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 included in the prosecution are claims 1, 5, 6, 10-14 and 16-23.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
Applicants' arguments, filed 12/16/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 112 - New
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection.
Claim 21 recites wherein the composition comprises more than 40% by mass of vegetal oil. The claim fails to comply with the written description requirement since the range encompasses all values greater than 40%, which the specification does not have support for. At best, the specification discloses up to 80% oil on page 12, lines 12-14.
Claim Rejections - 35 USC § 103 - New
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.
1. Claims 1, 5, 10-13, 16-18, 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Koga (JP 2001220338A, Aug, 14, 2001) in view of Dao et al. (Effect of metal ion doping on the optical properties and the deactivation of photocatalytic activity of ZnO nanopowder for application in sunscreens, Nov. 12, 2015) (hereinafter Dao), and Oudghiri-Hassani et al. (Synthesis, characterization and photocatalytic activity of α-Bi2O3 nanoparticles, Apr. 16, 2018) (hereinafter Oudghiri-Hassani), as evidenced by Ataman Chemicals (Bismuth Oxide, 2025) and Klinkova et al. (Barium Bismuth Oxides with α-, γ-, and ε-Bi2O3 Structures, 2007) (of record) (hereinafter Klinkova).
Koga discloses a sunscreen preparation for external use containing an ultraviolet scattering agent and succinoglucan (abstract). Succinoglucan is a water-soluble polymer (¶ [0026]). The content of succinoglucan is 0.01 to 10.0% (¶ [0020]). Suitable ultraviolet scattering agents include fine particles to ultrafine particles of bismuth oxide (¶ [0027]). The ultraviolet scattering agent is present in amount of 0.1 to 40% by weight (¶ [0029]). The composition may further contain an ultraviolet absorber (¶ [0030]). Suitable ultraviolet absorbers include 4-t-butyl-4’-methoxydibenzoyl methane (i.e. claimed butyl methoxydibenzoylmethane) (¶ [0035]). The composition may contain one or more ultraviolet absorbers. The amount of the ultraviolet absorber is 0.1 to 20.0% by weight (¶ [0036]). The composition may further contain components generally found in external compositions such as oil, humectants, and water (¶ [0037]). The composition may comprise 2.0 wt. % stabilizer and at most 51.89 wt. % water (¶ [0056]). Example 1 discloses wherein the composition comprises 3% dimethylpolysiloxane (i.e., biocompatible lipophilic polymer). The composition may be in the form of an emulsion (oil-in-water or water-in-oil) (¶ [0039]).
Koga differs from the instant claims insofar as not disclosing wherein the composition comprises iron doped bismuth oxide colloids, wherein the bismuth oxide is in monoclinic form, and wherein the doped bismuth colloids have a size ranging from 0.5 nm to 1000 nm.
However, Dao discloses wherein ZnO have received great attention as the main component in sunscreen owing to its broader UV absorption spectrum, lower toxicity and higher physical/chemical stability than traditional organic UV absorbers. However, recent photocatalytic studies have raised concerns about the fact that the free radicals and reactive oxygen species can be released when ZnO nanoparticles absorb light energy equal or superior to the band gap energy. These free radicals are able to rapidly damage skin cells. Hence, in order to make ZnO nanoparticles safer for use in sunscreen, their photocatalytic activity needs to be reduced (page 366, Introduction, left column). The synthesis and characterization of ZnO nanoparticles doped with different metals (Al, Fe, Cu) were studied in order to reduce the photocatalytic activity of ZnO without modifying its optical properties for application in sunscreen. According to the results, the metal ion doping modified the cell volume, reduced the crystallinity and decreased the particle size of ZnO, which induces the increase of structural defects and then the suppression of its photocatalytic activity. The metal doped ZnO materials exhibited UV absorption capacity comparable to undoped ZnO (abstract). The ZnO-Fe particle size was about 10-30 nm (page 368, 3.2 Morphology).
