DETAILED ACTION
Claims 10-23 are pending in the present reissue application.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
The present application is a continuing reissue of 17/320,587, issued as USPN RE49,897, which is a reissue application of 15/338,984, issued as USPN 10,287,254 (the ‘254 patent.)
The specification of the present reissue application has been amended so as to recite a cross reference to the prior reissue applications for the ‘254 patent, i.e., Serial No. 17/320,587. However, the 17/320,587 specification has not been amended so as to recite a cross reference to the present application. 37 CFR 1.177(a) requires that all multiple reissue applications resulting from a single patent must include as the first sentence of their respective specifications a cross reference to the other reissue application(s). See MPEP 1451(I). Since the 17/320,587 application has issued as a reissue patent, the amendments to the specification should be taken care of by Applicant by certificate of correction.
Application Data Sheet
The application data sheet (ADS) filed on January 21, 2021, is objected to because the domestic benefit information does not properly identify the present application as a reissue application of U.S. patent 10,287,254. See the, Reissue Application Filing Guide at http://www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf for more information and in particular see the screen shot on page 10 given the sample facts presented on page 9. A corrected ADS is required.
The corrected ADS should comply with 37 CFR 1.76(c)(2), which requires that any changes to an ADS be identified with markings (underline for addition, strike through for deletion). Applicant can also use the Corrected Web-based ADS. See the Quick Start Guide for Corrected Web-based ADS at https://www.uspto.gov/sites/default/fiies/documents/Corrected-WebADS-QSG.pdf.
Applicant does not need to file a Request for Corrected Filing Receipt as the Filing Receipt specifies that the present application is a reissue of application of U.S. patent 10,287,254.
Specification
The disclosure is objected to because of the following informalities: the amendment to the specification of February 29, 2024 references the present application by attorney docket number and not by application number. Additionally, the specification refers to the parent reissue application, 17/320,587 as allowed, but the ‘587 application has now been reissued.
Appropriate correction 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 10-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. RE49,897. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons.
The ‘897 patent claims the same methods as presently claimed without specifying the identity of the solvent. However, in defining the solvent, the specification of the ‘897 patent specifies that included is a mixture of water and a C3-C-6 alkanone. See column 3, lines 27-34. Therefore, the ‘897 patent would encompass using a mixture of water and a C3-C-6 alkanone as the solvent, and would therefore anticipate the present claims.
Conclusion
Claims 10-23 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
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, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
/Alan Diamond/
Patent Reexamination Specialist
Central Reexamination Unit 3991
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