DETAILED ACTION
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 4-7, 9, 10, 14, and 21-23 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “deriving a first hydrocarbon mixture from the air sample, the first hydrocarbon mixture comprising hydrocarbons”. The terms “deriving is not clearly defined in the claim or specification and therefore is indefinite.
Claim 20 depends from a canceled claim and is therefore indefinite.
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, 2, 4-7, 9, 10, 14, 16-18, 20-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 11,371,162. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims disclose a process having steps similar to the steps recited in the presently claimed process. The conflicting claims recite additional steps which are not recited the presently claimed process, however, the presently claimed process does not exclude these steps.
Claims 1, 2, 4-7, 9, 10, 14, 16-18, 20-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,585,012. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims disclose a process having steps similar to the steps recited in the presently claimed process. The conflicting claims recite additional steps which are not recited the presently claimed process, however, the presently claimed process does not exclude these steps.
Claims 1, 2, 4-7, 9, 10, 14, 16-18, 20-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,585,011. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims disclose a process having steps similar to the steps recited in the presently claimed process. The conflicting claims recite additional steps which are not recited the presently claimed process, however, the presently claimed process does not exclude these steps.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Krol. Et al. (Monitoring VOCs in atmospheric air II. Sample collection and preparation; Trends in Analytical Chemistry, Vol. 29, No. 9, 2010)
Comley; (New approaches to sample identification tracking and technologies for maintaining the quality of stored samples; Drug Discovery World Summer 2017)
Vinc (U.S. Pub. No. 2021/0285127)
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/GUINEVER S GREGORIO/Primary Examiner, Art Unit 1732 01/09/2026
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