Oudghiri-Hassani discloses that as a consequence of the high band gap of bismuth oxide, this material produces electron-hole pairs when subjected to a beam of photons with equal or greater energy, generating free radicals that undergo secondary reactions. Bismuth oxide exhibits well-known polymorphism with five modifications: α, β, γ, Ᵹ, and ω-Bi2O3. Monoclinic α-Bi2O3 and cubic Ᵹ-Bi2O3 are low- and higher-temperature stable forms, respectively (page 508, Introduction, right column).
Koga discloses that the composition comprises bismuth oxide as a UV agent. Accordingly, it would have been obvious to one of ordinary skill in the art to have doped the bismuth oxide with Fe motivated by the desire to reduce damage to skin cells since bismuth oxide generates free radicals as taught by Oudghiri-Hassani and free radicals damages skin cells and doping UV agents with Fe is a known and effective way of reducing photocatalytic activity, which generates free radicals as taught by Dao.
Also, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated monoclinic α-Bi2O3 into the composition of Koga as the bismuth oxide since it is the stable form of bismuth oxide at low temperatures as taught by Dao.
Additionally, since metal ion doping reduces particle size, it would have taken no more than the relative skills of one of ordinary skill in the art to have arrived at the claimed particle size of doped bismuth oxide based on the amount of doping needed to reduce photocatalytic activity. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
In regards to instant claim 1 reciting creating a photonic barrier ranging from ultraviolet radiation to visible radiation, as noted in the instant specification on page 4, lines 6-7 that the presence of doped bismuth oxide colloids provides the composition with photonic protection. Therefore, since a composition comprising a bismuth oxide colloid doped with iron would have been obvious as discussed above, the composition of the prior art necessarily creates a photonic barrier ranging from ultraviolet radiation to visible radiation when applied.
In regards to instant claim 1 reciting bismuth oxide colloids in crystalline form, as evidenced by Atman Chemicals, bismuth oxide is a yellow, monoclinic crystalline powder. As such, bismuth oxide is crystalline.
In regards to instant claim 1 reciting wherein the composition presents a sun protection factor SPF of at least 100, as noted in the instant specification in Table 1, a composition comprising 11% doped bismuth oxide has a SPF of 100. Therefore, since the composition of Koga comprises 0.1 to 40% bismuth oxide and it would have been obvious to have doped the bismuth oxide with iron, the composition of the prior art necessarily has a SPF of 100.
In regards to instant claim 5, as evidenced by Klinkova, α-Bi2O3 is stable at room temperature and has a monoclinic structure (space group P21/c) with the unit cell parameters equal to α = 5.8496(3) Å, β = 8.1648(4) Å, c = 7.5101(4) Å, β = 112.977(3) ° (page 1, first paragraph of left column). Thus, since the claimed properties seem to be inherent for a monoclinic form of bismuth oxide, one of ordinary skill in the art would reasonably conclude that the monoclinic bismuth oxide of the prior art has the claimed properties.
In regards to instant claim 23 reciting wherein when subjected to radiation at wavelengths of 200 nm – 420 nm, the composition has reduced photocatalytic activity and/or reduced reactive oxygen species (ROS) by virtue of the doped α-Bi2O3 colloids in the composition, since it would have been obvious to have formulated the composition of the prior art to comprise doped α-Bi2O3 colloids as discussed above, the composition of the prior art would have reduced photocatalytic activity and/or reduced reactive oxygen species (ROS) when subjected to radiation at wavelengths of 200 nm – 420 nm.
2. Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Koga (JP 2001220338A, Aug, 14, 2001) in view of Dao et al. (Effect of metal ion doping on the optical properties and the deactivation of photocatalytic activity of ZnO nanopowder for application in sunscreens, Nov. 12, 2015) (hereinafter Dao), Oudghiri-Hassani et al. (Synthesis, characterization and photocatalytic activity of α-Bi2O3 nanoparticles, Apr. 16, 2018) (hereinafter Oudghiri-Hassani), and further in view of Simonnet et al. (US 2013/0129649, May 23, 2013) (hereinafter Simonnet).
While claim 1 is believed to be obvious from the teachings of Koga, Dao, and Oudghiri-Hassani discussed above. For sake of compact prosecution and for this rejection only, Koga, Dao, and Oudghiri-Hassani will be interpreted as not teaching wherein the composition has a SPF of 100.
