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 .
Status of the Application
Claims 3-12 are pending and under current examination.
Statutory (35 U.S.C. 101) double patenting rejection
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.
Claim 3-12 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 2-12 of prior U.S. Patent No. 11691993 B2. This is a statutory double patenting rejection.
The Examiner notes that the instant application is filed as a divisional application of 16635452 (U.S. Patent No. 11691993 B2). However, the withdrawn method claims (that are presented in the instant application) were rejoined in the parent application 16635452 and were allowed. Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Citation of Relevant Prior art
The following prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Following is the relevance of the prior art made of record:
US 20130323435: The prior art teaches a method of preparing same compounds as in the instant claims with broader scope. However, the method differs with respect to 1, 1, 1 trihalosilane and monoamine as reactants in the instant claims vs. monohalosilane and multialkyl substituted amine as reactants in the cited prior art.
Conclusion
No Claim is allowed.
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623