DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/05/2025 has been entered.
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 .
Response to Amendment
Claims 1-12 and 14-18 are pending in the Amendment filed 12/05/2025.
Any rejections of record that are not repeated below are withdrawn in view of Applicant’s amendment to claim 1 (requiring a cooling step between first and second heating steps). The pending claims are rejected as follows:
Claims 1-3, 5-6, 8, 10-12, 15-16, and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chadwick et al. (US 20180229384 A1).
Claims 1-6, 8, 11-12, 14, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pandis et al. (WO 2022049058 A1).
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pandis et al. (WO 2022049058 A1), as applied to claims 1-6, 8, 11-12, 14, and 18 above.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Chadwick et al. (US 20180229384 A1), as applied to claims 1-3, 5-6, 8, 10-12, 15-16, and 18 above, in view of Wang et al. (US 20100178515 A1).
Claims 1 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-9 of copending Application No. 18/230759 (reference application).
Response to Arguments
Applicant's arguments, see “Remarks” filed 12/05/2025, have been fully considered but they are not persuasive.
Applicant argues, as to Chadwick and amended claim 1:
“By requiring this explicit intervening cooling step, Claim 1 defines a process that is structurally and functionally distinct from the continuous or single-cycle heating processes of the prior art. Additionally, Applicants respectfully draw attention to the fact that Chadwick does not give a desired test temperature for the wool cutting test. Paragraph 55 of Chadwick only states that "Cutting force is determined by the wool felt cutter test, which measures the cutting force values of the blade by measuring the force required by each blade to cut through wool felt. Each blade is run through a wool felt cutter 5 times and the force of each cut (e.g., in pounds) is measured on a recorder. The lowest of 5 cuts is defined as the cutting force. In the present invention, wool felt cutter tests are preferably performed on the blades or a sample of the blades after each treatment or run." As such, the Office is utilizing bias to justify an interpretation of the art which is not found in the art. Applicants' amendment establishes a clear physical break between the first and second heating steps, further driving a result effective variable unique to the claimed process, thus rendering Claim 1 and its dependent claims both novel and non-obvious. The improved adhesion and durability observed in Applicant's invention (e.g., Table 2, Samples 3 and 4, showing lower delta cutting forces for multi-stage heating processes) are tied to this specific methodology, demonstrating an unexpected result not contemplated by the cited art.” [“Remarks”, pg. 2, para. 3].
In response, this argument is not persuasive because Applicant has cited no evidence that the temperature of the blades would be maintained at the treatment temperature for the disclosed wool cutting test of Chadwick [para. 0055] or any of the disclosed blade tests of Chadwick [para. 0056]. To the contrary, a plain reading of the passage would lead one of ordinary skill in the art to conclude that the blades would, driven by thermodynamic processes, be cooler than the treatment temperature for each of the blade testing methodologies. Indeed, Applicant’s assertion would require an explicit teaching by Chadwick to maintain the high treatment temperature (e.g., 500 to 700 degrees Fahrenheit) during the testing—such a teaching is not present.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 5-6, 8, 10-12, 15-16, and 18 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chadwick et al. (US 20180229384 A1).
As to amended claim 1, Chadwick discloses a method of manufacturing a razor blade cutting edge [Abstract], the method comprising:
a) applying a coating of a polymer material to the razor blade cutting edge to form a coated blade edge [para. 0044, “PTFE”]
b) performing a first heating of the coated blade edge comprising a first adhesion step to adhere the polymer material to the razor blade cutting edge [para. 0047; Fig. 3];
c) cooling the coated blade edge after performing the first heating and before performing the second heating [para. 0055-56]; and
d) performing a second heating of the coated blade edge comprising a second adhesion step to adhere the polymer material to the razor blade cutting edge [para. 0047; Fig. 3].
As to c), Chadwick discloses a repetitive process of re-treating the blades after cooling [para. 0055] by applying the same solvent heating process [Fig. 3; para. 0052], where the first treatment reads on the first heating, and the second treatment reads on the second heating. Here, a plain reading of the passage at para. 0055-56 would lead one of ordinary skill in the art to conclude that the blades would, driven by thermodynamic processes, be cooler than the treatment temperature during the blade testing methodologies. That is, the blades must inherently cool between re-treating steps absent a teaching in Chadwick to maintain the high treatment temperature (e.g., 500 to 700 degrees Fahrenheit) during the testing step [para. 0055-56]—no such teaching is present.
As to claim 2, Chadwick discloses the method of claim 1, wherein the first heating of the coated blade edge comprises a first heating stage and a second heating stage, and wherein the second heating of the coated blade edge comprises a first heating stage and a second heating stage [para. 0047].