However, Simonnet discloses a sunscreen composition having a synergistic combination of ultraviolet light filtering gents that provide a high sun protection factor (abstract). The sunscreen has an SPF of 100 to 172 (claim 7). The degree of UV protection afforded by a sunscreen composition is directly related to the amount and type of UV filters contained therein. The higher the amount of UV filters, the greater the degree of UV protection (¶ [0004]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the sunscreen of Koga to have an SPF of 100 to 172 motivated by the desire to have the sunscreen provide high UV protection as taught by Simonnet. One of ordinary skill in the art would have had a reasonable expectation of success since SPF is related to the amount and type of UV filters contained in the composition as taught by Simonnet.
3. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Koga (JP 2001220338A, Aug, 14, 2001) in view of Dao et al. (Effect of metal ion doping on the optical properties and the deactivation of photocatalytic activity of ZnO nanopowder for application in sunscreens, Nov. 12, 2015) (hereinafter Dao), Oudghiri-Hassani et al. (Synthesis, characterization and photocatalytic activity of α-Bi2O3 nanoparticles, Apr. 16, 2018) (hereinafter Oudghiri-Hassani), and further in view of Leblanc et al. (US 2014/0030339, Jan. 30, 2014) (hereinafter Leblanc).
The teachings of Koga, Dao, and Oudghiri-Hassani are discussed above. Koga, Dao, and Oudghiri-Hassani do not teach wherein the bismuth oxide is grafted with a biocompatible polymer.
However, Leblanc discloses a skin care formulation including at least one particle-polymer hybrid. The polymer-particle hybrid includes at least one particle grafted with at least one polymer. The skin care formulation provides improved water-resistance with limited impact on the sensory feel of the formulation (such as tackiness) (abstract). In certain skin care applications, such as sunscreens, particles have been included to improve the ability of the product to reflect or scatter ultraviolet light. In many cases, however, these insoluble particles do not provide adequate water resistance and polymers have been added to confer such benefits. Unfortunately, the use of polymers imparts undesirable thickening and tack in the skin care formulation. Thus, there is a need for skin care formulations that provide improved performance characteristics with minimal undesirable sensory effects (¶ [0002]). Suitable particles include bismuth (III) oxide (¶ [0008]). The particles are grafted with polymerizable monomers such as ethyl acrylate (i.e., lipophilic polymer) (¶ [0021]). The particles are polymerized in the presence of a solvent or diluent (claim 15). The modified (functionalized) particle may be used in levels of from about 0.1% to about 50% by weight of the preparation of the hybrid polymer particle (¶ [0020]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have grafted ethyl acrylate polymer onto the Fe-doped bismuth oxide motivated by the desire to provide the particulate with adequate water resistance without imparting undesirable thickening and tack to the composition of Koga as taught by Leblanc.
4. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Koga (JP 2001220338A, Aug, 14, 2001) in view of Dao et al. (Effect of metal ion doping on the optical properties and the deactivation of photocatalytic activity of ZnO nanopowder for application in sunscreens, Nov. 12, 2015) (hereinafter Dao), Oudghiri-Hassani et al. (Synthesis, characterization and photocatalytic activity of α-Bi2O3 nanoparticles, Apr. 16, 2018) (hereinafter Oudghiri-Hassani), and further in view of Chiou et al. (US 2016/0367470, Dec. 22, 2016) (hereinafter Chiou).
The teachings of Koga, Dao, and Oudghiri-Hassani are discussed above. Koga, Dao, and Oudghiri-Hassani do not teach wherein the composition comprises between 5 and 25% humectant and between 0.1 and 1% pH regulator.
However, Chiou discloses a sunscreen composition (abstract). Suitable additives for the composition include humectants and pH-adjusting agents. Additives may be present in the composition in amounts ranging from about 0.01% to about 10% by weight (¶ [0101]).
