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 1-2 and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of copending Application No. 18/686,184 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claims 1-2 and 21 recite a metal part with a metallic substrate and an outer layer of an a-C, DLC layer comprising oxygen in an amount of 3 at% or less and does not contain hydrogen, nitrogen, or doping elements where the substrate is a plate with a thickness between 10-1000 µm. This is patentably indistinct of claim 15 of the ‘184 application which recites a part having an external surface comprising a metal substrate with a carbon-based material layer comprising less than 1 at.% oxygen calculated as the number of oxygen atoms with respect to carbon atoms in the carbon-based material layer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-2 and 21 would be allowable by signing a terminal disclaimer over copending 18/686,184 or cancelation of claim 15 of the ‘184 application. Claims 3-11 and 13-19 would also be eligible for rejoinder if claim 1 is placed in condition for allowance.
Response to Arguments
Applicant's arguments filed 09 January 2026 have been fully considered but they are not persuasive. Applicant argues the non-statutory double patenting rejection is improper as instant claim 1 recites a thickness of 10-1000 microns whereas claim 15 of the ‘184 application does not and the examiner indicated the thickness is a patentable distinction over the prior art (remarks pp.6-7). This is not persuasive as MPEP 804 (II)(b)(4) indicates only one-way determination of distinctiveness is required. As outlined above, instant claim 1 recites a metal part with an amorphous DLC layer with at most 3 at% oxygen, does not contain H, N, or doping elements, and has a substrate with a thickness. Claim 15 recites a part of a metal substrate and a carbon-based layer with 1 at% or less oxygen with optional product-by-process limitations. As such, instant claim 1 renders obvious claim 15 of the copending ‘184 application due to overlapping ranges and therefore the prior rejection is maintained. Applicant can overcome this rejection by either 1) filing the requisite terminal disclaimer or 2) canceling claim 15 of the ’184 application.
Applicant’s request for rejoinder (remarks p.7, section III) is noted and cannot be accommodated at this time as the application is not in condition for allowance. In response to the instant Office action, if applicant places the application in condition for allowance, rejoinder will be reconsidered.
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784