DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments
The amendment, filed on 15 October 2025, is acknowledged.
Status of Claims
Claims 1, 9, and 16 have been amended.
Claims 16-20 were previously withdrawn from consideration as being drawn to a nonelected invention in the Non-Final Office Action mailed on 6 August 2025.
Claims 1-15 are pending and under consideration in the instant Office Action, to the extent of the following previously elected species:
the at least one reducing agent is sodium metabisulfite;
the at least one clay compound is bentonite; and
the at least one solvent is water.
NOTE: In the first para. of pg. 6 of the remarks filed on 15 October 2025, Applicant states that “Claims 1, 9, and 10 are amended herein”. Claims 1, 9, and 16 have been amended, and the comment regarding claim 10, rather than claim 16, above is considered to be a typo.
Rejections Withdrawn
Rejections pursuant to 35 U.S.C. § 103
The rejection of claims 1-15 under 35 U.S.C. § 103 over Cannell et al. (U.S. Patent No. 7,981,403 B2, published on 19 July 2011, provided by Applicant in IDS) in view of Hosterman et al. (Bentonite and Fuller’s Earth Resources of the United States, USGS Professional Paper 1522, 1992) and over Elsen-Wahrer et al. (U.S. Patent No. 10,328,009 B1, published on 25 June 2019) are withdrawn in view of Applicant’s amendments to claims 1 and 9 and in favor of the new grounds of rejection below.
Double Patenting Rejections
The nonstatutory double patenting rejections of claims 1-15 over copending Applications 18/084,402, 18/084,403, and 18/084,404 have been withdrawn in view of Applicant’s amendments to claims 1 and 9 and in favor of the new grounds of rejection below.
New Grounds of Rejection
Claim Rejections - 35 USC § 112
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.
Claims 1-15 are 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 claims 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 inventors, at the time the application was filed, had possession of the claimed invention.
Claims 1 and 9 were amended to recite “wherein the composition is free of oxidizing agents”. In the first para. of pg. 6 of the remarks filed on 15 October 2025, Applicant states that support for the amendments may be found in paragraphs [0012] and [0029] of the specification. Para. [0029] does not disclose “oxidizing agent(s)” and para. [0012] recites “the compositions are free or essentially free of various components such as cationic surfactants, antioxidants, ascorbic acid, persulfates, peroxides, and/or ammonia”. While persulfates and peroxides are two genera of known oxidizing agents, there is insufficient written support in the original disclosure for the exclusion of all oxidizing agents. Para. [0074] provides the clearest support for the exclusion of some elements, reciting “in at least some embodiments, the compositions are free or essentially free of persulfates, peroxides, and/or ammonia”.
Claims 1 and 9 are therefore rejected for containing subject matter which was not described in the specification at the time the application was filed. Claims 2-8 depend from claim 1, claims 10-15 depend from claim 9, and none resolve the issues with claims 1 and 9, therefore claims 2-8 and 10-15 are also rejected for introducing new matter.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Elsen-Wahrer et al. (U.S. Patent No. 10,328,009 B1, published on 25 June 2019, hereafter referred to as Elsen-Wahrer).
Elsen-Wahrer teaches a “pre-color treatment” composition applied to hair prior to color treatment, which is interpreted as being equivalent to the hair-color removing composition of the instant application, that comprises metal salts of organic or inorganic acids and antioxidants and methods of its use (Abstract). The composition comprises 0.5-20.0% w/w of one or more metal salts of an inorganic acid, 0.5-20.0% w/w of one or more metal salts of an organic acid, and 0.5-30.0% w/w of one or more antioxidants, with the antioxidant being sodium metabisulfite in one embodiment (claim 27, column 5, line 57 - column 6, line 3, and column 11, line 63 - column 12, line 18). The composition further comprises “one or more of a thickening agent, a cationic agent, a surfactant, a silicone, and a cosmetically acceptable solvent” (claim 29). The thickening agent is taught to be present in a range from 0.1-20.0% by weight and in one embodiment may be a clay such as bentonite (column 20, lines 34-54). The respective ranges of antioxidants and thickening agents allow for relative ratios of 1:1, 5:1, or greater than 5:1. The surfactant of the composition is taught to be chosen from cationic, anionic, non-ionic, and/or amphoteric/zwitterionic surfactants (column 20, lines 20-22). Finally, the cosmetically acceptable solvent is taught to include “water or a mixture of water and at least one cosmetically acceptable organic solvent” (column 19, lines 44-49) and does not contain an oxidizing agent.
