Prosecution Insights
Last updated: July 17, 2026
Application No. 18/372,363

EXTERNAL ANKLE BRACE

Non-Final OA §101§102§112§DP
Filed
Sep 25, 2023
Priority
Mar 25, 2021 — provisional 63/165,784 +3 more
Examiner
CARREIRO, CAITLIN ANN
Art Unit
3786
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Tayco Brace Inc.
OA Round
1 (Non-Final)
45%
Grant Probability
Moderate
1-2
OA Rounds
1y 0m
Est. Remaining
85%
With Interview

Examiner Intelligence

Grants 45% of resolved cases
45%
Career Allowance Rate
309 granted / 683 resolved
-24.8% vs TC avg
Strong +40% interview lift
Without
With
+40.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 10m
Avg Prosecution
33 currently pending
Career history
725
Total Applications
across all art units

Statute-Specific Performance

§101
0.5%
-39.5% vs TC avg
§103
75.4%
+35.4% vs TC avg
§102
19.1%
-20.9% vs TC avg
§112
0.7%
-39.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 683 resolved cases

Office Action

§101 §102 §112 §DP
DETAILED ACTION In Applicant’s Response filed 2/9/26, Applicant has amended claim 1. Claims 6, 8-9 and 21-41 have been cancelled. Currently, claims 1-5, 7, and 10-20 are pending. 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 . Election/Restrictions Applicant's election with traverse in the reply filed on 2/9/26 is acknowledged. Applicant’s arguments on pages 6-7 of the Response have been fully considered and are persuasive. Therefore, the restriction requirement has been withdrawn and the pending claims have been examined. Specification The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The abstract of the disclosure is objected to because it includes legal phraseology (i.e. “comprises”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Claim Objections Claims 1, 3, 7, 13 and 20 are objected to because of the following informalities which require appropriate correction: In claim 1, line 12 should be revised to recite: “a of a wearer”. In claim 1, lines 12-13 should be revised to recite: “the of the wearer”. In claim 3, line 4, the following limitation which is unclear requires revision: “the second upper connecting strap, the lower connecting strap being located longitudinally…”. In claim 3, the claim should be revised so that it ends with a period “.”. In claim 7 line 1: “claim 6” should be “claim 1” (since claim 6 was cancelled). In claim 13, lines 1-2 should be revised to recite: “…a polymer In claim 13, the claim should be revised so that it ends with a period “.”. In claim 20 line 2: “manually” should be “manual”. In claim 20 line 3: “lower connecting strap” should be “lower adjustable connecting strap”. Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 5, 7, 16-17, and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 5 recites the limitation "the lateral and medial reinforcing struts" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Claim 7 recites the limitation "the first material" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 7 recites the limitation "the second material" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 16 recites the limitation "the lateral and medial reinforcing struts" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 17 recites the limitation "the lateral and medial reinforcing struts" in line 4. There is insufficient antecedent basis for this limitation in the claim. Claim 19 recites the limitation "the lateral and medial reinforcing struts" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 19 recites the limitation "the chosen upright extension" in line 3. There is insufficient antecedent basis for this limitation in the claim. Claim Rejections - 35 USC § 101 35 U.S.C. 101 reads as follows: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Section 33(a) of the America Invents Act reads as follows: Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism. Claim(s) 1-5, 7, and 10-20 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Specifically, Claims 1-5, 7, and 10-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 1 positively recites part of the human body in combination with the device, as for example: in claim 1, the limitation reciting “…the lateral and medical sidewalls each extending from the rear portion toward a toe…and each extending beyond a talus of the wearer’s foot…” of the claim encompasses a human being. It has been held that a claim directed to or including within its scope, a human being will not be considered to be patentable subject matter under 35 U.S.C. 101. The grant of a limited, but exclusive property right in a human being is prohibited by the constitution. Accordingly, proper procedure where a claim is directed to an apparatus “attached to” the human body or any part thereof is to reject such claim under 35 U.S.C 101 with an explanation that, because the claim positively recites a part of the human body, it is directed to nonstatutory subject matter. See Animals – Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987). Therefore, for at least this reason, claim 1 has been rejected under 35 USC 101. It is suggested that the claim be amended as follows in order to overcome this rejection: “…the lateral and medical sidewalls each configured for extending from the rear portion toward a toe…and each configured for extending beyond a talus of the wearer’s foot…”. Claims 2-5, 7, and 10-20 each depend directly or indirectly from a rejected claim and, therefore, contain the same deficiencies as the claims from which they depend. Claim Rejections - 35 USC § 102 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 1-5, 7, and 10-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ferlic et al (US 20190224032 A1). With respect to claim 1, Ferlic discloses an external ankle brace (50; fig 2; claim 1; para [0005;0031]) for selectively restricting movement of an ankle in a first direction and selectively permitting movement of the ankle in a second direction (para [0005]; claim 1), wherein the external ankle brace is configured to be disposed on the exterior of a shoe (para [0005], fig 1) the shoe having a heel portion, a toe portion longitudinally spaced from the heel portion, a sole, and oppositely disposed sides (para [0005]; fig 1), the external ankle brace comprising: a heel enclosure (10; fig 2; para [0005;0032]; claim 1) having a rear portion (12; fig 3; para [0005;0032]; claim 1) and a forward portion (14; fig 2; para [0005;0032]; claim 1) , the rear portion configured to receive and at least partially encircle the heel portion of the shoe (para [0005]), the forward portion having a medial sidewall (16; para[0005;0032]) and a lateral sidewall (18; para [0005;0032]) for collectively and concurrently at least partially encircling the sides of the shoe concurrent with the rear portion connecting the medial and lateral sidewalls to collectively at least partially encircle the sides (para [0005]; claim 1), and fully encircle the heel portion of the shoe (para [0005]), the lateral and medial sidewalls each extending from the rear portion toward a toe of a wearer's foot and each extending beyond a talus of the wearer's foot (para [0005;0033]); a lateral upright extension (20; para [0005;0035]) selectively perpendicular to the heel enclosure and pivotally attached to the lateral sidewall (para [0005;0035]); a medial upright extension (22; para [0005;0038]) selectively perpendicular to the heel enclosure and pivotally attached to the medial sidewall (para [0005;0038]); a lower fastening system (24; fig 2; para [0005;0031;0042]) comprising at least one lower adjustable connecting strap (26; fig 2; para [0005;0042]) for connecting the lateral sidewall to the medial sidewall and extending underneath the sole of the shoe (para [0005;0042]); and an upper fastening system (28; fig2; para [0005;0043]) comprising at least one upper connecting strap (30; para [0005;0043]) for selectively connecting the lateral sidewall to the medial sidewall across the top of the shoe (para [0005;0043]) (see also claim 1). With respect to claim 2, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses an upright fastening system (40; fig 1; para [0045]; claim 1) comprising at least one upright connecting strap (42; para [0045]) for selectively connecting the lateral upright extension to the medial upright extension above the ankle (para [0045])(see also claim 2). With respect to claim 3, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses a second embodiment of the external ankle brace (external ankle brace 50′ of FIGS. 7-13 is similar to the external ankle brace 50 of FIGS. 1-6 and therefore, structures of FIGS. 7-13 that are the same as or similar to those described with reference to FIGS. 1-6 - para [0046]) wherein the upper connecting strap is a second upper connecting strap (100; para [0048]), and the upper fastening system includes a first upper connecting strap (30’; para [0048]) for selectively connecting the lateral sidewall to the medial sidewall across the top of the shoe (para [0048]), the second upper connecting strap, the lower connecting strap being located longitudinally between the second upper connecting strap and the lateral and medial upright extensions (claim 3 on pg 8). With respect to claim 4, Ferlic discloses the external ankle brace as claimed (see rejection of claim 3) and Ferlic also discloses that the second upper connecting strap is longitudinally wider than the first upper connecting strap (para [0050]; claim 4). With respect to claim 5, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses that the lateral and medial reinforcing struts are malleable and configured to accept and maintain a nonplanar shape profile, to at least partially impart the nonplanar shape profile to the corresponding lateral or medial upright extension (para [0054]; claim 5). With respect to claim 7, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses that the first material is a polymer and the second material is a metal (para [0056;60]; claim 7). With respect to claim 10, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses that the rear portion includes a rear reinforcing strut (para [0058]; claim 10). With respect to claim 11, Ferlic discloses the external ankle brace as claimed (see rejection of claim 10) and Ferlic also discloses the rear reinforcing strut is malleable and configured to accept and maintain a nonplanar shape profile, to at least partially impart the nonplanar shape profile to the rear portion (para [0058]; claim 11). With respect to claim 12, Ferlic discloses the external ankle brace as claimed (see rejection of claim 11) and Ferlic also discloses that the rear portion is made of a first material and the rear reinforcing strut is made of a second material which is more ductile than the first material (para [0060]; claim 12). With respect to claim 13, Ferlic discloses the external ankle brace as claimed (see rejection of claim 12) and Ferlic also discloses that the first material is a polymer (para [0060]; claim 13). With respect to claim 14, Ferlic discloses the external ankle brace as claimed (see rejection of claim 10) and Ferlic also discloses that the rear portion wholly encapsulates the rear reinforcing strut (para [0061]; claim 14). With respect to claim 15, Ferlic discloses the external ankle brace as claimed (see rejection of claim 10) and Ferlic also discloses that the rear portion is molded around the rear reinforcing strut (para [0061]; claim 15). With respect to claim 16, Ferlic discloses the external ankle brace as claimed (see rejection of claim 10) and Ferlic also discloses that the rear reinforcing strut is directly pivotally connected to the lateral and medial reinforcing struts (para [0063]; claim 16). With respect to claim 17, Ferlic discloses the external ankle brace as claimed (see rejection of claim 10) and Ferlic also discloses that the rear reinforcing strut includes a curved rear strut body extending around the heel portion of the shoe and lateral and medial strut stubs extending substantially perpendicularly from the rear strut body, at opposed locations on the rear strut body, the lateral and medial reinforcing struts being directly pivotally connected to the lateral and medial strut stubs, respectively (para [0062]; claim 17). With respect to claim 18, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses a restraining bolt connected to a chosen one of the lateral and medial upright extensions and operative to selectively restrict pivoting of the chosen upright extension respective to a corresponding lateral or medial sidewall (para [0063]; claim 18). With respect to claim 19, Ferlic discloses the external ankle brace as claimed (see rejection of claim 16) and Ferlic also discloses a restraining bolt connected to a chosen one of the lateral and medial reinforcing struts and operative to selectively restrict pivoting of the chosen upright extension respective to the rear reinforcing strut (para [0063]; claim 19). With respect to claim 20, Ferlic discloses the external ankle brace as claimed (see rejection of claim 1) and Ferlic also discloses that the upper connecting strap has a variable length fastening operable for manually adjustment by a wearer to a predetermined length, and the lower connecting strap has a constant length and is not manually adjustable by a wearer (para [0053]; claim 20). Double Patenting NON-STATUTORY 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 §§ 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. Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 11957611 (‘611 patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘611 patent differ in that the patented claims include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘611 Patent is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘611 patent and, therefore, is not patentably distinct from claim 1 of the ‘611 patent. All of the limitations of claim 2 can be found in claim 7 of the ‘611 Patent. Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11497644 (‘644 patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘644 patent differ in that the patented claims include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘644 Patent is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘644 patent and, therefore, is not patentably distinct from claim 1 of the ‘644 patent. All of the limitations of claim 2 can be found in claim 2 of the ‘644 Patent. Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 11413180 (‘180 patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘180 patent differ in that the patented claims include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘180 Patent is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘180 patent and, therefore, is not patentably distinct from claim 1 of the ‘180 patent. All of the limitations of claim 2 can be found in claim 6 of the ‘180 Patent. Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12121466 (‘466 patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘466 patent differ in that the patented claims include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘466 Patent is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘466 patent and, therefore, is not patentably distinct from claim 1 of the ‘466 patent. All of the limitations of claim 2 can be found in claim 4 of the ‘466 Patent. Claims 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 22 of U.S. Patent No. 12403031 (‘031 patent). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘031 patent differ in that the patented claims include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘031 Patent is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘031 patent and, therefore, is not patentably distinct from claim 1 of the ‘031 patent. All of the limitations of claim 2 can be found in claim 22 of the ‘031 Patent. Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. US 2025/0169976 (reference application; ‘976 application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘976 application differ in that the claims in the ‘976 application include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘976 application is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘976 application and, therefore, is not patentably distinct from claim 1 of the ‘976 application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. US 2025/0041094 (reference application; ‘094 application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘094 application differ in that the claims in the ‘094 application include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘094 application is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘094 application and, therefore, is not patentably distinct from claim 1 of the ‘094 application. All of the limitations of claim 2 can be found in claim 7 of the ‘094 Patent This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. US 2025/0009543 (reference application; ‘543 application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘543 application differ in that the claims in the ‘543 application include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘543 application is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘543 application and, therefore, is not patentably distinct from claim 1 of the ‘543 application. All of the limitations of claim 2 can be found in claim 7 of the ‘543 Patent This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of copending Application No. US 2026/0090903 (reference application; ‘903 application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the present application and claim 1 of the ‘903 application differ in that the claims in the ‘903 application include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘903 application is in effect a “species” of the broader, “generic” invention recited in claim 1 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 1 of the present application is anticipated by claim 1 of the ‘903 application and, therefore, is not patentably distinct from claim 1 of the ‘903 application. All of the limitations of claim 2 can be found in claim 7 of the ‘903 Patent This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Citation of Pertinent Prior Art The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure: US20140066829; US20130226059; US7127836; US6669659; US5776090; US5571078; US5094232; US5069202; US6299587; US20040225241; US20120145167; US20110173841; US4611414. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN CARREIRO whose telephone number is (571)270-7234. The examiner can normally be reached M-F 7:30am-4pm. 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, Rachael Bredefeld can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /CAITLIN A CARREIRO/Primary Examiner, Art Unit 3786
Read full office action

Prosecution Timeline

Sep 25, 2023
Application Filed
Jun 03, 2026
Non-Final Rejection mailed — §101, §102, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
45%
Grant Probability
85%
With Interview (+40.1%)
3y 10m (~1y 0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 683 resolved cases by this examiner. Grant probability derived from career allowance rate.

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