Here, the claim does not distinguish between the first heating, first heating stage, and second heating stage, and thus arbitrary timepoints in the disclosed heating step can be considered to divide the first heating from the second heating, and likewise the first and second heating stages from one another (e.g., a first stage of the blade heating to reach solvent temperature, a second stage of maintaining the blade at solvent temperature). See also, instant claim 6 which illustrates that the first and second stages may be performed at the same temperature.
Alternatively, Chadwick discloses a repetitive process of re-treating the blades after cooling [para. 0055] by applying the same solvent heating process [Fig. 3; para. 0052], where the first treatment reads on the first heating, and the second treatment reads on the second heating—and each process includes the stages of heating to a setpoint, and maintaining a setpoint temperature.
As to claim 3, Chadwick discloses the method of claim 2, wherein:
the second heating stage of the first heating is performed at a higher temperature than the first heating stage of the first heating [para. 0047] and
the second heating stage of the second heating is performed at a higher temperature than the first heating stage of the second heating [para. 0047].
Here, the step of heating the chamber may be arbitrary divided into various stages by time, including a final temperature setpoint, such that each stage has a higher temperature—which reads on instant claim 3. That is, as the temperature increases to the setpoint temperature [para. 0047], the various temperatures achieved during heating would inherently meet the limitations of instant claim 3.
As to claim 5, Chadwick discloses the method of claim 2, wherein:
the first heating stages are performed at a different temperature, for a different amount of time, or both; and the second heating stages are performed at a different temperature, for a different amount of time, or both [para. 0047].
Here, the step of heating the chamber may be arbitrary divided into various stages by time, including a final temperature setpoint, such that each stage has a higher temperature—which reads on instant claim 3. That is, as the temperature increases to the setpoint temperature [para. 0047], the various temperatures achieved during heating would inherently meet the limitations of instant claim 3.
As to claim 6, Chadwick discloses the method of claim 1, wherein the first heating of the coated blade edge comprises:
a first heating stage performed at a temperature of between 500-795°F, wherein the first heating stage lasts at least 40 seconds [para. 0047]; and
a second heating stage performed at a temperature of between 500-795°F, wherein the second heating stage lasts at least 40 seconds [para. 0047; Fig. 3, para. 0052].
Here, Chadwick teaches the coated razor blade may be disposed in a heated solvent for a time ranging from about 30 seconds to 1 hour, and the solvent is heated to a temperature from about 500 degrees to about 700 degrees Fahrenheit [para. 0047]. The time range disclosed by Chadwick generally encompasses the claimed range, and is directed to the same purpose of treating a PTFE coated razor blade in a heated solvent of C14F18, and therefore provides sufficient specificity to anticipate the claimed range. Additionally, the temperature of Chadwick falls entirely within the claimed range, and overlaps a majority of the claimed range, and therefore also provides sufficient specificity to anticipate the claimed range. See MPEP 2131.03, II.
Alternatively, Chadwick discloses a repetitive process of re-treating the blades after cooling [para. 0055] by applying the same solvent heating process [Fig. 3; para. 0052], where the first treatment reads on the first heating, and the second treatment reads on the second heating.
As to claim 8, Chadwick discloses the method of claim 1, wherein the second heating of the coated blade edge comprises:
a first heating stage performed at a temperature of between 500-795°F, wherein the first heating stage lasts at least 40 seconds [para. 0047]; and
a second heating stage performed at a temperature of between 500-795°F, wherein the second heating stage lasts at least 40 seconds [para. 0047].
Here, Chadwick teaches the coated razor blade may be disposed in a heated solvent for a time ranging from about 30 seconds to 1 hour, and the solvent is heated to a temperature from about 500 degrees to about 700 degrees Fahrenheit [para. 0047]. The time range disclosed by Chadwick generally encompasses the claimed range, and is directed to the same purpose of treating a PTFE coated razor blade in a heated solvent of C14F18, and therefore provides sufficient specificity to anticipate the claimed range. Additionally, the temperature of Chadwick falls entirely within the claimed range, and overlaps a majority of the claimed range, and therefore also provides sufficient specificity to anticipate the claimed range. See MPEP 2131.03, II.
Alternatively, Chadwick discloses a repetitive process of re-treating the blades after cooling [para. 0055] by applying the same solvent heating process [Fig. 3; para. 0052], where the first treatment reads on the first heating, and the second treatment reads on the second heating
As to claim 10, Chadwick discloses the method of claim 1, wherein applying the coating of the polymer material comprises applying a dispersion of the polymer material in a dispersing medium [para. 0083-86].