Koga discloses a sunscreen composition wherein the sunscreen composition comprises components generally found in external compositions. Accordingly, it would have been prima facie obvious to have incorporated about 0.01% to about 10% humectants and pH-adjusting agents into the composition of Koga since these are known and effective components generally found in external compositions as taught by Chiou.
5. Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Koga (JP 2001220338A, Aug, 14, 2001) in view of Dao et al. (Effect of metal ion doping on the optical properties and the deactivation of photocatalytic activity of ZnO nanopowder for application in sunscreens, Nov. 12, 2015) (hereinafter Dao), Oudghiri-Hassani et al. (Synthesis, characterization and photocatalytic activity of α-Bi2O3 nanoparticles, Apr. 16, 2018) (hereinafter Oudghiri-Hassani), and further in view of Abdo et al. (US 2016/0263010, Sep. 15, 2016) (hereinafter Abdo).
The teachings of Koga, Dao, and Oudghiri-Hassani are discussed above. Koga, Dao, and Oudghiri-Hassani do not teach wherein the composition comprises more than 40% vegetal oil.
However, Abdo discloses a topical composition (abstract). The composition may be a sunscreen lotion, sunscreen cream, sunscreen spray or oil, and other SPF products (¶ [0092]). The composition may be in the form of an emulsion such as water-in-oil emulsion or oil-in-water emulsion (¶ [0050]). Compounds suitable for use in the oil phase include vegetable oils (¶ [0052]). The non-aqueous phase will typically comprise from about 10% to about 90% of the emulsion (¶ [0063]).
Koga discloses wherein the composition may be in the form of an emulsion (oil-in-water or water-in-oil). Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated about 10% to about 90% vegetable oil into the composition of Koga since this is a known and effective oil phase component and amount thereof for sunscreen emulsions as taught by Abdo.
6. Claims 1 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshino et al. (JP H11302144A, Nov. 2, 1999) (hereinafter Yoshino) in view of Dao et al. (Effect of metal ion doping on the optical properties and the deactivation of photocatalytic activity of ZnO nanopowder for application in sunscreens, Nov. 12, 2015) (hereinafter Dao), Oudghiri-Hassani et al. (Synthesis, characterization and photocatalytic activity of α-Bi2O3 nanoparticles, Apr. 16, 2018) (hereinafter Oudghiri-Hassani), and Simonnet et al. (US 2013/0129649, May 23, 2013) (hereinafter Simonnet as evidenced by Ataman Chemicals (Bismuth Oxide, 2025).
Yoshino discloses a sunscreen cosmetic containing a low-temperature baked zinc oxide powder manufactured by a wet method and a zinc oxide powder manufactured by a dry method (¶ [0007]). The amount of both zinc oxide powders as a whole can be appropriately selected depending on the dosage form and the desired UV protection effect (¶ [0019]). The sunscreen cosmetic may be blended with other UV protective agents to impart an optional UV protective effect to the sunscreen cosmetic (¶ [0021]). Examples of inorganic compound-based ultraviolet shielding agents include bismuth oxide powder (¶ [0028]).
Yoshino differs from the instant claims insofar as not disclosing wherein the composition comprises iron doped bismuth oxide colloids and wherein the bismuth oxide colloids are in monoclinic form.
However, Dao discloses wherein ZnO have received great attention as the main component in sunscreen owing to its broader UV absorption spectrum, lower toxicity and higher physical/chemical stability than traditional organic UV absorbers. However, recent photocatalytic studies have raised concerns about the fact that the free radicals and reactive oxygen species can be released when ZnO nanoparticles absorb light energy equal or superior to the band gap energy. These free radicals are able to rapidly damage skin cells. Hence, in order to make ZnO nanoparticles safer for use in sunscreen, their photocatalytic activity needs to be reduced (page 366, Introduction, left column). The synthesis and characterization of ZnO nanoparticles doped with different metals (Al, Fe, Cu) were studied in order to reduce the photocatalytic activity of ZnO without modifying its optical properties for application in sunscreen. According to the results, the metal ion doping modified the cell volume, reduced the crystallinity and decreased the particle size of ZnO, which induces the increase of structural defects and then the suppression of its photocatalytic activity. The metal doped ZnO materials exhibited UV absorption capacity comparable to undoped ZnO (abstract). The ZnO-Fe particle size was about 10-30 nm (page 368, 3.2 Morphology).
