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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/15/25 has been entered.
Claim Status
Claims 163, 164, 169, 170, 172-191 are pending and are examined. Claims 1-162, 165, 166, 167, 168, and 171 are cancelled.
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 163, 164, 169, 170, 172-191 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 11,969,702. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 163 in the instant application is broader than claims 1 and 13 in US Patent 11,969,702 and therefore encompassed by claims 1 and 13 of USP 11,969,702. The dependent claims in the instant application are the same or very similar to the claims of the patent, with some limitations in claim 1 (such as the draft angle) and the rest of the limitations in the dependent claims in US Patent 11,969,702. Similarly for the method claims, although the claims at issue are not identical, they are not patentably distinct from each other because claim 181 in the instant application is broader than claim 16 in US Patent 11,969,702 and therefore encompassed by claim 16 of USP 11,969,702.
Response to Arguments
Applicant's arguments, see page 8 regarding the nonstatutory double patenting, filed 11/15/25, have been fully considered but they are not persuasive.
On page 8, Applicant “respectfully traverse this basis of rejection and submit that the Office has not indicated that the present claims are allowable. The present claims may be considerably amended during prosecution.”
In response, the examiner notes that the nonstatutory double patenting rejection is maintained due to the instant claims being encompassed by the claims in US Patent 11,969,702. Due to the amended claims in RCE 11/15/25, the reasoning nonstatutory double patenting rejection in the Double Patenting section above was updated.
Applicant’s arguments, see pages 9 and 10, filed 11/15/25, with respect to 112b rejection have been fully considered and are persuasive. The 112b rejection of claims 168, 169, and 187 has been withdrawn.
Applicant’s arguments, see pages 11 and 12, filed 11/15/25, with respect to the 102 and 103 rejections have been fully considered and are persuasive. The 102 and 103 rejections has been withdrawn in light of the amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE BRAZIN whose telephone number is (571)270-1457. The examiner can normally be reached M-F 8-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jill Warden can be reached at 571-272-1267. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JB/
/JILL A WARDEN/ Supervisory Patent Examiner, Art Unit 1798