As to claim 11, Chadwick discloses the method of claim 10, wherein the polymer material comprises a polyfluorocarbon [para. 0044, “PTFE”].
As to claim 12, Chadwick discloses the method of claim 11, wherein the polyfluorocarbon comprises polytetrafluoroethylene [para. 0044, “PTFE”].
As to claim 15, Chadwick discloses the method of claim 1, further comprising treating the coated blade edge with a solvent [para. 0046-47] or a mechanical process to partially remove the coating.
As to claim 16, Chadwick discloses the method of claim 15, wherein the solvent comprises perfluoroperhydrophenanthrene (C14F24) [para. 0046-47].
As to claim 18, Chadwick discloses a razor blade cutting edge produced according to the method of claim 1 [par. 0044-47].
Claims 1-6, 8, 11-12, 14, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pandis et al. (WO 2022049058 A1).
As to amended claim 1, Pandis discloses a method of manufacturing a razor blade cutting edge, the method comprising:
a) applying a coating of a polymer material to the razor blade cutting edge to form a coated blade edge [claim 1; para. 0026];
b) performing a first heating of the coated blade edge comprising a first adhesion step to adhere the polymer material to the razor blade cutting edge [claim 1, claim 4];
c) cooling the coated blade edge after performing the first heating and before performing the second heating [para. 0028, “ the furnace may heat blades 16 from the initial room temperature”]; and
d) performing a second heating of the coated blade edge comprising a second adhesion step to adhere the polymer material to the razor blade cutting edge [claims 5-6; para. 0028].
Here, Pandis teaches depositing a coating on the heated blades by evaporation [claims 1-4; para. 0026] (which inherently includes “a first heating of the coated blade edge” because after the coating is formed the blade remains heated [para. 0026]), permitting the blades to cool to room temperature [para. 0028], and then performing a sintering process on the cooled blades [claims 5-6; para. 0028].
As to claim 2, Pandis discloses the method of claim 1, wherein the first heating of the coated blade edge comprises a first heating stage and a second heating stage [para. 0026], and wherein the second heating of the coated blade edge comprises a first heating stage and a second heating stage [para. 0028].
As to claim 3, Pandis discloses the method of claim 2, wherein:
the second heating stage of the first heating is performed at a higher temperature than the first heating stage of the first heating [para. 0026; Here, heating the boat to the desired temperature would inherently include temperatures below the desired temperature]; and
the second heating stage of the second heating is performed at a higher temperature than the first heating stage of the second heating [claims 1, 5-6; para. 0028, Here, the method of heating the chamber to the intermediate and to the final maximum temperature, inherently includes various arbitrary temperatures].
As to claim 4, Pandis discloses the method of claim 2, wherein:
the first heating stages are performed at a same temperature for a same amount of time [para. 0026]; and
wherein the second heating stages are performed at a same temperature for a same amount of time [para. 0028].
As to claim 5, Pandis discloses the method of claim 2, wherein:
the first heating stages are performed at a different temperature, for a different amount of time, or both [para. 0026, Here, heating the boat to the desired temperature would inherently include temperatures below the desired temperature]; and the second heating stages are performed at a different temperature, for a different amount of time, or both [para. 0028, Here, the method of heating the chamber to the intermediate and to the final maximum temperature, inherently includes various arbitrary temperatures].
As to claim 6, Pandis discloses the method of claim 1, wherein the first heating of the coated blade edge comprises:
a first heating stage performed at a temperature of between 500-795°F, wherein the first heating stage lasts at least 40 seconds [claim 6; para. 0028, “maximum temperature (e.g., from approximately 330 degrees Celsius to approximately 360 degrees Celsius)”, “may hold blades 16 at the maximum temperature for a period of time (e.g., approximately 1 minute, approximately 2 minutes, approximately 3 minutes, etc., or shorter or longer)”; para. 0026]; and
a second heating stage performed at a temperature of between 500-795°F, wherein the second heating stage lasts at least 40 seconds [para. 0028].
As to claim 8, Pandis discloses the method of claim 1, wherein the second heating of the coated blade edge comprises:
a first heating stage performed at a temperature of between 500-795°F, wherein the first heating stage lasts at least 40 seconds [para. 0026, “approximately 330 degrees to approximately 380 degrees Celsius”…“for approximately 15 to approximately 20 minutes” which teaches the claimed range with sufficient specificity]; and
a second heating stage performed at a temperature of between 500-795°F, wherein the second heating stage lasts at least 40 seconds [para. 0028, “approximately 330 degrees Celsius to approximately 380 degrees Celsius, at or above approximately 330 degrees Celsius, or at or above approximately 360 degrees Celsius”…“The furnace may hold blades 16 at the maximum temperature for a period of time (e.g., approximately 1 minute, approximately 2 minutes, approximately 3 minutes, etc., or shorter or longer)”].