Guidelines on the obviousness of similar and overlapping ranges, amounts, and proportions are provided in MPEP § 2144.05. With respect to claimed ranges which “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). These guidelines apply to the amounts of reducing agents and clay compounds and the relative ratios of the two components. In each case, the ranges taught by Elsen-Wahrer either fall within or completely encompass the ranges recited in the instant application.
Although “picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference...has no place in...a 102, anticipation rejection,” picking and choosing may be entirely proper in an obviousness rejection. In re Arkley, 455 F.2d 586, 587 (CCPA 1972). Addressing the issue of obviousness, the Supreme Court noted that analysis under 35 U.S.C. 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ” (KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007)). The Court further emphasized that “[a] person of ordinary skill is…a person of ordinary creativity, not an automaton” (Id. at 1742).
The only difference between Elsen-Wahrer and the instant claims is that Elsen-Wahrer does not teach the specific combination of components as claimed in a single embodiment (e.g., fails to explicitly teach one hair pre-treatment composition to comprise sodium metabisulfite and bentonite), or with sufficient specificity to be anticipatory. The specific combination of features claimed is disclosed within the teaching of Elsen-Wahrer, but such “picking and choosing” within several variables does not necessarily give rise to anticipation. Where, as here, the reference does not provide any explicit motivation to select this specific combination of variables, anticipation cannot be found. However, it must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” See MPEP § 2141.I. Consistent with this reasoning, it would have been prima facie obvious to a person having ordinary skill in the art, prior to the effective filing date of the instant application, to have selected various combinations of the various disclosed ingredients from within the teachings of Elsen-Wahrer, to arrive at an invention such as the one being sought.
Response to Arguments
The Applicant’s arguments, filed on 15 October 2025, have been fully considered but are not persuasive.
Applicant argues in para. 2 of pg. 8 that the Elsen-Wahrer reference does not teach a hair-removal composition that is free of oxidizing agents and teaches a “hair coloring composition with oxidizing agents such as peroxides or persulfates”. Regarding the first argument, the Examiner respectfully disagrees and directs the Applicant to claims 27 and 29, which are drawn to a “pre-color treatment” – a treatment that is applied “prior to artificially coloring hair” (Abstract), is distinct from the coloring composition (column 7, lines 20-45 and column 38, lines 27-30), and was previously stated to be interpreted as being equivalent to the hair-color removing composition in the instant invention (vide supra). As taught in Example 1 and claims 27 and 29 of Elsen-Wahrer, the pre-color composition does not contain the oxidizing agents peroxides or persulfates, nor does it contain ammonia. “[A] reference need not state a feature’s absence in order to disclose a negative limitation.”; Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1004–05 (Fed. Cir. 2009). Regarding Applicant’s second argument, the inclusion of peroxides or persulfates in the coloring composition is considered irrelevant, as the composition is separate from the pre-color treatment.
Applicant also argues that “nothing in Elsen-Wahrer suggests selecting the various combination of the various disclosed ingredients disclosed in Elsen-Wahrer to arrive at the recited components of the claimed compositions”. This argument is found unpersuasive because the each of the claimed ingredients were known in the art, at the time of filing, were taught by the Elsen-Wahrer reference to be used for a similar/identical purpose, and their combination does not produce unexpected results. In the KSR decision, the Supreme Court wrote ““[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR at 417, 82 USPQ2d at 1395-96. See MPEP § 2141.I. “When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, [35 U.S.C.] § 103 likely bars its patentability.” Id. at 417, 82 USPQ2d at 1396. “When considering obviousness of a combination of known elements, the operative question is thus ‘whether the improvement is more than the predictable use of prior art elements according to their established functions.’ Id.” Because the prior art elements elected by the Applicant are performing the same function they have been known to perform and do not yield an improvement that an ordinary artisan would not expect from such a combination, it is still considered obvious.
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 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-9 of copending Application No. 18/084,402 in view of Elsen-Wahrer (U.S. Patent No. 10,328,009 B1, published on 25 June 2019).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 18/084,402 recites a hair-color removing composition comprising at least one reducing agent, which may be sulfur-based, at least one cyclodextrin compound, and at least one solvent, which in some embodiments is water (claim 1 and 9). The sulfur-based reducing agent is recited to be chosen from sulfites and bisulfites, may be sodium metabisulfite, and is present in an amount from 1-15% by weight (claims 2-4). The cyclodextrin is recited as comprising 1-15% by weight of the composition and the ratio of the reducing agents: cyclodextrin compounds is from 1:1 to 5:1 (claims 6-7). Finally, ‘402 recites the composition to comprise “at least one surfactant chosen from anionic surfactants, non-ionic surfactants, amphoteric/zwitterionic surfactants, or combinations of two or more thereof” (claim 8) and does not recite the inclusion of any oxidizing agents.
