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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 24 November 2025 has been entered.
Double Patenting
Nonstatutory:
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 1-4, 6-8 and 15-19are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 8, 15-17 and 14, respectively, of U.S. Patent No. 11,543,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent include and anticipate every limitation of each respective claim in the application, except for the limitation in claim 1 that the container has an internal volume ranging from 1 to 50 mL. One of ordinary skill in the art would have known that containers in the size range of 1 to 50 mL are known and readily available. It would have been obvious to one of ordinary skill in the art to have substituted any known size of container in the range of 1 to 50 mL, because such a substitution could have been in a known way by using it in the same way that any other size container is used; furthermore, such a substitution would have yielded only predictable results because it would have yielded the same results as any container that can hold proportional amounts of sample and solvent.
Claims 20-22 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 10, respectively, of U.S. Patent No. 11,977,011. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of the patent include and anticipate every limitation of each respective claim in the application, except for the limitation in claim 20 that the container has an internal volume ranging from 1 to 50 mL. One of ordinary skill in the art would have known that containers in the size range of 1 to 50 mL are known and readily available. It would have been obvious to one of ordinary skill in the art to have substituted any known size of container in the range of 1 to 50 mL, because such a substitution could have been in a known way by using it in the same way that any other size container is used; furthermore, such a substitution would have yielded only predictable results because it would have yielded the same results as any container that can hold proportional amounts of sample and solvent.
Allowable Subject Matter
Claims 1-4, 6-8, 15-22 and 29 would be allowable if the non-statutory double patenting rejection were overcome by the filing of properly executed terminal disclaimers.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 1, Jiang et al. do not disclose or suggest the limitation that the terpenes are eluted from the medium and injected into a chromatography instrument in a single step.
With regard to claim 20, Cais et al. (US 4,510,058) fail to teach or suggest the limitation of the cap being configured to sealably cover and fasten to the open end of the container portion to fixedly suspend the medium over the container portion and the sample therewithin. The cap of Cais et al. is designed to be pushed almost completely down into the container so that the medium in the cap fills a good portion of the container. The only situation where the cap is situated so that the medium is suspended over the container portion and sample is when the bottom of the elongated cap is just barely in the opening of the container, and this configuration could never be fastened to the open end this way because it meant to be pushed down into the container and not remain at this position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M WEST whose telephone number is (571)272-2139. The examiner can normally be reached M-F 9 am - 5:30 pm (CT).
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/PAUL M. WEST/Primary Examiner, Art Unit 2855