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 .
Detailed Action
This office action is a response to applicant’s terminal disclaimer submitted March 11, 2026. This application is a continuation of PCT/JP2020/041749, filed November 9, 2020, which claims benefit of foreign application JP2019-205427, filed November 13, 2019.
Claim 4 is pending in this application.
Claim 4 as amended is examined on the merits herein.
Terminal Disclaimer
The terminal disclaimer submitted March 11, 2026, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration of any patent granted on copending US application 19/395938, is disapproved. A terminal disclaimer must clearly be signed by owners representing 100% interest in the application. In the present case, the statement of “equal undivided interest” is not sufficient for a proper terminal disclaimer. Applicant may resubmit the terminal disclaimer corrected to identify the owners as owning 100% interest. No new fees are required with such a submission.
The following rejections of record in the previous action are maintained:
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.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-7 of copending Application No. 19/395938 (reference application, unpublished, of record in previous action, herein referred to as ‘938). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘938 render claim 4 obvious.
Claims 1 and 6 of ‘938 claim s device described as a lactic acid removal device, comprising a vessel containing a solution of lactic acid and glucose and a lactic acid adsorbent which is a layered double hydroxide having the same structure and composition as that described in the process of present claim 4. Claims 5 and 7 of ‘938 further describe adding the lactic acid adsorbent to the solution, and describing the solution as a culture solution. While the claims of ‘938 do not specifically claim a process as described in present claim 4, the claims of ‘938 do specifically describe the device as having the intended utility of “a lactic acid removal device,” and describe an intended use of adding the adsorbent to the lactic acid/glucose solution. Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to operate the device claimed by ‘938 in such a manner as to infringe present claim 4, specifically by adding the layered double hydroxide adsorbent to the lactic acid containing solution. One of ordinary skill in the art would have seen the intended use recited in claims 1 and 5 of ‘938 as suggesting performing such a method using this device.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Furthermore while ‘938 is a continuation of the present applicant and the claims of ‘938 are directed to a different statutory class of invention than present claim 4, no requirement for restriction was filed in the present application. Therefore the provisions of 35 USC 121 do not apply to this rejection. Still further, while the ‘938 application is a later filed continuation of the present application, it claims benefit of the present application and has the same effective filing date. According to MPEP 804(I)(B)(1)(b)(ii), “If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome.” There is no provision for withdrawing a provisional nonstatutory double patenting rejection unless the reference claims have a patent term filing date that is later than the effective filing date of the claims under examination.
Response to Arguments: Applicant’s arguments, submitted March 11, 2026, with respect to the above ground of rejection, have been fully considered and not found to be persuasive to remove the rejection. Applicant’s argument is based on the submission of a terminal disclaimer with respect to US application 19/395938. However, as discussed above, the terminal disclaimer is disapproved and cannot serve to overcome the rejection as it stands. Therefore for the time being the rejection is maintained.
Conclusion
No claims are allowed in this action. 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 ANDREA OLSON whose telephone number is (571)272-9051. The examiner can normally be reached M-F 6am-3:00pm.
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, Scarlett Y Goon can be reached at 571-270-5241. 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.
/ANDREA OLSON/ Primary Examiner, Art Unit 1693 4/30/2026
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