As to claim 11, Pandis discloses the method of claim 10, wherein the polymer material comprises a polyfluorocarbon [claim 14].
As to claim 12, Pandis discloses the method of claim 11, wherein the polyfluorocarbon comprises polytetrafluoroethylene [claim 14].
As to claim 14, Pandis discloses the method of claim 13, wherein the coated blade edge is cooled to room temperature [claim 1].
As to claim 18, Pandis discloses a razor blade cutting edge produced according to the method of claim 1 [claim 1, claims 5-6; para. 0026-28].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Pandis et al. (WO 2022049058 A1), as applied to claims 1-6, 8, 11-12, 14, and 18 above.
As to claim 7, Pandis discloses method of claim 6, but fails to explicitly disclose (emphasis added):
wherein the first heating stage is performed at a temperature of 500°F [para. 0026] for at least 40 seconds, and wherein the second heating stage is performed at a temperature of 745°F for at least 40 second [para. 0028].
Pandis teaches two heating stages as follows:
Step 204 includes sintering blades 16 coated with the deposited PTFE to a temperature above the melting temperature of the fluoro-containing polymer. Heating may occur above the melting point of the polymer to form a continuous film that is well adhered to the blades. For example, step 204 may include placing blades 16 into a furnace, for example, by placing the blade holder in a furnace. In some aspects, the furnace may be a conveyor furnace. In step 204, the furnace may heat blades 16 and the fluoro-containing polymer to a temperature near or above the melting temperature of fluoro-containing polymer (e.g., from approximately 200 degrees Celsius to approximately 400 degrees Celsius, at or above approximately 300 degrees Celsius, from approximately 330 degrees Celsius to approximately 380 degrees Celsius, at or above approximately 330 degrees Celsius, or at or above approximately 360 degrees Celsius). The furnace may heat blades 16 and the fluoro-containing polymer incrementally or otherwise at a controlled rate. For example, the furnace may heat blades 16 from the initial room temperature (e.g., approximately 20-30 degrees Celsius) to an intermediate temperature from approximately 200 degrees Celsius to approximately 300 degrees Celsius at a rate of from approximately 40 degrees Celsius per minute to approximately 60 degrees Celsius per minute. Then, the furnace may heat blades 16 from the intermediate temperature to a maximum temperature (e.g., from approximately 330 degrees Celsius to approximately 360 degrees Celsius) at a rate of approximately 5 degrees Celsius per minute to approximately 20 degrees Celsius per minute, for example, approximately 10 degrees Celsius per minute. [29] The furnace may hold blades 16 at the maximum temperature for a period of time (e.g., approximately 1 minute, approximately 2 minutes, approximately 3 minutes, etc., or shorter or longer). [para. 0028].
Thus, Pandis teaches the first heating stage is performed at a temperature of between 572 degrees to 690 degrees Fahrenheit, and further teaches the second heating stage is performed at a temperature of up to 752 degrees Fahrenheit (i.e., 400 degrees Celsius) for one minute, or two minutes, etc. [para. 0028], which anticipates the claimed time for the second heating stage of “at least 40 seconds”.
The disclosed temperature ranges of Pandis substantially overlap with, and therefore render prima facie obvious, the claimed temperatures of the first and second heating stages. See MPEP 2144.01, I.
After reaching the intermediate temperature, Pandis alters the rate of temperature change to a rate of “approximately 5 degrees Celsius per minute to approximately 20 degrees Celsius per minute”, which means, at most, the temperature is held roughly constant for 12 to 3 seconds.
However, Pandis teaches that the purpose of the sintering phase (step 204) is to reach a temperature 1-40 degrees above the melting point of the fluoro-containing polymer (approximately 323 to approximately 327 degrees Celsius) [para. 0023], in order to form a continuous film that is well adhered to the blade [para. 0028] and of uniform thickness [para. 0044; para. 0048].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art to optimize the temperature above the melting point and the time of applied during the intermediate sintering step of Pandis, in order to achieve a desired polymer layer of a desired thickness and uniformity, as taught by Pandis [para. 0028; 0044; 0048], with predictable results.