Copending Application No. 18/084,402 does not recite the composition to comprise the clay compound bentonite. This deficiency is offset by the teachings of Elsen-Wahrer.
Elsen-Wahrer has been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, in view of the teachings of Elsen-Wahrer, to use bentonite as a thickening agent in the invention recited by copending Application No. 18/084,402 because simple combination of elements known in the prior art in similar inventions produces predictable results. Copending Application ‘402 recites a hair composition comprising a reducing agent, which may be sodium metabisulfite, present in an amount of 1-15% by weight, at least one cyclodextrin compound, a solvent that in one embodiment may be water, and at least one surfactant. The ordinary artisan would find it obvious to use bentonite as thickening agent in view of the teachings of Elsen-Wahrer because Elsen-Wahrer teaches a similar hair-color removing composition mixture containing sodium metabisulfite as reducing agent, a surfactant, and water, and further containing a thickening agent in amounts from 0.1-20% w/w. The person of ordinary skill would be motivated to try using bentonite as the thickening agent because Elsen-Wahrer teaches it to be suitable for use in hair treatments that remove color. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-15 in view of the invention recited in claims 1-4 and 6-9 of copending Application No. 18/804,402 and in view of the teachings of Elsen-Wahrer.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7, and 9 of copending Application No. 18/084,403 in view of Elsen-Wahrer (U.S. Patent No. 10,328,009 B1, published on 25 June 2019).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 18/084,403 recites a hair composition comprising at least one reducing agent chosen from glutaric acid, glyoxylic acid, thiolactic acid, thioglycolic acid, and/or glycolic acid, optionally one or more amine compounds, and at least one solvent, which in one embodiment may be water (claims 1 and 9). The total amount of reducing agents is recited to be 1-20% by weight and the total amount of amine compounds, if present, is recited to be 0.1-20.0% by weight (claims 2 and 5). Finally, ‘403 recites the composition to comprise one or more thickening agents, clay compounds, and surfactants, the latter genus including anionic, non-ionic, and amphoteric/zwitterionic surfactants (claim 7) and does not recite the composition to comprise an oxidizing agent.
Copending Application No. 18/084,403 does not recite the specific clay compound bentonite, the reducing agent to be sodium metabisulfite, nor the ratio of reducing agent to clay compound. These deficiencies are offset by the teachings of Elsen-Wahrer.
Elsen-Wahrer has been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, in view of the teachings of Elsen-Wahrer, to use bentonite as a filler and sodium metabisulfite as a reducing agent in the invention recited by copending Application No. 18/084,403 because simple combination or substitution of elements known in the prior art in similar inventions produces predictable results. Copending Application ‘403 recites a hair composition comprising a reducing agent, present in an amount of 1-20% by weight, a solvent that in one embodiment may be water, and at least one surfactant and/or clay compound. The ordinary artisan would find it obvious to substitute sodium metabisulfite as the reducing agent in view of the teachings of Elsen-Wahrer because the reference teaches the molecule to be an acceptable reducing agent for use in hair treatments in the same group as thioglycolate salts, thiolactic acid, glyoxylate salts, and glycolate salts and teaches them to be present in a range that encompasses the range recited by ‘403. The ordinary artisan would find it obvious to select bentonite as the clay compound in view of the teachings of Elsen-Wahrer because Elsen-Wahrer teaches it to be suitable for use in hair treatments that remove color in amounts of 0.1-20% w/w. When sodium metabisulfite is used as a reducing agent and is present in an amount from 1-20% by weight, as recited in ‘403, the sodium metabisulfite: bentonite ratio may be from 1:1 to 5:1. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-15 in view of the invention recited in claims 1-2, 5, 7, and 9 of copending Application No. 18/804,403 and in view of the teachings of Elsen-Wahrer.
Claims 1-15 are directed to an invention not patentably distinct from claims 1-2, 5, 7, and 9 of commonly assigned copending Application No. 18/084,403 in view of the teachings of Elsen-Wahrer. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application No. 18/084,403, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 8, and 10 of copending Application No. 18/084,404 in view of Elsen-Wahrer (U.S. Patent No. 10,328,009 B1, published on 25 June 2019).
This is a provisional nonstatutory double patenting rejection.
Copending Application No. 18/084,404 recites a hair composition comprising at least one reducing agent chosen from glutaric acid, glyoxylic acid, thiolactic acid, thioglycolic acid, glycolic acid, and/or citric acid, at least one amino acid, optionally one or more amine compounds, and at least one solvent, which in one embodiment may be water (claims 1 and 10). The total amount of reducing agents is recited to be 1-20% by weight of the composition and, when present, the one or more amine compounds are present in an amount of 0.1-20.0% by weight of the composition (claims 2 and 6). Finally, ‘404 recites the composition to comprise one or more thickening agents, clay compounds, and surfactants, the latter genus including anionic, non-ionic, and amphoteric/zwitterionic surfactants (claim 8) and does not recite the composition to comprise an oxidizing agent.
