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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/05/2026 has been entered.
Information Disclosure Statement
The information disclosure statement filed 02/05/2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Response to Arguments
Applicant’s arguments, filed on 02/05/2026, with respect to the rejection(s) of Claims 1-8 and 22 rejected under 35 U.S.C. 103 as being unpatentable over Farmer et al. (US 2020/0157408 A1) , Liu (US 2015/0166836 ) and further in view of Farmer (CA
3052048 A1), and Claims 11- 20, and 22 rejected under 35 U.S.C. 103 as being unpatentable over Farmer , Liu, and further in view of Feraud et al. (US 6,613,720 B1)have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Applicant's arguments filed 02/05/2026 with regards to the Double Patenting have been fully considered but they are as follow:
Claims 1, and 7-22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/285525 ('525 herein) have been withdrawn.
Claims 1, and 7-22 provisionally rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-18 of copending Application No. 18/285583 ('583 herein) have been withdrawn.
Claims 1, and 7-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/285702 ('702 herein) has been maintained.
Claims 1, and 7-22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/285711 ('711 herein) has been maintained.
Claims 1, and 7-22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/285911 ('911 herein) has been maintained.
Claims 1, and 7-22 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/285697 ('697 herein).
Claims 1, and 7-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of Patent No. 12, 247, 164 ('164 herein) have been maintained.
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, 7-10, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/285702 ('702 herein).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a composition that are identical comprising same components while '702 application claims further specifies the composition as a hydrocarbon recovery fluid, which fully anticipates the instant claims .
All the claims dependent of claim 1 are also rejected.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7-10, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/285711 ('711 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a composition that are identical comprising same components while '711 application claims further specifies the lignin content of the composition and the composition as a diluent, which fully anticipates the instant claims
All the claims dependent of claim 1 are also rejected.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7-10 and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/285911 ('911 herein).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a composition that are identical comprising same components while '911 application claims further specifies the composition as a for cleaning surfaces or surface fouled to remove or reduce hydrocarbon fouling, which fully anticipates the instant claims.
All the claims dependent of claim 1 are also rejected.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7-10, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/285697 ('697 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a composition that are identicalcomprising same components while '697 application claims further specifies the composition as for separating or recovering metals from crushed or milled material, which fully anticipates the instant claims.
All the claims dependent of claim 1 are also rejected.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 7-10, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of Patent No. 12, 247, 164 ('164 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to a composition that are identical comprising same components while '164 patent claims further specifies the composition as fracturing fluid under high pressure in which reservoir having low permeability and/ or porosity, it is well-known fracturing application, which fully anticipates the instant claims.
All the claims dependent of claim 1 are also rejected.
Conclusion
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 02/24/2026