As to claim 9, Pandis discloses method of claim 1, but fails to explicitly disclose (emphasis added):
wherein the first heating stage is performed at a temperature of 500°F [para. 0026] for at least 40 seconds, and wherein the second heating stage is performed at a temperature of 745°F for at least 40 second [para. 0028].
Pandis teaches two heating stages as follows:
Step 204 includes sintering blades 16 coated with the deposited PTFE to a temperature above the melting temperature of the fluoro-containing polymer. Heating may occur above the melting point of the polymer to form a continuous film that is well adhered to the blades. For example, step 204 may include placing blades 16 into a furnace, for example, by placing the blade holder in a furnace. In some aspects, the furnace may be a conveyor furnace. In step 204, the furnace may heat blades 16 and the fluoro-containing polymer to a temperature near or above the melting temperature of fluoro-containing polymer (e.g., from approximately 200 degrees Celsius to approximately 400 degrees Celsius, at or above approximately 300 degrees Celsius, from approximately 330 degrees Celsius to approximately 380 degrees Celsius, at or above approximately 330 degrees Celsius, or at or above approximately 360 degrees Celsius). The furnace may heat blades 16 and the fluoro-containing polymer incrementally or otherwise at a controlled rate. For example, the furnace may heat blades 16 from the initial room temperature (e.g., approximately 20-30 degrees Celsius) to an intermediate temperature from approximately 200 degrees Celsius to approximately 300 degrees Celsius at a rate of from approximately 40 degrees Celsius per minute to approximately 60 degrees Celsius per minute. Then, the furnace may heat blades 16 from the intermediate temperature to a maximum temperature (e.g., from approximately 330 degrees Celsius to approximately 360 degrees Celsius) at a rate of approximately 5 degrees Celsius per minute to approximately 20 degrees Celsius per minute, for example, approximately 10 degrees Celsius per minute. [29] The furnace may hold blades 16 at the maximum temperature for a period of time (e.g., approximately 1 minute, approximately 2 minutes, approximately 3 minutes, etc., or shorter or longer). [para. 0028].
Thus, Pandis teaches the first heating stage is performed at a temperature of between 572 degrees to 690 degrees Fahrenheit, and further teaches the second heating stage is performed at a temperature of up to 752 degrees Fahrenheit (i.e., 400 degrees Celsius) for one minute, or two minutes, etc. [para. 0028], which anticipates the claimed time for the second heating stage of “at least 40 seconds”.
The disclosed temperature ranges of Pandis substantially overlap with, and therefore render prima facie obvious, the claimed temperatures of the first and second heating stages. See MPEP 2144.01, I.
After reaching the intermediate temperature, Pandis alters the rate of temperature change to a rate of “approximately 5 degrees Celsius per minute to approximately 20 degrees Celsius per minute”, which means, at most, the temperature is held roughly constant for 12 to 3 seconds.
However, Pandis teaches that the purpose of the sintering phase (step 204) is to reach a temperature 1-40 degrees above the melting point of the fluoro-containing polymer (approximately 323 to approximately 327 degrees Celsius) [para. 0023], in order to form a continuous film that is well adhered to the blade [para. 0028] and of uniform thickness [para. 0044; para. 0048].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art to optimize the temperature above the melting point and the time of applied during the intermediate sintering step of Pandis, in order to achieve a desired polymer layer of a desired thickness and uniformity, as taught by Pandis [para. 0028; 0044; 0048], with predictable results.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Chadwick et al. (US 20180229384 A1), as applied to claims 1-3, 5-6, 8, 10-12, 15-16, and 18 above, in view of Wang et al. (US 20100178515 A1).
As to claim 17, Chadwick discloses the method of claim 15, but fails to explicitly disclose:
wherein the mechanical process comprises isostatic pressing.
However, Wang et al. (US 20100178515 A1) directed to the same field of endeavor teaches forming one or more PTFE coatings on a razor blade by applying a hot isostatic pressing or cold isostatic pressing process, in order to form a thin, dense and uniform coating on the blade edge [Abstract].
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of forming a PTFE coating a razor blade, of Chadwick, to include forming an additional PTFE layer on a razor blade by hot isostatic pressing, of Wang, in order to form a razor blade having thin, dense and uniform coating on the blade edge [Abstract].
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 and 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-9 of copending Application No. 18/230759 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant claim 1 is anticipated by claim 8 (as it depends from claim 1) of ‘759.
Instant claim 14 is anticipated by claim 9 (as it depends from claims 8 and 1) of ‘759.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/CHRISTOPHER REMAVEGE/Examiner, Art Unit 1713