DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions. This action is in response to Amendment filed on October 14, 2025.
Claims 21, 22, 28, 29, 35 and 26 have been amended. Currently, claims 21-24, 26-31 and 33-40 are pending.
Response to Arguments
Applicant’s arguments, see pg. 7-8, filed 10/14/25, with respect to 25 USC 112(b) and 35 USC 103 have been fully considered. The rejection is hereby withdrawn. Applicant’s indicated “a terminal disclaimer to obviate the double patenting rejection over claims 21-40 has been filed along with this response” (see remarks page 7). Actually there is no record that a terminal disclaimer filed with this application. Examiner contacted the applicant’s representative on 12/11/25 and 01/02/26 respectively and left messages. However, no response was received from the applicant’s representative. The amended claims are not effective to overcome the double patenting rejection. As such, the terminal disclaimer is hereby sustained.
Double Patenting
4. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 21-24, 26-31 and 33-40, are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1-20 of US Patent 11,687,555 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because of following reasons:
Instant Application of 18/314760 contain(s) every element of claims of the US patent 11,687,555 B2 and thus anticipate or obvious the claim(s) of the instant application. The subject matter contains of the instant application claims (i.e., claims 21-24, 26-31 and 33-40) contains same or similar limitations as US 11,687,555 B2 (i.e., claims 1-20). Claims of the instant application 18/314760, therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
It would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify or to omit the additional elements of claims 1-20 (from Patent no. US 11,687,552 B2) to arrive at the claims 21-24, 26-31 and 33-40 of the instant application because the person would have realized that the remaining element would perform the same functions as before. “Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before.” See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
Claim 21-24, 26-31 and 33-40, are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1-20 of US Patent 9,569,513 B1. Although the conflicting claims are not identical, they are not patentably distinct from each other because of following reasons:
Instant Application of 18/314760 contain(s) every element of claims of the US patent 9,569,513 B1 and thus anticipate or obvious the claim(s) of the instant application. The subject matter contains of the instant application claims (i.e., claims 21-24, 26-31 and 33-40) contains same or similar limitations as US 9,569,513 B1 (i.e., claims 1-20). Claims of the instant application 18/314760, therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
It would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify or to omit the additional elements of claims 1-20 (from Patent no. US 9,569,513 B1) to arrive at the claims 21-24, 26-31 and 33-40 of the instant application because the person would have realized that the remaining element would perform the same functions as before. “Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before.” See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
Claim 21-24, 26-31 and 33-40, are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1-20 of US Patent 10,482,102 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because of following reasons:
Instant Application of 18/314760 contain(s) every element of claims of the US patent 10,482,102 B2 and thus anticipate or obvious the claim(s) of the instant application. The subject matter contains of the instant application claims (i.e., claims 21-24, 26-31 and 33-40) contains same or similar limitations as US 10,482,102 B1 B2 (i.e., claims 1-20). Claims of the instant application 18/314760, therefore are not patently distinct from the earlier patent claims and as such are unpatentable over obvious-type double patenting. A later patent/application claim is not patentably distinct from an earlier claim if the later claim is anticipated by the earlier claim.
It would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify or to omit the additional elements of claims 1-20 (from Patent no. US 10,482,102 B2) to arrive at the claims 21-24, 26-31 and 33-40 of the instant application because the person would have realized that the remaining element would perform the same functions as before. “Omission of element and its function in combination is obvious expedient if the remaining elements perform same functions as before.” See In re Karlson (CCPA) 136 USPQ 184, decide Jan 16, 1963, Appl. No. 6857, U. S. Court of Customs and Patent Appeals.
A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a 35 patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION F£)R REHEARING EN BANC (DECIDED: May 30, 2001).
The dependent claims are anticipated or obvious by the species of the patented invention. Cf., Titanium Metals Corp. v. Banner, 778 F.2d 775,227 USPQ 773 (Fed. Cir. 1985) (holding that an earlier species disclosure in the prior art defeats any generic claim). This court's predecessor has held that, without a terminal disclaimer, the species claims preclude issuance of the generic application. In re Van Ornum, 686 F.2d 937, 944, 214 USPQ 761,767 (CCPA 1982); Schneller, 397 F.2d at 354. Accordingly, absent a terminal disclaimer. The dependent claims were properly rejected under the doctrine of obviousness-type double patenting." (In re Goodman (CA FC) 29 USPQ2d 2010 (12/3/1993).
Allowable Subject Matter
5. Claims 21-24, 26-31 and 33-40 are allowed subject to filing a Terminal Disclaimer.
Conclusion
6. 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 extension fee 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.
7. Any inquiry concerning this communication or earlier communication from the examiner
should be directed to Daniel A Kuddus whose telephone number is (571) 270-1722. The
examiner can normally be reached on Monday to Thursday 8.00 a.m.-5.30 p.m. The examiner can also be reached on alternate Fridays from 8.00 a.m. to 4.30 p.m. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Boris Gorney can be reached on (571) 270-5626. The fax phone number for the organization where this application or processing is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from the either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
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/DANIEL A KUDDUS/Primary Examiner, Art Unit 2154
01/15/26