DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 6/30/2026, with respect to the 35 U.S.C. 112 and 103 rejections have been fully considered and are persuasive. The rejections have been withdrawn in view of Applicant’s amendments to the claims.
The provisional Obvious-type Double Patenting rejections are maintained (with some rejections maturing in view of a patent issuing for their respective applications, as noted below) as Applicant did not substantively traverse these rejections.
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 1, 4-9, 12-17 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 and 41-42 of copending Application No. 17/844,400 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 4 and 19-20, claims 1-4, 8, 19-20 and 41-42 of copending ‘400 recite substantially similar subject matter.
Regarding instant claims 5-6, claims 3-4 of copending ‘400 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 9-10 of copending ‘400 recite substantially similar subject matter.
Regarding instant claim 9, claim 7 of copending ’400 recites substantially similar subject matter.
Regarding instant claim 12, claim 10 of copending ‘400 recites substantially similar subject matter.
Regarding instant claims 13-15, claims 11-13 of copending ‘400 recite substantially similar subject matter.
Regarding instant claim 16, claim 14 of copending ‘400 recites substantially similar subject matter.
Regarding instant claim 17, claim 18 of copending ‘400 recites substantially similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-9, 12-17 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/844,542 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1 and 20, claim 1 of copending ‘542 recites a rod having substantially similar limitations as those claimed.
Regarding instant claim 3, claims 2-3 of copending ‘542 recite substantially similar subject matter.
Regarding instant claim 4, claim 4 of copending ‘542 recites substantially similar subject matter.
Regarding instant claims 5-6, claims 5-6 of copending ‘542 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 11 and 7-8 of copending ‘542 recite substantially similar subject matter.
Regarding instant claim 9, claim 9 of copending ‘542 recites substantially similar subject matter.
Regarding instant claims 12-13, claims 12-13 of copending ‘542 recite substantially similar subject matter.
Regarding instant claims 14-17, claims 7 and 14-17 of copending ‘542 recite substantially similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4-10, 12-17 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of US Patent No. 12,359,289. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 4 and 19, claims 1, 4, and 16-18 of Patent ‘289 recite substantially similar subject matter.
Regarding instant claims 5-6, claim 4 of Patent ‘289 recites substantially similar subject matter.
Regarding instant claims 7-8, claims 7-8 of Patent ‘289 recite substantially similar subject matter.
Regarding instant claim 9, claim 8 of Patent ‘289 recites substantially similar subject matter.
Regarding instant claim 10, claim 6 of Patent ‘289 recites substantially similar subject matter.
Regarding instant claims 12-17, claims 8-12 of Patent ‘289 recite substantially similar subject matter.
Regarding instant claim 19, the device of Patent ‘289 includes a piston member (see claim 1) which rotates circumferentially during use.
Claims 1 and 3-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-16, 18-20 of US Patent No. 12,516,403. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1 and 3, claim 1 of Patent ‘403 recites a roller having substantially similar limitations as those claimed.
Regarding instant claim 4, claim 5 of Patent ‘403 recites substantially similar subject matter.
Regarding instant claims 5-6, claims 6-7 of Patent ‘403 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 10-11 of Patent ‘403 recite substantially similar subject matter.
Regarding instant claim 9, claim 13 of Patent ‘403 recites substantially similar subject matter.
Regarding instant claim 10, claim 9 of Patent ‘403 recites substantially similar subject matter.
Regarding instant claims 12-13, claims 10-11 of Patent ‘403 recite substantially similar subject matter.
Regarding instant claims 14-16, claims 15-17 of Patent ‘403 recite substantially similar subject matter.
Regarding instant claim 17, claim 4 of Patent ‘403 recites substantially similar subject matter.
Claims 1, 3-14, 16-17 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of US Patent No. 12,163,208. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 4, 10 and 19, claims 1 and 13 of Patent ‘208 recite a device including a piston member having substantially similar limitations as those claimed.
Regarding instant claim 3, claims 2-3 of Patent ‘208 recite substantially similar subject matter.
Regarding instant claims 5-6, claims 5 and 16-17 of Patent ‘208 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 4 and 21-23 of Patent ‘208 recite substantially similar subject matter.
Regarding instant claim 9, claim 14 of Patent ‘208 recites substantially similar subject matter.
Regarding instant claim 10, claims 21-23 of Patent ‘208 recite substantially similar subject matter.
Regarding instant claims 12-13, claims 16-17 of Patent ‘208 recite substantially similar subject matter.
Regarding instant claims 14 and 16, claims 11-12 of Patent ‘208 recite substantially similar subject matter.
Regarding instant claim 17, claim 10 of copending ‘616 recites substantially similar subject matter.
Regarding claim 19, the device of copending ‘616 includes a piston member (see claim 1).
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites: “…and tin, wherein wherein the at least one…”.
Claim 1 recites: “free from chromium, cadmium, lead and fluoro compounds”. The lack of an Oxford comma could suggest the last element in the list is a compound comprising lead and fluorine.
Appropriate correction is required.
Allowable Subject Matter
Claims 1, 3-10, 12-17, 19-20, and 161-162 appear to be allowable pending resolution of the Obvious-type Double Patenting rejections and the claim objections.
The following is an examiner’s statement of reasons for allowance: The prior art of record does not teach or suggest the claimed rotational device having the claimed composition and microstructure.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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