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 .
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, 6-11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-8 of copending Application No. 18/727,949 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant claim 1 is taught by the reference claims 1-2.
The instant claim 6 is taught by the reference claim 8.
The instant claims 7-9 are taught by the reference claim 1.
The instant claim 10 is taught by the reference claim 7.
The instant claim 11 is taught by the reference claims 3 and 7.
The instant claim 13 is taught by the reference claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-5 and 12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The instant claims 2-5 and 12 contain allowable subject matter as the closest prior art of record does not teach or render obvious each and every element of the claims.
The closest prior art of record is considered to be Greuel as described in the previous office action.
The difference between the instant claims and the closest prior art of record is described below.
Greuel does not teach the storage modulus ratio of the tube as required by the instant claims 2-5 and 12. Further, Applicant has shown, through data, that the storage modulus ratio would not be an inherent feature of the ETFE composition of Greuel.
The closest prior art of record thus does not teach or render obvious each and every limitation of the claims.
Response to Arguments
Applicant’s remarks and amendments filed 02 July 2026 have been fully considered.
Applicant requests withdrawal of the objection recited in the previous office action.
The objection recited in the previous office action has been withdrawn due to the present claim amendments.
Applicant argues that Greuel does not teach the storage modulus ratio. This is found persuasive.
Applicant has shown, through data, that the ETFE composition of Greuel would not have inherently exhibited the claimed storage modulus ratio. Therefore, the rejections in view of Greuel have been withdrawn.
Applicant argues that the double patenting rejections should be withdrawn as claim 1 of the copending application does not state the storage modulus ratio and that claim 1 of the copending application includes limitations not in the instant claim 1. This is not found persuasive for the following reasons:
While claim 1 of the copending application does not mention the storage modulus ratio, claim 2 of the copending application does recite the same storage modulus ratio. Claim 1 of the instant application is thus rejected in view of claims 1-2 of the copending application. Furthermore, all other features of the instant claim 1 are taught by claims 1-2 of the copending application. Therefore, the instant claim 1 is not patentably distinct from the copending claims 1-2 and Applicant’s argument is unpersuasive.
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 THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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