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 .
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 6-12 of copending Application No. 18/681,681 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant claims 1-3 and 12-13 are taught by the reference claims 1, 4, and 6-9, except that the reference claim 1 does not state that the vapor-deposited coating of a barrier polymer is transparent, or that it provides a reduction in microorganism touch transfer of at least 20% (as required by claims 1 and 12) or at least 50% (as required by claims 3 and 13), or provides increase wet out of cleaning solvent that is an isopropanol or isopropanol-based solution (as required by claim 2) compared to an identical tube without the transparent vapor-deposited coating. However, the reference claims 1 and 6-7 indicate that the vapor-deposited coating of a barrier polymer is a parylene such as parylene N or C, which is transparent as evidenced by Optical Clarity of Parylene at Increased Thickness (Optical Clarity of Parylene at Increased Thickness, Page 4). Furthermore, regarding the increased wet out and reduction in microorganism touch transfer, the vapor-deposited coating of a barrier polymer of the reference Application is identical to the vapor-deposited coating of a barrier polymer of the instant claims 1-3 and 12-13. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), see MPEP 2112.01. The reference claims 1 and 6-9 teaches a parylene N or C barrier coating with a thickness of 2-5 micrometers, which is the same as the instant application per the instant claims 5-8. Furthermore, the instant specification Pages 20-24 states that a parylene coating results in the reduction of microorganism touch transfer, and includes an example of a 4.56 micrometer parylene C coating (E1) that has a reduction of microorganism touch transfer that lies within the claimed range. The reference claims 1 and 6-9 teach a vapor-deposited barrier coating that is identical to the claimed invention. Therefore, absent objective evidence to the contrary, vapor-deposited polymer coating barrier would inherently provide the claimed reduction in microorganism touch transfer and increased wet out of cleaning solvents that comprise isopropanol or an isopropanol-based solution.
The instant claims 4 and 14 are taught by the reference claim 2.
The instant claims 5-6 and 15 are taught by the reference claims 6-7.
The instant claims 7 and 16 are taught by the reference claim 8.
The instant claim 8 is taught by the reference claim 9.
The instant claim 9 is taught by the reference claim 10.
The instant claim 10 is taught by the reference claim 11.
The instant claim 11 is taught by the reference claim 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s remarks and amendments filed 17 March 2026 have been fully considered.
Applicant requests the double patenting rejections be held in abeyance.
The double patenting rejections have been updated above in view of the present claim amendments.
Applicant requests withdrawal of the rejections under 35 USC § 112 set forth in the previous office action.
The rejections under 35 USC § 112 set forth in the previous office action have been withdrawn due to the present claim amendments.
Applicant argues that the prior art of record does not teach the features of newly amended claim 1. This is found persuasive.
The previous grounds of rejection under 35 USC § 103 have been withdrawn due to the present claim amendments. The prior art of record does not teach a crack in the vapor-deposited coating.
To note, the only rejections to the claims are the double patenting rejections above. Should the double patenting rejections above be overcome, the instant claims 1-16 would be allowable.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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