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 .
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 62-81 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12214108. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘108 recites a coating that comprises a water-based hydrogel; and a first elastomeric material and a second elastomeric material added to the water-base hydrogel polymer to form a coating formulation, wherein the first elastomeric material is selected from the group consisting of a natural rubber latex and a polyisoprene latex, wherein the coating formulation does not contain any added solvents, and where in the second elastomeric material is nitrile latex which anticipates the current claims. Claim 1 therefore anticipates claim 62 of the current application. Both claims are directed to combining the hydrogel polymer and elastomeric materials where the formulation does not contain any added solvents. Dependent claims 2-14 anticipates claims 62-75 of the current application. Claim 15 of ‘108, recites a coating comprising a water-based hydrogel polymer, a first natural rubber latex, and a nitrile latex, blended together, which anticipates claim 76 of the current application. Both claims are directed to blending a water based hydrogel polymer, a natural rubber latex and a nitril latex. Dependent claims 16-17 of ‘108 anticipates claims 77-78 of the current application. Claim 18 of ‘108 recites a coating comprising a water-based hydrogel polymer, a first polyisoprene latex, and a nitrile latex, blended together which anticipates claim 79 of the current application. Dependent claims 19-20 of ‘108 anticipates claims 80-81 of the current application.
Claim Rejections - 35 USC § 103
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.
Claim(s) 76 and 79 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamann (CA 2448475).
As to claims 76 and 79, Hamann discloses the use of various elastomer emulsions or solutions that can be used to form a glove. Hamann teaches the use of a mixture of one or more of natural rubber latex, synthetic polyisoprene, a SBS, an acrylate based hydrogel , any other elastomer (see 0142).
Hamann fails to explicitly teach the combination of a water-based hydrogel polymer, a first natural rubber latex, and a nitrile latex as required by claim 76 or a water-based hydrogel polymer, a first polyisoprene latex, and a nitrile latex as required by claim 79.
Hamann teaches the same class of materials cited in the claims. It would have been obvious to one having ordinary skill in the art to select and blend the recited components from Hamann’s disclosed lists in order to provide a coating composition. The selection of specific members from a known list of components and combining them would have been routine optimization to arrive at a coating composition having desired properties.
Claim(s) 76 and 79 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamann (US 20070104904).
As to claims 76 and 79, Hamann teaches mixtures of a list of elastomers that includes natural rubber latex, synthetic polyisoprene, acrylonitrile, and acrylate based hydrogel (see 0054).
Hamann fails to explicitly teach the combination of a water-based hydrogel polymer, a first natural rubber latex, and a nitrile latex as required by claim 76 or a water-based hydrogel polymer, a first polyisoprene latex, and a nitrile latex as required by claim 79.
Hamann teaches the same class of materials cited in the claims. It would have been obvious to one having ordinary skill in the art to select and blend the recited components from Hamann’s disclosed lists in order to provide a coating composition. The selection of specific members from a known list of components and combining them would have been routine optimization to arrive at a coating composition having desired properties (see 0020).
Claim(s) 76-81 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gross et al. (US 6353148).
As to claims 76 and 79, Gross et al. discloses a hydrogel-forming polymeric material which includes a first compound that is superabsorbent (hydrogel forming material, col. 3, lines 35-41) and second compound that includes an elastomeric material that increases fracture resistance of the superabsorbent material. (see abstract). Gross et al. states the elastomeric material can be natural rubber, polyisoprene rubber or acrylonitrile butadiene rubber (see col. 4, lines 37-51).
Gross et al. fails to teach the combination of a first natural latex and a nitrile latex or a first polyisoprene and a nitrile latex as required by claims 76 and 79.
It has been held that combining known equivalents would have been obvious (see MPEP 2144.06.l) therefore it would have been obvious to one having ordinary skill in the art to combine the elastomers as claimed in order to arrive at the desired hydrogel with optimized fracture resistance.
As to claims 77-78, and 80-81, Gross et al. states the elastomeric portion is provided at about 2-25% (see col. 4, lines 26-36), the crosslinker supplied at 5% and the active agent can be 0.001-30%, which means the water based hydrogel can be provided at 45-93% of the composition. This overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Conclusion
There are no prior art claims over 62-75.
Yeh et al. (US 6391409) discloses a coating that is formed by combining a natural rubber or synthetic rubber with a nitrile rubber dispersion (See table 1). Yeh et al. states the coating imparts a unique surface texture to the glove that helps prevents self-sticking of the glove (see abstract). Yeh et al. fails to teach combining the rubber blend with a water-based hydrogel polymer as required by claims 62. Modha et al. (US 2005/0127552) discloses forming a hydrogel coating by forming an aqueous solution of a crosslinking agent and polymer (see 0027). The hydrogel coating prevents the glove from sticking to itself (See 0054). Gross (US 6353148) et al. discloses a hydrogel-forming polymeric material that includes a superabsorbent compound and an elastomeric material which can be natural rubber, polyisopropene rubber or acrylonitrile butadiene rubber (see abstract, Examples 8 and 9, col. 5, lines 37-51). The elastomeric material is added to increase fracture resistance.
The prior art cited fails to disclose or suggest a hydrogel combined with a blend of elastomeric material that includes either natural rubber or polyisoprene and nitrile without any solvents which creates a textured surface.
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/CACHET I. PROCTOR/
Examiner
Art Unit 1712
/CACHET I PROCTOR/
Primary Examiner, Art Unit 1712