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 .
Response to Amendment
In response to the amendment received on 06/17/2026:
claims 1-3, 5-7, 11-22, and 30-31 are currently pending;
the 112(b) rejection to claim 13 is withdrawn in light of the amendment to the claim;
all prior art grounds of rejection are withdrawn, as outlined in the previous office action dated 03/23/2026; and
the nonstatutory double patenting rejection is maintained for at least the reasons as set forth herein, and the disapproved Terminal Disclaimer filed on 06/17/2026.
Terminal Disclaimer
The terminal disclaimer filed on 06/17/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 16/478646 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because: the filing date listed in the terminal disclaimer uses the PCT filing date, instead of the provisional application filing date.
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, 7 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 6 and 8 of U.S. Patent No. 12208491 (“‘491” hereinafter). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications is drawn to a method of making a coated abrasive article, the method comprising: providing dispensable magnetizable abrasive particles and a distribution tool, wherein the distribution tool is configured to receive the magnetizable abrasive particles therein, and wherein the distribution tool comprises a plurality of cavities configured to impart at least one of a predetermined orientation and alignment of the magnetizable abrasive particles before the magnetizable abrasive particles are transferred from the distribution tool; dispensing the magnetizable abrasive particles into the cavities of the distribution tool and applying a force F2 (or a magnetic field) to retain the magnetizable abrasive particles within the cavities; after dispensing the magnetizable abrasive particles into the cavities of the distribution tool, inverting the distribution tool such that the force F2 (or a magnetic field) retains at least some of the magnetizable abrasive particles against the force of gravity; positioning a backing adjacent to the inverted distribution tool and spaced therefrom by at least a minimum gap, wherein the minimum gap is at least as large as a maximum dimension of the magnetizable abrasive particles; and a magnet below the backing; using the magnet, applying a magnetic field to at least the backing and a portion of the gap between the backing and the distribution tool to exert a first magnetic force F1 on the magnetizable abrasive particles to influence transfer of the magnetizable abrasive particles from the cavities of the distribution tool to the backing; removing or changing the force F2 (or a magnetic field) prior to or simultaneous with transfer of the magnetizable abrasive particles from the plurality of cavities; and transferring the magnetizable abrasive particles from the distribution tool to a first major surface of the backing, wherein the magnetic field is applied during the transfer of the magnetizable abrasive particles; and at least partially curing a make layer precursor disposed on the backing; disposing a size layer precursor on at least a portion of the at least partially cured make layer precursor; and at least partially curing the size layer precursor.
Response to Arguments
Applicant's arguments filed 06/17/2026 have been fully considered but they are not persuasive.
Applicant discusses that a terminal disclaimer is submitted (see Applicant’s arguments at page 7, section double patenting rejection).
Examiner acknowledges the arguments and respectfully notes that the terminal disclaimer submitted on 06/17/2026 is disapproved. The filing date listed in the terminal disclaimer uses the PCT filing date, instead of the provisional application filing date.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is 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, Amber R Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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