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 .
DETAILED ACTION
Status of Claims
Responsive to the amendment filed 3 December 2025, claim 1 is amended and claims 10-11 are added. Claims 1-11 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 3 December 2025 the rejections based on Baldi are withdrawn. New grounds of rejection are presented.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 12534792 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s patent claim 6 specified iron as the target material, and specified a thermal spray powder instead of aluminum impregnated powder. However the steps are considered to be functionally the same, and the processes thus are obvious over each other. Regarding the limitations wherein the target and the aluminum source are smaller than the sintering inhibitor in average particle size, this is met explicitly in patent claims 10 and 11. It would have been obvious to the skilled artisan to have integrated dependent claims 10 and 11 into the parent patent claim 6. Applicant’s dependent claims are also obvious over the copending claims. For example, instant claim 2 corresponds to patent claim 7, instant claim 3 corresponds to patent claim 8, and so on.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/945705 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s copending claim 1 specified manganese as the target material, and specified a magnetic powder instead of aluminum impregnated powder. However the steps are considered to be functionally the same, and the processes thus are obvious over each other. Regarding the new limitation wherein the target and the aluminum source are smaller than the sintering inhibitor in average particle size, this is met inherently in applicant’s copending claim 1, wherein the gaps in the inhibitor particles are used for the processing of the other powders. Applicant’s dependent claims are also obvious over the copending claims. For example, instant claim 2 corresponds to copending claim 4, instant claim 3 corresponds to copending claim 1, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 3 December 2025 have been fully considered. Applicant argues that Baldi does not teach the new limitations of claim 1, wherein target and the aluminum source are smaller than the sintering inhibitor in average particle size. Upon a further review of the Baldi reference, the examiner agrees with this argument. For example, Baldi describes wherein the “fine” alumina particles adhere to the finished iron coated with aluminum. This is not believed to be compatible with the invention of claim 1 as amended. The rejections over Baldi are withdrawn due to the amendment.
Applicant’s argument regarding the rejections under Obviousness double patenting are not persuasive. The rejection over applicant’s issued patent is made, and is now non-provisional. The rejection over applicant’s copending patent application therefore also still stands.
Conclusion
NO claims are allowable NO rejections are made over the prior art.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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