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 .
Claims 1-2 and 4-21 are currently pending. Claims 1, 20 and 21 are currently pending. Claim 3 has been canceled.
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 and 4-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/200, 678 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending application ‘678 have claims drawn to a liquid crystal polyester fiber comprising a liquid crystal polyester resin composition comprising a liquid crystal polyester and at least metallic element selected from the group consisting of metallic elements belonging to from Group 8 to Group 11 in Periodic Table, wherein a total content of the selected one or more metallic elements is from 1 to 1000 ppm by weight, and a total content of an alkaline metal and an alkaline-earth metal is 10 ppm by weight or less in the liquid crystal polyester resin composition. One of ordinary skilled in the art would recognize that the liquid crystal polyester resin recited by the instant claims and copending application 18/200,678 are obvious variants of each other. The resin have the same total amount of carboxy end groups. Both the instant claims and copending application ‘678 recite open claim language, “comprising”; therefore it would have been obvious to include other components in their respective fiber.
The present claims indicated above also cover the process which overlap the claims of copending Application No. 18/200, 678, and thus , render the present claims prima facie obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 01/09/2026 have been fully considered but they are not persuasive. Applicant’s principle arguments are the following:
A) Applicant respectfully traverse the double patenting rejection. Claims 1-15 of copending application 18/200,678 relate to liquid crystal polyester fibers and methods of making them. As such, they do not render obvious the claims of the present application relating to liquid crystal polyester resin composition. Additionally, since the copending application and present application have the same international filing date ( November 15, 2021), the issuance of both applications would not result in any improper timewise extension of patent term. Alternatively, Applicants request that the double patenting rejection be held in abeyance.
A) Examiner respectfully disagrees that claims 1-15 of copending application 18/200,678 relate to liquid crystal polyester fibers and methods of making them do not render obvious the claims of the present application relating to liquid crystal polyester resin composition. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and copending application ‘678 have claims drawn to a liquid crystal polyester fiber comprising a liquid crystal polyester resin composition comprising a liquid crystal polyester and at least metallic element selected from the group consisting of metallic elements belonging to from Group 8 to Group 11 in Periodic Table, wherein a total content of the selected one or more metallic elements is from 1 to 1000 ppm by weight, and a total content of an alkaline metal and an alkaline-earth metal is 10 ppm by weight or less in the liquid crystal polyester resin composition. One of ordinary skilled in the art would recognize that the liquid crystal polyester resin recited by the instant claims and copending application 18/200,678 are obvious variants of each other. Further, when the application under examination has the same patent term filing date, If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). See MPEP 804
Therefore, the rejection is maintained.
Response to Declaration
Applicant’s declaration with respect to claim(s) 1-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the declaration
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 CHANCEITY N ROBINSON whose telephone number is (571)270-3786. The examiner can normally be reached Monday-Friday (8:00 am-6:00 pm; IFP; PHP).
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, Mark Huff can be reached at 571-272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHANCEITY N ROBINSON/Primary Examiner, Art Unit 1737