DETAILED ACTION
Claims 1-20 are presented for examination.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937 (CCPA 1982); In re Vogel, 422 F.2d 438 (CCPA 1970); In re Thorington, 418 F.2d 528 (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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of copending Application No. 18/956592 (reference application), published as Lee et al (US 2025/0167397). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/930198 (reference application), published as Seo et al (US 2025/0349975). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-5, 10-11, 15-16, and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, 6, 13-15, and 17-18 of copending Application No. 18/851211 (reference application), published as Seo et al (US 2025/0219248). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/797175 (reference application), published as Kim et al (US 2025/0167313). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 8-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-11, and 13-14 of copending Application No. 18/792834 (reference application), published as Park (US 2025/0167392). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 8-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/739471 (reference application), published as Lee et al (US 2025/0149734). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims overlap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Art of Record
The following is a statement of reasons for the indication of allowable subject matter: none of the timely art of record teaches or suggests the claimed separator of claim 1, from which the other claims depend or incorporate by reference, specifically the claimed components, each with the specifically claimed properties and compositions, the claimed separator comprising:
(1) a substrate;
(2) a heat resistant adhesive layer on one surface of the substrate; and
(3) a heat resistant layer on another surface of the substrate, wherein:
the heat resistant adhesive layer includes:
(2a) first inorganic particles, and
(2b) a swellable adhesive binder, the swellable adhesive binder includes:
(2b1) a first structural unit derived from a vinyl aromatic monomer,
(2b2) a second structural unit derived from an alkyl acrylate monomer, and
(2b3) a third structural unit derived from a phosphonate monomer, and
the heat resistant layer includes:
(3a) second inorganic particles, and
(3b) a heat resistant binder.
See also the instant specification, at e.g. ¶¶ 0005-06, 41-44, 48, 52-53, 75, 126, 142, and 234.
Conclusion
The art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wong et al (US 2026/0246091);
Kim et al (US 2026/0229704);
Seo et al (US 2026/0163178);
Lee et al (US 2025/0337121);
Lee et al (US 2025/0337113);
Han et al (US 2025/0337112);
Lee (US 2025/0337108);
Lee et al (US 2025/0337102);
Lee et al (US 2025/0316841);
Park et al (US 2025/0202051);
Seo et al (US 2025/0219248);
Lee et al (US 2025/0202045);
Kim et al (US 2025/0141045);
Choi et al (US 2025/0038357);
Choi et al (US 2025/0030128);
Lee et al (US 2025/0030124);
Honda et al (US 2022/0200098);
Kim et al (US 2022/0029244);
Jang et al (US 2021/0184314);
Choi et al (US 2020/0388808);
Ko et al (US 2018/0294458); and,
Seo et al (US 2017/0338461).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOSHITOSHI TAKEUCHI whose telephone number is (571)270-5828. The examiner can normally be reached M-F, 8-4.
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, TIFFANY LEGETTE-THOMPSON can be reached at (571)270-7078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YOSHITOSHI TAKEUCHI/Primary Examiner, Art Unit 1723
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