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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Ohashi (US2019/0001014) in view of JP 2020-015640 (JP ‘640), Atomic (JP53-067694) and Waddon et al (CN 105378048 A).
Ohashi discloses porous silica doped with copper and aluminum as a deodorant (¶¶ 13, 36, 75, , 92, 197, 205, and claims 1, 4, 7, ). The solution is made in a mixture of water and organic solvent, such as ethanol (¶ 46). The ratio of silica to solvent can be about 0.001 to 0.05 mol relative to 1 mol of water (¶ 46). Coatings will form when the solution is applied and then dried, similar to the addition of perfume process (¶ 31). The composition may be used for any means to treat sulfur-containing or non-sulfur containing odors (¶¶ 32 and 33). The silica can be combined with resins which include various polymers (pargarph 41).
JP ‘640 appears to be the Japanese filing of US2019/0001014, and further teaches the composition may be used in spray form (¶¶ 30 and 32).
does not teach the addition of vinylpyrrolidone unit containing polymers or the use of a propellant for the spray.
Atomic teaches vinylpyrrolidone copolymers are used with silica in order to improve affinity with organic substances (claims, pg 1 right col, line 18 to pg 2, left col line 16).
Atomic does not teach vinylpyrrolidone and vinyl acetate copolymer.
Waddon et al teaches known formulations included doped particles with a matrix, where the doped particles may be silica with various metals, including copper and aluminum (description and claims 1, 7, and 8). The matrix may be copolymers of vinyl acetate and vinylpyrrolidone (description and claim 16).
It would have been obvious to one of ordinary skill in the art to modify the formulation of JP ‘640 by adding a vinylpyrrolidone copolymers to improve its affinity for organic substances, such as copolymers of vinyl acetate and vinylpyrrolidone which are disclosed by Waddon et al as suitable polymers with doped silicas. Additionally, it would have been obvious to vary the copolymer to optimize the properties of the formulation to adhere effectively but varying each monomer and the weight average molecular weight of the monomers.
Finally, it would have been obvious to vary the content of each component to provide the desired efficacy while optimizing delivery via a spray form. A propellant would be an obvious addition to the spray in order to aid in delivery.
With regards to the antiviral preamble, where the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02. Here, the formulation is defined by the claims and the preamble simply recognizes a benefit from the formulation made obvious. As such, the formulation made obvious above reads on the claims.
Nonstatutory 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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,090,403 in view of JP 2020-015640 , Atomic (JP53-067694) and Waddon et al (CN 105378048 A). Although the claims at issue are not identical, they are not patentably distinct from each other because US 2019/0001014 discussed above is the pregrant pub for ‘403 and the secondary references teach the missing subject matter as discussed above.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/792,801 (reference application) in view of US 2019/0001014, JP 2020-015640, Atomic (JP53-067694) and Waddon et al (CN 105378048 A). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘801 is directed to the porous silica per se, but the secondary references teach the use of doped silica with copolymers in spray form, as discussed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/969,961 (reference application) in view of US 2019/0001014, JP 2020-015640, Atomic (JP53-067694) and Waddon et al (CN 105378048 A). Although the claims at issue are not identical, they are not patentably distinct from each other because ‘961 is directed to the porous silica with a vinylpyrrolidone unit containing polymer and a solvent, but the secondary references teach the use of doped silica with copolymers in spray form, as discussed above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN J PACKARD whose telephone number is (571)270-3440. The examiner can normally be reached Mon 2-6pm and Tues-Fri 9:30am-6:30pm + mid-day flex.
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/BENJAMIN J PACKARD/ Primary Examiner, Art Unit 1612
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