DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Applicant's amendment and remarks filed on 07/02/2026 are acknowledged.
Claims 57-64 are pending.
3. 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
4. Claims 57-64 stand rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patents No. 10358495, 11692032, 10905784, 11511001, and 12230364 (all of record) for the reasons of record.
Applicant has not substantively addressed the grounds of rejection over the claims of US ‘495 and ‘032, presented in section 7 of the previous office action, which are therefore maintained.
Applicant argues, citing Ex parte Baurin, that US ‘784, ‘001 and ‘364 patents do not qualify as NSDP references to the present application because they have later filing dates. Applicant also asserts that US ‘784 and ‘364 have later expiration dates.
In response, it is noted that the examiner has no authority to interpret case law other than as prescribed by the MPEP. MPEP § 804 provides decision charts for examiners to follow, to determine whether an NSDP rejection should be made, which do not instruct examiners to consider any dates associated with the subject application or the reference patents.
MPEP Form Paragraph 8.33, cited in section 3 above, identifies two goals of the judicially created doctrine of NSDP: prevention of unjustified or improper extension of patent rights and prevention of possible harassment by multiple assignees. Both goals must be met to overcome the rejection.
Further, Applicant’s interpretation of Ex Parte Baurin is ineffective to overcome the rejection at least for the following reasons:
(i). Ex Parte Baurin is not currently a precedential Board decision.
(ii). An order by USPTO Director was entered on 03/05/2026 in the Baurin application (USSN 17135529, Appeal 2024-002920) convening an Appeals Review Panel to reconsider the PTAB decision reversing an examiner’s double patenting rejection.
(iii). In Ex parte Baumeister (USSN 17409019, Appeal 2026 000193), PTAB reaffirmed that ODP rejections may rely on commonly owned patents even when those patents have later effective filing dates and later expiration dates.
Accordingly, the grounds of rejection presented in section 8 of the previous office action are maintained, and are incorporated by reference herein as if reiterated in full.
5. Claims 57-64 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of the copending applications USSN 18/049609, 18/444124, 17/611073 and USSN 18/930913 (all of record) for the reasons of record.
Applicant has not substantively addressed the grounds of rejection presented in section 9 of the previous office action, which are therefore maintained and incorporated by reference herein as if reiterated in full.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
6. Conclusion: no claim is allowed.
7. 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ILIA I OUSPENSKI whose telephone number is (571)272-2920. The examiner can normally be reached 9 AM - 5:30 PM.
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, Julie Wu can be reached at 571-272-5205. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ILIA I OUSPENSKI/ Primary Examiner, Art Unit 1644
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