DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 85-104 are pending and examined.
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 85-91, 97 and 101-104 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 5, 7, 9, 10, 11, 14 and 16 of U.S. Patent No. 9187759. Although the claims at issue are not identical, they are not patentably distinct from each other because both of the above groups of claims from the instant application and the ‘759 Patent are drawn to tobacco products comprising tobacco material from a tobacco plant having a mutation in a wild type allele of nicotine demethylase having a coding sequence having at least 98% identity to SEQ ID NO: 3 as recited in the instant claims; wherein SEQ ID NO: 3 of the instant claims is the coding sequence for the amino acid sequence of SEQ ID NO: 4 recited in the claims of the ‘759 Patent.
Claims 85, 103 and 104 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of U.S. Patent No. 9913451. Although the claims at issue are not identical, they are not patentably distinct from each other because the tobacco product claims 85, 103 and 104 of the instant application are drawn to a tobacco product, cigarette, cigar, pipe, snuff and chewing tobacco, and a tobacco product that is leaf, shredded, or cut tobacco; wherein the tobacco products of claim 13 of the ‘451 Patent are specific examples or species of the generic tobacco products of instant claim 85 and the leaf, shredded, or cut tobacco products of instant claim 104 all of which are from a tobacco plant (as recited in instant claim 85 and claim 1 of the ‘451 Patent) having a mutation in a wild type allele of nicotine demethylase having a coding sequence having at least 98% identity to SEQ ID NO: 3 (instant claim 85) or that encodes an amino acid sequence having at least 98% sequence identity to SEQ ID NO: 4 as claimed in the ‘451 Patent; wherein in both the instant specification and the specification of the ‘451 Patent, SEQ ID NO: 3 encodes SEQ ID NO:4.
Claims 85, 103 and 104 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 16 of U.S. Patent No. 10383299. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim 16 of the ‘299 Patent and claim 103 of the instant claims are both drawn to cured tobacco products from tobacco plants having 98% sequence identity to SEQ ID NO: 3 consisting of cigarette, cigar, pipe, snuff and chewing tobacco and are specific examples or species of the generic tobacco products of instant claim 85; and the generic leaf, shredded, or cut tobacco products of instant claim 104 all of which are from a tobacco plant (as recited in instant claim 85 and claim 1 of the ‘299 Patent) having a mutation in a wild type allele of nicotine demethylase having a coding sequence having at least 98% identity to SEQ ID NO: 3.
Claims 85-101 and 102 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13-17 of U.S. Patent No. 11140843. Although the claims at issue are not identical, they are not patentably distinct from each other because both of the above groups of claims from the instant application and the ‘843 Patent are drawn to cured tobacco products comprising tobacco material from a tobacco plant having a mutation in a wild type allele of nicotine demethylase comprising a coding sequence having at least 98% identity to SEQ ID NO: 3.
Claims 85-104 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUSSELL KALLIS whose telephone number is (571)272-0798. The examiner can normally be reached Monday-Friday 8AM-5PM.
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/RUSSELL KALLIS/Primary Examiner, Art Unit 1663