DETAILED ACTION
This Office Action is in response to the filing of the application on 3/02/2023. Since the initial filing, no claims have been amended, added, or cancelled. Thus, claims 1-20 are pending in the application.
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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claims 1-12 which are drawn to a method of altering the surface by adding and selectively removing a hydrophobic layer from a metal surface as classified in C23C 14/14 and C23C 14/5873.
Claims 13-20 which are drawn to a mesh nebulizer with channels and a reservoir, which contains structures that are made of particular materials as classified in A61M 11/005 and A61M 2205/0238.
The inventions are distinct, each from the other because of the following reasons: Inventions I and II are directed to 1) a method for creating a metal surface and hydrophobic layer and further methods for adjusting and altering their characteristics, and 2) a nebulizer with channels, a reservoir, and mesh being made of particular materials, respectively. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j).
In the instant case, the inventions as claimed can have a materially different design, mode of operation, or function. For instance, invention I requires a plethora of particular methodologies for crafting and altering the surfaces not required in Invention II. Invention II is a nebulizer system with various structures and components, which is not required in invention I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The search would require looking in a different classification/sub-classification and different search terms. See MPEP § 808.02.
Applicant’s election with traverse of claims 13-20 in the telephonic interview conducted on 11/13/2025 is acknowledged.
Claim Objections
Claims 14, 18, and 20 are objected to because of the following informalities:
Claim 14 recites “4)” in line 1 and “3)” in line 3. Examiner suggests removing these in order to remove any confusion that the numerals are referring to new components rather than referencing claim 13.
Claim 18 recites “4)” in line 1 and “3)” in line 3. Examiner suggests removing these in order to remove any confusion that the numerals are referring to new components rather than referencing claim 13.
Claim 18 has an extraneous space between the last word and the period which should be removed.
Claim 20 recites “3)” in line 1. Examiner suggests removing this in order to remove any confusion that the numerals are referring to new components rather than referencing claim 13.
Claim 20 recites the term “ATRP.” in line 3. Examiner suggests changing to read “Atom Transfer Radical Polymerization (ATRP).” in order to clarify the acronym.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 13-17 and 20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2 and 5-8 of prior U.S. Patent No. 11,867,342. This is a statutory double patenting rejection.
Claim 13 of the instant application corresponds to claim 1 of the ‘342 patent.
Claim 14 of the instant application corresponds to claim 5 of the ‘342 patent.
Claim 15 of the instant application corresponds to claim 6 of the ‘342 patent.
Claim 16 of the instant application corresponds to claim 2 of the ‘342 patent.
Claim 17 of the instant application corresponds to claim 7 of the ‘342 patent.
Claim 20 of the instant application corresponds to claim 8 of the ‘342 patent.
For the reasons above, claims 13-17 and 20 are not patentably distinct from the ‘342 patent.
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 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 5-6 of U.S. Patent No. 11,867,342. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim language has no substantive differences and at best offers an obvious variant of the ‘342 patent.
Claim 18 of the instant application corresponds to claims 1-2 of the ‘342 patent. The limitations introduced in claim 18 of the instant application are merely one of the choices provided via the “or” statement in “4)” of claim 1 in the ‘342 patent, such that it merely represents a choice of one particular hydrophobic coating already claimed.
Claim 19 of the instant application corresponds to claim 6 of the ‘342 patent, in light of the above reasoning for claim 18.
For the reasons above, claims 18-19 are not patentably distinct from the ‘342 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Hofer et al. (US Pub. 2003/0186914), Hanson (US Pub. 2008/0131701), Hanson (US Pub. 2008/0152930), Bayat et al. (US Pub. 2021/0120878), Hanson et al. (US Pub. 2013/0037161), Bruner et al. (US Pub. 2007/0092640), Bohm (US Pat. 7,156,117), and Cheng et al. (US Pat. 11,525,069) are cited to show references which relate to atomizer structures and/or processes for creating a metal surface or hydrophobic coating.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D ZIEGLER whose telephone number is (571)272-3349. The examiner can normally be reached Mon-Fri 10:00-6:00.
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, Timothy Stanis can be reached at (571)272-5139. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW D ZIEGLER/Examiner, Art Unit 3785
/TIMOTHY A STANIS/Supervisory Patent Examiner, Art Unit 3785