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 .
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 1-7 and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,305,063 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
US ‘063 claims a polymerizable composition (see claim 3 of US ‘063) comprising a fluorinated monomer and a fluorinated coupling agent (see base claims 2 and 1 of US ‘063) comprising a (meth)acryl terminal group (see moiety R11 in the formulas in claim 1 of US ‘063), terminal silane comprising hydrolysable groups (see the right-most portion of the formulas in claim 1 of US ‘063), and a perfluorooxyalkyl moiety (see the moiety Rf1 in the formulas in claim 1 of US ‘063).
Claim 3 of US ‘063 thus reads on present claim 1 in an anticipatory manner.
The further limitations of present claims 2-7 and 11 are adequately set forth in claims 1, 3-4, 7-9 of US ‘063.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2-3 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2 and 3 refer to the composition of base claim 1 and then recite limitations regarding “the free-radically polymerizable monomer, oligomer, or combination thereof”.
Base claim 1 does not recite a “free-radically polymerizable” monomer or oligomer, and therefore the reference to “the free-radically polymerizable monomer, oligomer, or combination thereof” lacks proper antecedent basis.
Claim Rejections – 35 U.S.C. § 112(d)
The following is a quotation of 35 U.S.C. § 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. § 112(d) as being of improper dependent form for failing to further limit the subject matter of a previous claim.
Claim 2 refers to the composition of base claim 1 and then recites the limitation that “the free-radically polymerizable monomer, oligomer, or combination thereof is fluorinated.”
Base claim 1 recites “a fluorinated monomer, oligomer, or mixture thereof”.
Because the monomer or oligomer of base claim 1 is fluorinated, the limitation in claim 2 regarding a monomer or oligomer being fluorinated does not then specify a further limitation of the subject matter claimed in base claim 1. Claim 2 therefore fails to comply with the first sentence of 35 U.S.C. § 112(d).
Claim Objections
Claims 2-3 are objected to because of the following informalities.
Claims 2-3 refer to “the free-radically polymerizable monomer, oligomer, or combination thereof” (emphasis added), whereas their base claim 1 refers to a “mixture thereof”.
Appropriate correction is required.
Allowable Subject Matter
Claims 8-10 are objected to as being dependent upon a rejected base claim, but they would be allowable if written in independent form.
Claims 12-20 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD A. HUHN whose telephone number is (571)270-7345. The examiner can normally be reached Monday through Friday, 9 AM to 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD A. HUHN/Primary Examiner, Art Unit 1764