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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/20/2026 has been entered.
Claims 1-13 are pending in the application.
Response to Arguments
Applicant's arguments filed 7/20/2026 regarding the art rejections of record are persuasive in view of the corresponding amendments, and those rejections are withdrawn
The double patenting rejections of record are maintained or modified as discussed below; applicant did not traverse the merits of the double patenting rejections.
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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/772,572 (reference application).
Claims 1-7 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,616,841. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent recites overlapping requirements for substrate, hydrophilic monomers, and the like.
Instant claim 1 is at minimum obvious over reference claim 2 which teaches the monomers and teaches substrates which may include polyethylene (which would at least render obvious the ultra high molecular weight polyethylene recited by the instant invention); examiner notes that, although the reference application employs “actinic radiation” that is not specifically electron beam radiation, the invention of instant claim 1 and reference claim 2 is a product claim, and so the specific scope of process limitations in a product-by-process interpretation are not sufficient to patentably distinguish.
Instant claim 2 corresponds to reference claim 4. Instant claim 6 corresponds to reference claim 5. Instant claim 7 corresponds to reference claim 9. Regarding instant claims 3-5, the reference application in claim 1 recites specific monomers which satisfy instant claims 3-5, i.e. by including e.g. three secondary amino or three tertiary amino structures. See e.g. reference Formula (VII) or Formula (XIV).
Claims 1-7 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,420,239 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patents recites overlapping subject matter for substrate, hydrophilic monomers, and the like.
Instant claim 1 is at minimum obvious over reference claim 2 which teaches the monomers and teaches substrates which may include polyethylene (which would at least render obvious the ultra high molecular weight polyethylene recited by the instant invention). The reference patent employs electron beam radiation for formation of the product.
Instant claim 2 corresponds to reference claim 3. Instant claim 6 corresponds to reference claim 5. Instant claim 7 corresponds to reference claim 6. Regarding instant claims 3-5, the reference application in claim 1 recites specific monomers which satisfy instant claims 3-5, i.e. by including e.g. three secondary amino or three tertiary amino structures. See e.g. reference Formula (VII) or Formula (XIV).
Allowable Subject Matter
Claims 8-13 are allowed. Additionally, claims 1-7 are free from the prior art but are subject to double patenting rejections as discussed above, and for reasons discussed in applicant’s remarks dated 7/20/2026.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY R SPIES whose telephone number is (571)272-3469. The examiner can normally be reached Mon-Thurs 8AM-4PM.
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/BRADLEY R SPIES/Primary Examiner, Art Unit 1776
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