distinct.
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of US Patent 11,051,989.
Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and U.S. Patent No. 11,051,989 are directed to a silicone composition comprising at least one organopolysiloxane, at least one organopolysiloxane CE, at least one organopolysiloxane XL, a hydrosilylation catalyst, a hydrosilylation inhibitor and optionally an additive. The only difference lies in the fact that U.S. Patent No. 11,051,989 is directed to a molar ratio RHAlk=tH/tAlk>3, molar ratio of RHCEV=nHCEtAlk ≥2.25 which is much more specific than the instant application. Thus, the invention of the patent is in effect a "species" of the "generic" invention of the instant application. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus the two are not patentably distinct.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUANGLONG N TRUONG whose telephone number is (571)270-0719. The examiner can normally be reached on 8:00 am-5:00 pm.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615
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