DETAILED ACTION
Status of Claims
Claims 41-52 are currently pending and are the subject of this Office Action. This is the first Office Action on the merits of the claims. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Office Action: Non-Final
Claim Rejections - 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 41-52 are rejected on the ground of nonstatutory double patenting over claims 1-13 and 15 of US Patent 11,793,832 B2 to Abbott et al., hereinafter “‘832 Patent,” matured from copending Application No. 17/268,622.
Although the conflicting claims are not identical, they are not patentably distinct because the instant claims as well as the copending claims are drawn to a device for application to a would comprising a first polymer layer comprising a first bioactive agent, a second polymer layer comprising a second bioactive agent, and a third polymer layer positioned in between the first and second polymer layers so that the three polymer layers are stacked in a sandwich-type structure, wherein the third polymer layer is a water soluble microscale polymer layer formed from a different polymer than the second polymer layer.
Claim 41 is obvious over claims 1 and 7 of the ‘832 Patent. See MPEP § 2123 [R-5] regarding the obviousness of rearranging a reference according to the teachings of that same reference.
Claim 42 is anticipated by claim 2 of the ‘832 Patent.
Claim 43 is anticipated by claim 3 of the ‘832 Patent.
Claim 44 is anticipated by claim 4 of the ‘832 Patent.
Claim 45 is anticipated by claim 5 of the ‘832 Patent.
Claim 46 is anticipated by claim 6 of the ‘832 Patent.
Claim 47 is anticipated by claim 8 of the ‘832 Patent.
Claim 48 is anticipated by claim 9 of the ‘832 Patent.
Claim 49 is anticipated by claims 10-11 of the ‘832 Patent.
Claim 50 is anticipated by claim 15 of the ‘832 Patent.
Claim 51 is anticipated by claim 12 of the ‘832 Patent.
Claim 52 is anticipated by claim 13 of the ‘832 Patent.
Conclusion
Claims 41-52 are rejected. No claims are allowed. HERRON (Herron, M., et al., Interfacial Stacks of Polymeric Nanofilms on Soft Biological Surfaces that Release Multiple Agents, ACS Appl. Mater. Interfaces, 8 (2016) pp. 26541-26551; publ. Aug. 31, 2016; on 12/05/2024 IDS; hereinafter, “Herron”) is noted as a reference of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC LAZARO whose telephone number is (571)272-2845. The examiner can normally be reached on Monday through Friday, 8:30am to 5:00pm EST; alternating Fridays out.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BETHANY BARHAM can be reached on (571)272-6175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DOMINIC LAZARO/Primary Examiner, Art Unit 1611
