DETAILED ACTION
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 18, 48-50, 52-56, and 58-61 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7 and 8 of U.S. Patent No. 12,344,709. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims a polymer comprising the structure:
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, which reads on the claimed structure of Formula 4 since the definition of A1 and A2 in the patent overlap the definition of A1 and A2 in the instant claims and R2 can be an alkyl group, alkenyl group, cycloalkyl group, or a cycloalkenyl group in the patent, which means that the limitation “wherein each nitrogen in group A1 and A2 containing R2 substituents is a tertiary amine, with the exception that the terminal amine can be a primary, secondary, or tertiary amine” can be met. Further, the definition of B1 and B2 in the patent overlap with the claimed “X2” groups since in the instant claims, X1 can be -C(O)NR13-, as is the case in the patent, and the definition of B1 and B2 in the patent overlaps with the case where the instant X2 is a C1-C12 heteroalkyl group. All other variables are defined the same as or in an overlapping manner in the patent and the instant claims. This structure reads specifically on claims 18, 50, 52, 53, of the instant. Claim 2 of the patent overlaps in scope with claim 55 of the instant. The polymer of claim 3 in the patent overlaps in scope for the same reason set forth above with the polymer of the instant claims 48, 56, 58, 59, 60 and 61. Claim 7 in the patent overlaps in scope with claim 49 of the instant. Claim 54 of the instant overlaps in scope with claim 8 of the patent.
Claims 18 and 50-55 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 68 of copending Application No. 17/921,016 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application in claim 68 claims a polymer having the structure:
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where A1 overlaps the claimed A1 and X2 is alkyl, heteroalkyl, cycloalkyl, alkenyl, cycloalkenyl, aryl, or heterocyclic groups, as in the instant claims. All other variables are defined the same as or in an overlapping manner in the patent and the instant claims. This structure reads specifically on claims 18, 50, 51, 52, 53, 54, and 55.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 18 and 50-55 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of copending Application No. 17/614,307 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims in claim 17 a polymer having the structure:
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where E1 and E2 read on A1 and A2 of the instant claims and have overlapping definitions. Further, X1 and X2 have overlapping definitions of the instant X1 and X2. All other variables are defined the same as or in an overlapping manner in the patent and the instant claims. This reads on instant claims 18, 50, 51, 52, 53, 54, and 55.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed September 18, 2025 have been fully considered.
The amendment overcomes the previous claim objections and 112(b) rejections. Further, the amendment overcomes the art rejection over Satchi-Fainaro et al. (US 2018/0318428). However, the amendment introduces additional double patenting rejections as set forth above.
Allowable Subject Matter
Claims 57 and 62 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Satchi-Fainaro et al. is the closest prior art as set forth in the previous action. However, the reference does not teach the limitation “wherein each nitrogen in group A1 and A2 containing R2 substituents is a tertiary amine, with the exception that the terminal amine can be a primary, secondary, or tertiary amine”. There is no teaching or suggestion found in the prior art to combine this feature with the disclosure of Satchi-Fainaro et al.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEGAN MCCULLEY/Primary Examiner, Art Unit 1767
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