DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
As previously set forth: Claims 13-15, 37-42, 44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group/species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/12/26.
Priority
As previously set forth: The claims have an effective date of the filing of the provisional application: 2/11/20
Response to Arguments
Applicant argues the statements of common ownership overcome the 102 and 103 rejections.
The Examiner agrees, and withdraws those rejections
Applicant argues the ODP rejections should be held in abeyance. Applicant argues the greater than 35 mol% is not met by ‘522 nor are claims 12 and 36 met by ‘516
The Examiner disagrees. As previously set forth: Claims 1 and 42 of ‘522, wherein claim 42 discloses the use of 50-80 wt% ethylene, embraces the instantly claimed “greater than 35 mol% ethylene” of instant claim 1 in ‘522. Since the composition requirements of claim 1 are embraced by ‘522 the properties of claim 36 are deemed to be embraced. Further, as previously put forth in the ODP rejection below the structure of claim 2 of ‘516 meets instant claim 12 and the solution process of claim 32 of ‘516 meets instant claim 32. Arguments drawn to the ODP are thusly not persuasive.
Claim Objections
Objection over Claim 10 is overcome by amendment.
Claim Rejections - 35 USC § 112
Rejection over Claim 8, and its dependents, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is overcome by amendment
Rejection over Claims 35, 36 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is overcome by amendment.
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
Rejection over Claim(s) 1-5, 8-10, 12, 16, 23, 32, 35, 36 under 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Goryunov (US 11203654, the citations below have support of the provisional filed 2/12/19) is overcome by the statement of common ownership in the response filed 6/29/26.
Rejection over Claim(s) 1-5, 8-10, 12, 16, 23, 32, 35, 36 under 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Goryunov (US 11254763, the citations below have support of the provisional filed 2/12/19) is overcome by the statement of common ownership in the response filed 6/29/26.
Rejection over Claim(s) 1, 3-5, 8-10, 12, 16, 32, 35, 36 under 35 U.S.C. 103 as obvious over Goryunov (US 11248070, wherein provisional application dated 2/12/19 supports those citations used below to reject the claims) is overcome by the statement of common ownership in the response filed 6/29/26.
Rejection over Claim(s) 1, 3-5, 8-10, 12, 16, 32, 35, 36 under 35 U.S.C. 103 as obvious over Goryunov (US 11214634, wherein provisional application dated 2/12/19 supports those citations used below to reject the claims) is overcome by the statement of common ownership in the response filed 6/29/26.
Rejection over Claim(s) 1-5, 8-10, 12, 16, 23, 32, 35, 36 under 35 U.S.C. 102(a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Harlan (US 11225539, the citations below have support of the provisional filed 2/12/19) is overcome by the statement of common ownership in the response filed 6/29/26.
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 1-5, 8-10, 12, 16, 23, 35, 36, 45-46 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 32, 42 of copending Application No. 17796522 (reference application).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. New claims 45-46 are met by the structure of claim 1 of ‘522
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 42 of ‘522 meet instant claims 1-5, 8-10, 12, 16, 23, 35, 36, claim 32 of ‘522 meets instant claim 32.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5, 8-10, 12, 16, 23, 32, 35, 36, 45-46 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 23, 32, 42 of copending Application No. 17796516 (reference application).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. New claims 45-46 are met by the structure of claims 1, 3, 23 of ‘516
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘516 meets instant claim 1, claim 3 of ‘516 meets instant claim 2, claim 23 of ‘516 meets instant claims 3-5, 8-10, 12, 16, 23, claim 32 of ‘516 meets instant claim 32 and claim 42 of ‘516 meets instant claims 35, 36.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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