CTNF 18/215,403 CTNF 75688 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-30-03-h AIA Claim Interpretation It is deemed the donor moiety in the form of an acrylate monomer with a group Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-18 of U.S. Patent No. 12,630,659 . Although the claims at issue are not identical, they are not patentably distinct from each other because they comprise overlapping subject matter . US’659 sets forth a resin comprising a donor moiety in the form or an acrylate monomer selected from at least one of 2-hydroxyethyl acrylate, caprolactone acrylate, hydroxypropyl acrylate, 2,3-dihydroxypropyl acrylate, 1,3-dihydroxypropyl acrylate, N-hydroxyethyl acrylamide, and aliphatic urethane-based diacrylate, the donor moiety being between about 10 wt. % to about 30 wt. % of an overall composition of the resin; an acceptor moiety different than the donor moiety, the acceptor moiety in the form of an acrylate monomer selected from at least one of aliphatic urethane-based diacrylate and 2-hydroxyethyl acrylate, the acceptor moiety being between about 10 wt. % to about 30 wt. % of the overall composition of the resin; a rigid moiety in the form of an acrylate monomer selected from at least one of isobornyl acrylate, 4-acryloylmorpholine, methyl methacrylate, 2-hydroxyethyl methacrylate, and isobornyl methacrylate; a photoinitiator; and a photoabsorber, wherein the resin configured to form a solid polymer using grayscale digital light processing 3D printing and having a Young's modulus ranging from 0.1 MPa to 100 MPa. The instant claims set forth a 3D printed physical information storage unit comprising: a grayscale digital light processing (g-DLP) 3D printed monolithic component formed from a resin comprising a donor moiety, an acceptor moiety, a rigid moiety, a photoinitiator, and a photoabsorber, wherein said printed monolithic component comprises a first portion with a first Young’s Modulus and a second portion with a second Young’s Modulus. It is deemed the 3D printed monolith is a solid polymer resin obtained by curing said resin in the instant claims overlaps in scope with the solid polymer to be obtained by grayscale DLP in US’659 since they are obtained from the same resin composition components. One primary difference is the monolithic component of instant claims comprises a first portion with a first Young’s modulus and a second portion with a second Youngs Modulus, wherein the claims of US’659 set forth said solid polymer has a Young’s Modulus ranging from 0.1 MPa to 200 MPa. However, as set forth above the obtained resin of US’659 and the instantly claimed monolith component are obtained from the same composition. Therefore, they resin composition of US’659 should inherently have a first portion with a first Young’s modulus and a second portion with a second Youngs Modulus, and thus overlap in scope. The courts have upheld “a chemical composition and its properties are inseparable”. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art-- In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). It is deemed that the instant claims, as written, cannot be infringed without literally infringing upon the claims of the co-pending application(s) as cited in the obviousness-type double patenting rejection(s) . 08-35 AIA Claim s 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 5, and 7-20 of co-pending Application No. 17/977,314 (USPGPub 2024/0140022) . Although the claims at issue are not identical, they are not patentably distinct from each other because they comprise overlapping subject matter. The co-pending claims are limited to substrate for a sensor and a senor comprising a grayscale digital light processing (g-DLP) 3D printed monolithic substrate with at least one microfluid channel configured for a fluid to be disposed therein, the monolithic substrate formed from a resin configured to form a solid polymer using g-DLP 3D printing with a Young's modulus ranging from 0.1 MPa to 100 MPa. The instant claims are limited to a 3D printed physical information storage unit comprising: a grayscale digital light processing (g-DLP) 3D printed monolithic component formed from a resin comprising a donor moiety, an acceptor moiety, a rigid moiety, a photoinitiator, and a photoabsorber, wherein said printed monolithic component comprises a first portion with a first Young’s Modulus and a second portion with a second Young’s Modulus . It is deemed the monolithic components overlap in scope since the instant claims do not exclude a microfluid channel and it can be seen in instant claims 2, 5-17 and 19 of said co-pending the resin composition is intended to comprise the same components, i.e., donor moiety in the form of an acrylate having the same side groups; an acceptor moiety in the form of an acrylate having the same side groups; a rigid monomer having the same side groups; a photoinitiator and a photoabsorber, as well as, having a first portion with a Young's modulus and a second portion with a Young's modulus. It is deemed anyone in possession of the sensor and/or substrate for a sensor as found in the co-pending claims would be in possession of the 3D printed monolithic component of the instant clams. It is deemed that the instant claims, as written, cannot be infringed without literally infringing upon the claims of the co-pending application(s) as cited in the obviousness-type double patenting rejection(s) . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5. 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, Heidi Riviere-Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SANZA L. McCLENDON/Primary Examiner, Art Unit 1765 SMc Application/Control Number: 18/215,403 Page 2 Art Unit: 1765 Application/Control Number: 18/215,403 Page 3 Art Unit: 1765 Application/Control Number: 18/215,403 Page 4 Art Unit: 1765 Application/Control Number: 18/215,403 Page 5 Art Unit: 1765
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