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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12256767. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘767 patent recites the following claims:
1. A gardenia blue pigment, wherein, when prepared as a solution with a color value E.sup.10%.sub.1 cm of 0.1 by diluting with water, the gardenia blue pigment has an L* value of 66 or more and an a* value of −24 or less in the Lab color space.
2. The gardenia blue pigment according to claim 1, wherein, when prepared as a solution with a color value E.sup.10%.sub.1 cm of 0.1 by diluting with water, the gardenia blue pigment has a b* value of −30 or more in the Lab color space.
3. The gardenia blue pigment according to claim 1, wherein, when the gardenia blue pigment is subjected to operations as set forth in (1) to (3) below, a color difference ΔE*.sub.ab between solution A heat-treated at 90° C. for 15 minutes and solution B not heat-treated is 3.5 or less, and solution A heat-treated at 90° C. for 15 minutes has an L* value of 64 or more, an a* value of −14 or less, and a b* value of −31 or more: the operations comprising: (1) a preparation step, wherein the gardenia blue pigment is diluted with 0.1 M citrate buffer at pH 2.5 to prepare solution A with a color value E.sup.10%.sub.1 cm of 0.1; separately, the gardenia blue pigment is diluted with 0.1 M citrate buffer at pH 6.0 to prepare solution B with a color value E.sup.10%.sub.1 cm of 0.1; (2) a heat-treatment of the solutions step wherein solution A is heat-treated at 90° C. for 15 minutes; solution B is not heat-treated; (3) a measurement of color tone step wherein for solution A heat-treated at 90° C. for 15 minutes and solution B not heat-treated, the L* value, the a* value, and the b* value in the Lab color space are measured.
4. The gardenia blue pigment according to claim 1, wherein a maximum absorption wavelength is present in a range of 604 nm or more.
Claims 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 U.S. Patent No. 12258478. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘478 patent recites the following claim:
1. A gardenia blue pigment, wherein, when the gardenia blue pigment is subjected to operations as set forth in (1) to (3) below, a color difference ΔE′.sub.ab between solution A heat-treated at 90° C. for 15 minutes and solution B not heat-treated is 3.5 or less, and solution A heat treated at 90° C. for 15 minutes has an L* value of 64 or more, an a* value of −14 or less, and a b* value of −31 or more: wherein the operations comprise: (1) a preparation step, wherein the gardenia blue pigment is diluted with 0.1 M citrate buffer at pH 2.5 to prepare solution A with a color value E.sup.10%.sub.1 cm of 0.1; separately, the gardenia blue pigment is diluted with 0.1 M citrate buffer at pH 6.0 to prepare solution B with a color value E.sup.10%.sub.1 cm of 0.1; (2) a heat-treatment of the solutions step, wherein solution A is heat-treated at 90° C. for 15 minutes; solution B is not heat-treated; (3) a measurement of color tone step, wherein for solution A heat treated at 90° C. for 15 minutes and solution B not heat-treated, the L* value, the a* value, and the b* value in the Lab color space are measured.
Response to Arguments
Applicant’s arguments, see p.4-6, filed 11/25/2025, with respect to claims 1-4 have been fully considered and are persuasive. The 103 rejections of claims 1-4 have been withdrawn. However, the double patenting rejection still remains of record.
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 KATHERINE D LEBLANC whose telephone number is (571)270-1136. The examiner can normally be reached 8AM-4PM EST M-F.
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/KATHERINE D LEBLANC/Primary Examiner, Art Unit 1791