Copending Application No. 18/084,404 does not recite the clay compound to be bentonite, the reducing agent to be sodium metabisulfite, nor the ratio of reducing agent to clay compound. These deficiencies are offset by the teachings of Elsen-Wahrer.
Elsen-Wahrer has been described above.
It would have been prima facie obvious to a person of ordinary skill in the art, in view of the teachings of Elsen-Wahrer, to choose bentonite as the clay compound and substitute sodium metabisulfite as the reducing agent in the invention recited by copending Application No. 18/084,404 because combining elements known in the art in similar inventions produces predictable results. Copending Application ‘404 recites a hair composition comprising a reducing agent, present in an amount of 1-20% by weight, a solvent that in one embodiment may be water, and at least one surfactant and/or clay compound. In view of the teachings of Elsen-Wahrer, an ordinary artisan would be motivated to substitute sodium metabisulfite as the reducing agent because Elsen-Wahrer teaches the molecule to be an acceptable reducing agent for use in hair treatments in the same group as thioglycolate salts, thiolactic acid, glyoxylate salts, and glycolate salts and teaches them to be present in a range that encompasses the range recited by ‘403. The ordinary artisan would also find it obvious to select bentonite as the clay compound in view of the teachings of Elsen-Wahrer because Elsen-Wahrer teaches it to be suitable for use in hair treatments that remove color in amounts of 0.1-20% w/w. When sodium metabisulfite is used as a reducing agent and is present in an amount from 1-20% by weight, as recited in ‘404, the sodium metabisulfite: bentonite ratio may be from 1:1 to 5:1. As a result, there is a reasonable expectation of success in arriving at the invention of instant claims 1-15 in view of the invention recited claims 1-2, 6, 8, and 10 of copending Application No. 18/804,404 and in view of the teachings of Elsen-Wahrer.
Claims 1-15 are directed to an invention not patentably distinct from claims 1-2, 6, 8, and 10 of commonly assigned copending Application No. 18/084,404 in view of the teachings of Elsen-Wahrer. Specifically, see above.
The U.S. Patent and Trademark Office may not institute a derivation proceeding in the absence of a timely filed petition. The USPTO normally will not institute a derivation proceeding between applications or a patent and an application having common ownership (see 37 CFR 42.411). Commonly assigned copending Application No. 18/084,404, discussed above, may form the basis for a rejection of the noted claims under 35 U.S.C. 102 or 103 if the commonly assigned case qualifies as prior art under 35 U.S.C. 102(a)(2) and the patentably indistinct inventions were not commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention.
In order for the examiner to resolve this issue the applicant or patent owner can provide a statement under 35 U.S.C. 102(b)(2)(C) and 37 CFR 1.104(c)(4)(i) to the effect that the subject matter and the claimed invention, not later than the effective filing date of the claimed invention, were owned by the same person or subject to an obligation of assignment to the same person. Alternatively, the applicant or patent owner can provide a statement under 35 U.S.C. 102(c) and 37 CFR 1.104(c)(4)(ii) to the effect that the subject matter was developed and the claimed invention was made by or on behalf of one or more parties to a joint research agreement that was in effect on or before the effective filing date of the claimed invention, and the claimed invention was made as a result of activities undertaken within the scope of the joint research agreement; the application must also be amended to disclose the names of the parties to the joint research agreement.
A showing that the inventions were commonly owned or deemed to be commonly owned not later than the effective filing date under 35 U.S.C. 100(i) of the claimed invention will preclude a rejection under 35 U.S.C. 102 or 103 based upon the commonly assigned case. Alternatively, applicant may take action to amend or cancel claims such that the applications, or the patent and the application, no longer contain claims directed to patentably indistinct inventions.
Response to Remarks
In para. 3 of pg. 6. of the remarks filed on 15 October 2025, Applicant “respectfully requests that [the nonstatutory double patenting rejections] be held in abeyance until allowable subject matter is indicated. Applicant will consider the propriety of filing a Terminal Disclaimer at that point it time.” A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
Conclusion
No claims are allowed.
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 Sean J. Steinke, whose telephone number is (571) 272-3396. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/S.J.S./
Examiner, Art Unit 1619
/DAVID J BLANCHARD/Supervisory Patent Examiner, Art Unit 1619