Final Rejection
Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Response to Amendment
The amendment filed 3 November 2025 is sufficient to overcome the rejections 35 U.S.C. 112(a) and (b).
Terminal Disclaimer
The Terminal Disclaimers filed 31 July 2025 are disapproved for the following reasons:
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimers (i.e., Rimere, LLC) is not the applicant of record.
To remedy this: A request under 37 CFR 1.46(c) to change the applicant needs to be filed, which is (1) a request, signed by a 1.33(b) party, (2) a corrected ADS (37 CFR 1.76(c)) that identifies the “new” applicant in the applicant information (amendment is underlined since it is new), and (3) a 3.73(c) statement showing chain of title to the new applicant.
Along with the § 1.46(c) request, a new power of attorney giving naming the attorney who is signing the terminal disclaimer is required, along with another copy of the terminal disclaimer, unless applicant files a terminal disclaimer signed by the applicant. Note: The applicant cited on the terminal disclaimer must be cited exactly as it is cited on the ADS and/or filing receipt and also in its entirety. If more space for the applicant section is required, please use a smaller font or submit an attachment page to the terminal disclaimer. No new fee is required upon submission of the new terminal disclaimer.
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 28-30, 32-46, 48-53, and 55-57 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-63 of U.S. Patent No. RE50464 in view of WO 00/43102 to Raybone et al. (hereinafter Raybone).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are the same inventive concept, rendering obvious the instant claims. Namely a plasma device having a reaction zone created by pairs of electrodes coaxially aligned within an outer housing with the zones in series are claimed by both the instant application and the related reissued patent. The devices also include a microwave or magnetic field generator directing a magnetic field or microwaves at a reaction zone and differently sized conductive projections for precipitating particulates having different properties.
Furthermore, the claims of RE50464 are directed to the same inventive configuration of a plasma device fully capable of use in the method of claims 28-30, 32-45, and 55-57 but do not specify the treatment of a hydrocarbon stream. Raybone teaches a method of reforming ICE exhaust gases containing HC, carbonaceous particulates and NOx, wherein a stream is directed through various plasma reaction zones. It would have been obvious to treat a hydrocarbon stream of the instant claims using the plasma device of RE50464 as Raybone teaches such plasma treatment would be effectively achieved with the system and would provide a hydrogen rich product while minimizing residual pollutant production.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to
timely apprise the Office of any prior or concurrent proceeding in which Patent No.
10,293,303 is or was involved. These proceedings would include any trial before the
Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental
examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to
timely apprise the Office of any information which is material to patentability of the
claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and
prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and
1442.04.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be
obtained from Patent Center. Unpublished application information in Patent Center is
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 about Patent Center and https://www.uspto.gov/patents/docx for
information about filing 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 Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or
571-272-1000.
/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991