`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`18/182,797
`
`03/13/2023
`
`Dennis Mark MCDAID
`
`4384.0010005
`
`5282
`
`STE
`
`SLI
`
`TEIN&
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1101 K Street, NW
`10th Floor
`WASHINGTON,DC 20005
`
`HUI, SAN MING R
`
`1627
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/19/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`eoffice @sternekessler.com
`
`PTOL-90A (Rev. 04/07)
`
`
`
`Application No.
`Applicant(s)
`18/182,797
`MCDAID et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`SAN MING R HUI
`1627
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C) Responsive to communication(s) filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`15-18,20-23 27-31 ,33-34,36-39,41,71,73,75-76,91-93,99 and 121-124 is/are pending in the
`
`
`
`Disposition of Claims*
`5)
`Claim(s)
`application.
`is/are withdrawn from consideration.
`5a) Of the aboveclaim(s)
`LJ Claim(s)__ is/are allowed.
`Claim(s) 15-18 ,20-23 27-31 33-34 36-39,41,71,73,75-76,91-93,99 and 121-124 is/are rejected.
`(J Claim(s)__ is/are objectedto.
`Lj Claim(s)__ are subjectto restriction and/or election requirement
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`6 7 8
`
`Application Papers
`10)C) The specification is objected to by the Examiner.
`11) The drawing(s) filed on
`is/are: a)(j accepted or b)L)J objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)C) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)C) None ofthe:
`b)™) Some**
`a)CX) All
`1.1) Certified copies of the priority documents have been received.
`2.) Certified copies of the priority documents have been received in Application No.
`3.1.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`
`Paper No(s)/Mail Date9/12/2023,4/29/20247/0/2024.
`U.S. Patent and Trademark Office
`
`3)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20241214
`
`
`
`Application/ Control Number: 18/ 182,797
`Art Unit: 1627
`
`Page 2
`
`DETAILED ACTION
`
`Notice ofPre-AIA or AIA Status
`
`The present application,filed on or after March 16, 2013, is being examined underthe first
`
`inventor to file provisions of the AIA.
`
`Claims 15-18, 20-23, 27-31, 33, 34, 36-39, 41, 71, 73, 75-76, 91-93, 99, 121-124 are pending.
`
`Double Patenting
`
`The nonstatutory double patenting rejection ts based onajudicially created doctrine
`
`grounded tn 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 notidentcal, but at least one examined application claim is not patentably
`
`distinct from the reference claim(s) because the examined application claim 1s 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 asa result of activities undertaken within the
`
`scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination
`
`underthe first inventor to file provisions of the ALA as explained in MPEP § 2159. See MPEP §
`
`
`
`Application/ Control Number: 18/ 182,797
`Art Unit: 1627
`
`Page 3
`
`2146 ef seq. for applications not subject to examination underthe first inventorto file provisions of
`
`the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
`
`Thefiling of a terminal disclaimer byitself is nota complete reply to a nonstatutory double
`
`patenting (NSDP) rejection. A complete reply requires that the terminal disclatmer be accompanied
`
`by areply requesting reconsideration of the prior Office action. Even where the NSDPrejection 1s
`
`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) maybe filed after final for
`
`consideration. See MPEP §§ 706.07(e) and 714.13.
`
`The USPTO Internet website contains terminal disclaimer forms which maybe used. Please
`
`visit www.uspto.gov/patent/ patents -forms. Theactualfiling 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 maybe filled out completely
`
`online using web-screens. An eTerminal Disclaimer that meets all requirements 1s auto-processed
`
`and approved immediately upon submission. For more informaton about eTerminal Disclaimers,
`
`refer to www.uspto.gov/ patents /apply/applying-online/eterminal-disclaimer.
`
`Claims 15-18, 20-23, 27-31, 33, 34, 36-39, 41, 71, 73, 75-76, 91-93, 99, 121-124 are rejected
`
`on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of USS.
`
`Patent No. 11,826,359 (359). Although the claims at tissue are notidentical, they are not patentably
`
`distinct from each other because ‘359 teaches the herein an omeprazole composition, the method of
`
`making the same, and the method of inhibiting acid secretion (see claims 1, 12-14).
`
`‘359 teaches the
`
`ratio of the components and two buffer systems (see claim 1 for example).
`
`“359 teaches the devices
`
`to release the first chamber mixture into the second chamber(see claims 24-25).
`
`
`
`Application/ Control Number: 18/ 182,797
`Art Unit: 1627
`
`Page 4
`
`Since the scope of “359 is narrowerthan that of the instant invention,this is an anticipatory
`
`type of double patenting rejection.
`
`Any inquiry concerning this communication or earlier communications from the examiner
`
`should be directed to SAN MING R HUI whose telephone numberts (571)272-0626. The examiner
`
`can normally be reached Mon- Fri 9:30-5:30.
`
`Examinerinterviews are available via telephone, in-person, and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicant 1s encouraged to
`
`use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
`
`Kortney Klinkel can be reached on 571-270-5239. The fax phone numberfor the organization
`
`where this application or proceedingts assigned 1s 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained
`
`from Patent Center. Unpublished application information in Patent Centeris available to registered
`
`users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
`
`Visit https:/ /www.uspto.gov/ patents /apply/patent-center for more information aboutPatent
`
`Center and https://www.uspto.gov/ patents / docx for information aboutfiling in DOCX format.
`
`For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
`
`If you would like assistance from a USPTO CustomerService Representative, call 800-786-9199 (IN
`
`USA OR CANADA) or 571-272-1000.
`
`/SAN MING R HUI/
`Primary Examiner, Art Unit 1627
`
`

Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ ChargeStill Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.

This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.

One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site