DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/30/2026 has been entered.
3. Applicant's amendment and remarks filed on 01/30/2026 are acknowledged.
Claims 1-9, 15-20, 22, 24 and 28-32 are pending.
4. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-9, 15-20, 22, 24 and 28-32 stand rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the following U.S. Patents (all of record):
9434785,
9512229,
9868789,
9868790,
9139653,
9587030,
10654935,
11396550,
11753479,
11773175, and
11779604.
Claims 1-9, 15-20, 22, 24 and 28-32 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the following copending applications (all of record):
USSN 17/818397 (US PG Pub. No. 20230235069),
USSN 18/364906 (US PG Pub. No. 20240132605),
USSN 18/459995 (US PG Pub. No. 20240122985), and
USSN 19/030346 (US PG Pub. No. 20250263492).
The grounds of rejection presented in Sections 4-7 of the previous Office action (dated 10/30/2025) are maintained for the reasons of record, and are incorporated by reference herein as if reiterated in full.
Regarding US Patents No. 9434785, 9512229, 9868789 and 9868790, “Applicant will consider the merits of filing a Terminal Disclaimer over the '785 patent, the '229, the '789 patent, and the '790 patent once the subject claims are otherwise indicated to be in condition for allowance.” (p. 8 of the Remarks)
Regarding all other US Patents and all copending applications referenced above, Applicant’s arguments have been fully considered but have not been found convincing.
Applicant alleges that the referenced patents and applications do not qualify as proper nonstatutory double patenting references over the subject application, because the Office has not sufficiently established that the instant claims, if granted, would effectively extend the life of the reference patents, or patents issuing from the referenced copending applications. Applicant cites PTAB decisions in Ex Parte NICOLAS BAURIN, 11-04-2024 and 12-08-2025, in support of the stated position.
In response, Applicant's reliance on Ex parte Baurin is ineffective in overcoming the rejections of record, at least because the decision is not precedential AND is not consistent with MPEP 804.02.
MPEP 804 does not instruct examiners to predict the expiration date of a patent that may issue from an application as a basis for making a double patenting rejection. Such prediction would not be possible, because determinations of patent term adjustments and extensions are not made during examination. The Examiner has no authority to disqualify a double patenting reference having conflicting claims and a common assignee and/or inventor based on applicant’s asserted expiration date analysis.
Importantly, the “risk of separate ownership” is one of the two public policy concerns underlying nonstatutory double patenting doctrine, as evidenced by MPEP 804.02(IV): ‘Each one of the commonly owned conflicting nonstatutory double patenting references must be included in the terminal disclaimer to avoid the problem of dual ownership of patents to patentably indistinct inventions in the event that the patent issuing from the application being examined ceases to be commonly owned with any one of the double patenting references that have issued or may issue as a patent. Note that 37 CFR 1.321(c)(3) requires that a terminal disclaimer for commonly owned conflicting claims “[i]nclude a provision that any patent granted on that application or any patent subject to the reexamination proceeding shall be enforceable only for and during such period that said patent is commonly owned with the application or patent which formed the basis for the judicially created double patenting.”’
Accordingly, the rejections are maintained.
6. Conclusion: no claim is allowed.
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ILIA I OUSPENSKI whose telephone number is (571)272-2920. The examiner can normally be reached 9 AM - 5:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julie Wu can be reached at 571-272-5205. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ILIA I OUSPENSKI/ Primary Examiner, Art Unit 1644