CTFR 17/904,999 CTFR 88639 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims 1-11, 13-20 are pending. Claims 1-11, 13-15, 19 and 20 are under examination on the merits. Claims 1, 7, 8, 16 and 18 are amended. Claim 12 is previously canceled. Claim 21 is newly canceled. No claims are newly added. Election/Restrictions Applicant’s election of Group I claims 1-11, 13-15, 19 and 20 from 12/11/25 is noted herein for reference. Double Patenting 08-33 AIA 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. The provisional rejection in the previous action of claims 1, 2 and 15 on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 17/904,986 (reference application) is repeated and amended to reflect applicant’s amendment: Although the claims at issue are not identical, they are not patentably distinct from each other. Copending claim 20 describes anion exchange membranes which “each have the same colour and/or depth of shade” and cation exchange membranes which “each have the same colour and/or depth of shade”. This is different wording than instant claim 1’s “colour properties…are substantially homogeneous”; however to ascribe a single color and/or depth of shade to each of the cation (or anion) exchange membranes is for them to have “substantial homogeneity”. Otherwise, the copending is narrower than claim 1 as it requires both the anion exchange membranes and the cationic exchange membranes to have corresponding color; instant claim 1 allows for either or both. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). For instant claim 2, copending claim 20 depends from copending claim 1 which describes a colored photoinitiator, i.e. a dye. The definition of a dye is any colored material that is able to color substances to which it is applied. Furthermore claim 15 does use the same language as copending claim 20 (“each have the same colour and/or depth of shade…”), supporting the argument that copending claim 20 is narrower than instant claim 1. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. The rejection in the previous action of claims 1, 2 and 15 on the ground of nonstatutory double patenting as being unpatentable over claim 24 of application 17904992 is amended directly below to reflect the newly patented status of the copending claims and alteration to the instant claims. Claims 1, 2 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23 of U.S. Patent No. 12515213. Although the claims at issue are not identical, they are not patentably distinct from each other. Patented claim 23 describes anion exchange membranes which “each have the same colour and/or depth of shade as each other” and “a different colour and/or depth of shade from the cationic membranes”. This is different wording than instant claim 1’s “colour properties…are substantially homogeneous”; however to ascribe a single color and/or depth of shade to each of the anion exchange membranes is for them to have “substantial homogeneity”. Furthermore instant claim 15 does use the same wording as patented claim 24 and depends on claim 1; for this to be proper dependency the wording found in both patented claim 24 and instant claim 15 must be more specific than that of instant claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). For instant claim 2, patented claim 23 depends from patent claim 1 which describes a colored photoinitiator, i.e. a dye. The definition of a dye is any colored material that is able to color substances to which it is applied. Both application number 17/904,986 and U.S. Patent No. 12515213 share a priority date with the instant application, 4/2/20. For the rejection over copending application 17/904,986, MPEP section 804B1.(b)(ii) states: 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. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. Since the copending application has the same priority date as instant, the provisional rejection cannot be withdrawn even if it is the only rejection remaining; applicant must either amend one or both the applications such that the rejection is withdrawn, abandon one or both applications, or file a terminal disclaimer in the instant application. For the double patenting rejection over U.S. Patent 12515213, since the reference has been patented, the rejection is no longer provisional and cannot be withdrawn because of 1) its patented status as well as 2) its common priority date with the instant application. In the instant application a terminal disclaimer may be filed or the claims amended such that the rejection no longer applies or the instant application may be abandoned. Claim Rejections - 35 USC § 112 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. For the purposes of compact prosecution, claim 18 is examined for compliance with 112(a). Claim 18 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 18 recites “comprising contacting the aqueous stream with the stack of ion exchange membrane in a manner to treat the aqueous stream” without support from the specification. While the specification contains more specific areas in which the ion exchange membrane is used, such a broad statement is not supported. The rejection in the previous action of claims 7 and 8 under 112(b) are withdrawn in view of applicant’s amendment to claims 7 and 8 to depend on claim 3. Claim Rejections - 35 USC § 103 The rejections in the previous action of claims 1, 2, 9, 15 under 35 U.S.C. 103 as being unpatentable over US 20190046927 by Bhikhi in view of SU1181678 by Zajtsev are withdrawn in view of applicant’s amendment. Zajtsev describes motivation to one of ordinary skill to dye part of the anion exchange membranes with one dye and part the cation exchange membranes with another, but does not describe application to either/or membrane and does not describe ubiquitous application of the dye. The rejection of claim 20 is withdrawn for the same reason. Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 3-11, 13, 14, 19 and 20 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. As previously stated, the closest art is that previously used in rejection, US 20190046927 by Bhikhi in view of SU1181678 by Zajtsev. This art is no longer applied to claims because of the narrowing of the independent claim around Zajtsev, as described above. Other dependent claims further distinguish from Zajtsev in the following manner: It is not clear that Zajtsev’s dyes act as Norrish Type II photoinitiators. Other claims pertaining to the specific hues and lightness are difficult to glean from Zajtsev’s disclosure. Response to Arguments In section II starting on p.7 of Remarks submitted 3/26/26 applicant states, in arguing against the previously set forth double patenting rejection, that other rejections have been overcome. This is not convincing because the copending application 17/904,986 has the same priority date as instant and as such cannot be withdrawn even if it is the last rejection remaining in prosecution. The double patenting rejection over the patented application which is now U.S. Patent No. 12515213 cannot be withdrawn because of its patented status; even if it were not patented it too shares a priority date with the instant application. Applicant's argument item III starting on p.8 has been considered and is persuasive. The art rejection is withdrawn. Applicant's argument item IV has been considered but is not persuasive. Since the claims under examination are not allowable, no rejoinder can be made. Furthermore, applicant should be mindful of proper support from the specification for non-elected claim 18 as well as the guidelines set forth in MPEP section 2173.05(q) regarding “use” claims. Applicant is asked to provide specific citations in the specification for the support of any amendments to claim 18. Conclusion 07-39 AIA 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 CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm. 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, Randy Gulakowski can be reached at 5712721302. 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. /CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766 Application/Control Number: 17/904,999 Page 2 Art Unit: 1766 Application/Control Number: 17/904,999 Page 3 Art Unit: 1766 Application/Control Number: 17/904,999 Page 4 Art Unit: 1766 Application/Control Number: 17/904,999 Page 5 Art Unit: 1766 Application/Control Number: 17/904,999 Page 6 Art Unit: 1766 Application/Control Number: 17/904,999 Page 7 Art Unit: 1766 Application/Control Number: 17/904,999 Page 8 Art Unit: 1766 Application/Control Number: 17/904,999 Page 9 Art Unit: 1766
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