DETAILED ACTION
Response to Amendment
The amendment filed on 24 November 2025 is acknowledged.
Response to Remarks
Remarks filed 24 November 2025 which remain applicable to rejections below request for a more detailed rationale showing how particular claims of prior patents pertain to the instant claims (Rem. 21), which more detailed rationale is set forth in this Office action. Applicant’s Representative is encouraged to contact the Examiner directly for further discussion in this regard and/or regarding any other outstanding issues, particularly if it is believed that such a discussion will help to advance prosecution.
Claim Objections
Claims 15-23 are objected to because of the following informalities:
The comma ending line 6 of claim 15 should be changed to a colon “:”.
At line 2 of claim 23, the term “further” should be deleted.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
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 15-17 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,836,077. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
As to instant claim 15, the patented claims recite a system for fabricating a colored powder coating composition from a solid input filament, the system comprising an electronic fabricator controller connected by at least one bus to a filament feeder, and a filament mixer comprising the claimed housing, heating element, mixing mechanism, and nozzle opening, in addition to an extrudate receiving platform and extrudate powder mill corresponding to those claimed (see patented claim 1, in addition to patented claims 3, 4, 6, and 8 as relevant).
With respect to the claimed accessory port for receiving into the mixing chamber a functional input component, it is noted that a manner operating a device does not distinguish over conflicting subject matter disclosing all the structural limitations thereof (MPEP § 2114(II)) and that an intended material or article worked upon does not limit an apparatus claim (MPEP § 2115). In this regard, patented claim 1 further recites a plurality of filament inlets, whereby one of such filament inlets may be construed as the instantly claimed filament inlet for receiving into the mixing chamber a first solid input filament, and whereby another of such filament inlets may be construed as the claimed accessory port for receiving into the mixing chamber a functional input component in the form of another solid input filament. Further to this latter interpretation, it is noted that while the instant specification sets forth further limitations whereby an accessory port is used for adding functional input components “that are not in filament form” (p. 18 [0063]) or that an accessory port may have a “threaded connection” that is “either internal or external” (p. 19 [0068]), such further limitations are not presently specified by the instant claims in a manner that would distinguish either over the above other solid input filament or otherwise structurally over the patented other inlet(s). Further, the instant specification in fact provides explicit coverage for “functional input components” potentially taking filament form (final two lines of [0062] at p. 18), thereby furthering the notion that the above-cited patented other filament could be reasonably construed as the claimed functional input component.
It is noted that the patented claims further recite additional components corresponding to one or more of the dependent claims, with the patented claim 1-3 feeder, spool, and/or driver corresponding to at least the instant claim 16-17 component vessel and/or metering mechanism, and with at least the instant claim 23 connection arguably provided via the patented claim 3 tube or arguably inherent to one or more of the patented claim 1-3 feeder, spool, and/or driver.
Claims 15-17 and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,904,505. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
As to instant claim 15, the patented claims recite a system for fabricating a colored powder coating composition from a solid input filament, the system comprising an electronic fabricator controller comprising a bus and connected to a filament feeder, and a filament mixer comprising the claimed housing, heating element, mixing mechanism, and nozzle opening, in addition to an extrudate receiving platform and extrudate powder mill corresponding to those claimed (see patented claim 1, in addition to patented claims 7 and 8 as relevant).
With respect to the claimed accessory port for receiving into the mixing chamber a functional input component, it is noted that a manner operating a device does not distinguish over conflicting subject matter disclosing all the structural limitations thereof (MPEP § 2114(II)) and that an intended material or article worked upon does not limit an apparatus claim (MPEP § 2115). In this regard, patented claim 1 further recites first and second filament inlets, whereby the first such filament inlets may be construed as the instantly claimed filament inlet for receiving into the mixing chamber a first solid input filament, and whereby the second such filament inlets may be construed as the claimed accessory port for receiving into the mixing chamber what the patented claims recite explicitly as a functional-input filament corresponding to the claimed functional input component. Further to this latter interpretation, it is noted that while the instant specification sets forth further limitations whereby an accessory port is used for adding functional input components “that are not in filament form” (p. 18 [0063]) or that an accessory port may have a “threaded connection” that is “either internal or external” (p. 19 [0068]), such further limitations are not presently specified by the instant claims in a manner that would distinguish either over the above functional-input filament or otherwise structurally over the patented second inlet. Further, the instant specification in fact provides explicit coverage for “functional input components” potentially taking filament form (final two lines of [0062] at p. 18), thereby furthering the notion that the above-cited patented functional-input filament could be reasonably construed as the claimed functional input component.
It is noted that the patented claims further recite additional components corresponding to one or more of the dependent claims, with the patented claim 1-2 feeder, driver, and/or spool corresponding to at least the instant claim 16-17 component vessel and/or metering mechanism, and with at least the instant claim 23 connection arguably provided via the patented claim 3 tube or arguably inherent to one or more of the patented claim 1-2 feeder, driver, and/or spool.
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 Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Atul P. Khare/Primary Examiner, Art Unit 1742