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 .
Response to Amendment
Claims 21-40 are pending, claims 1-20 having been cancelled. Applicant's response filed January 20, 2026 is acknowledged.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,912,960. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the ‘960 patent disclose a method of cleaning a surface by applying the claimed rinse compositions to a ware (which inherently comprises a surface) in need of rinsing.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,982,220. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the ‘220 patent teaches a method for rinsing a surface. Claim 21 uses the compositions described in claim 1. The composition of claim 1 teaches at least one nonionic alcohol ethoxylate from a group overlapping the instant claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,274,265. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the ‘265 patent teaches a method for rinsing a surface. Claim 12 uses the compositions described in claim 1. The composition of claim 1 teaches one or more nonionic alcohol ethoxylate from a group overlapping the instant claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,198,836. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of the ‘836 patent teaches a method for rinsing a surface. Claim 15 uses the compositions described in claim 1. The composition of claim 1 teaches one or more nonionic alcohol ethoxylate from a group overlapping the instant claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 10,683,466. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of the ‘466 patent teaches a method for rinsing a surface. Claim 18 uses the compositions described in claim 1. The composition of claim 1 teaches one or more nonionic alcohol ethoxylate from a group overlapping the instant claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,550,354. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the ‘354 patent teaches a method for rinsing a surface. Claim 12 uses the compositions described in claim 1. The composition of claim 1 teaches one or more nonionic alcohol ethoxylate from a group overlapping the instant claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 10,017,714. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the ‘714 patent teaches a method for rinsing a surface. Claim 21 uses the compositions described in claim 1. The composition of claim 1 teaches one or more nonionic alcohol ethoxylate from a group overlapping the instant claims.
Response to Arguments
Applicant’s arguments, see pages 8-9, filed January 20, 2026, with respect to the nonstatutory double patenting rejection over U.S. Patent No. 11,155,769 have been fully considered and are persuasive (that the ‘769 patent is a later-filed and later-expiring patent). The nonstatutory double patenting rejection of claims 21-40 over U.S. Patent No. 11,155,769 has been withdrawn.
Applicant's arguments filed January 20, 2026 regarding the remaining nonstatutory double patenting rejections have been fully considered but they are not persuasive.
Applicant’s argues that the pending claims are directed to an independent and distinct invention based on the restriction requirements in application number 15/157,124 (U.S. Patent No. 9,982,220) and 15/157,194 (U.S. Patent No. 10,017,714). First, it is noted that both restriction requirements were withdrawn and the claims were rejoined (see ‘124 application Notice of Allowance dated January 30, 2018; see also ‘194 application Notice of Allowance dated February 1, 2018). Furthermore, the nonstatutory double patenting rejections above were made based on the method claims of the respective patents. Therefore, Applicant’s arguments that the instantly pending claims are directed to an independent and distinct invention are not persuasive and the rejections are maintained.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOUGLAS LEE whose telephone number is (571)270-3296. The examiner can normally be reached M-F 7:30-4:30pm.
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/DOUGLAS LEE/Primary Examiner, Art Unit 1714