Oudghiri-Hassani discloses that as a consequence of the high band gap of bismuth oxide, this material produces electron-hole pairs when subjected to a beam of photons with equal or greater energy, generating free radicals that undergo secondary reactions. Bismuth oxide exhibits well-known polymorphism with five modifications: α, β, γ, Ᵹ, and ω-Bi2O3. Monoclinic α-Bi2O3 and cubic Ᵹ-Bi2O3 are low- and higher-temperature stable forms, respectively (page 508, Introduction, right column).
Yoshino discloses that the composition comprises bismuth oxide as a UV agent. Accordingly, it would have been obvious to one of ordinary skill in the art to have doped the bismuth oxide with Fe motivated by the desire to reduce damage to skin cells since bismuth oxide generates free radicals as taught by Oudghiri-Hassani and free radicals damages skin cells and doping UV agents with Fe is a known and effective way of reducing photocatalytic activity, which generates free radicals as taught by Dao.
Also, it would have been prima facie obvious to one of ordinary skill in the art to have incorporated monoclinic α-Bi2O3 into the composition of Yoshino as the bismuth oxide since it is the stable form of bismuth oxide at low temperatures as taught by Dao.
The combined teachings of Yoshino, Dao, and Oudghiri-Hassani do not teach wherein the composition has a SPE of at least 100.
However, Simonnet discloses a sunscreen composition having a synergistic combination of ultraviolet light filtering gents that provide a high sun protection factor (abstract). The sunscreen has an SPF of 100 to 172 (claim 7). The degree of UV protection afforded by a sunscreen composition is directly related to the amount and type of UV filters contained therein. The higher the amount of UV filters, the greater the degree of UV protection (¶ [0004]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the sunscreen of Yoshino to have an SPF of 100 to 172 motivated by the desire to have the sunscreen provide high UV protection as taught by Simonnet. One of ordinary skill in the art would have had a reasonable expectation of success since SPF is related to the amount and type of UV filters contained in the composition as taught by Simonnet.
In regards to instant claim 1 reciting creating a photonic barrier ranging from ultraviolet radiation to visible radiation, as noted in the instant specification on page 4, lines 6-7 that the presence of doped bismuth oxide colloids provides the composition with photonic protection. Therefore, since a composition comprising a bismuth oxide colloid doped with iron is obvious as discussed above, the composition of the prior art necessarily creates a photonic barrier ranging from ultraviolet radiation to visible radiation when applied.
In regards to instant claim 1 reciting more than 10% to 30% iron doped bismuth oxide colloids, since amounts of UV protective agents depends on the dosage form and desired UV protection effect as taught by Yoshino, it would have taken no more than the relative skills of one of ordinary skill in the art through routine experimentation to have arrived at the claimed amount depending on the dosage form and UV protection effect desired. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
In regards to instant claim 1 reciting bismuth oxide colloids in crystalline form, as evidenced by Atman Chemicals, bismuth oxide is a yellow, monoclinic crystalline powder. As such, bismuth oxide is crystalline.
In regards to instant claim 19 reciting wherein the composition does not comprise a polymer, the composition of Yoshino only requires the two types of zinc powders. See paragraph [0007] of Yoshino. Therefore, Yoshino’s composition free of polymer would have been obvious.
Response to Arguments
Applicant’s arguments have been considered but are moot because new rejections have been made.
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, 5, 6, 10-14 and 16-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,303,577. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims recite a more specific version of the instant claims (i.e., the conflicting claims recite additional limitations such as specifying an amount of iron) and thus read on the instant claims.
Response to Arguments
Applicants respectfully defer these issues until the application is otherwise in condition for allowance. Since this has not occurred, the rejection is maintained.
Conclusion
Claims 1, 5, 6, 10-14 and 16-23 are rejected.
No claims are allowed.
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/TRACY LIU/Primary Examiner, Art Unit 1614