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 .
Election/Restrictions
Claims 7 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected claims, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/16/2026.
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 and 7 and rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 12,431,379 in view of Yang US 2021/0330425.
The difference between US 12,431,379 claims and the present application being that the patent claim requires one of: a solid solution having a body-centered cubic lattice structure in which cobalt and: iron, silicon, manganese, or nickel are solid-dissolved in tungsten whereas the present application US 18/732,928 claims a solid solution having a body-centered cubic lattice structure in which nickel and: manganese, niobium, or indium are solid-dissolved in tungsten.
Yang teaches a chuck assembly comprising the equivalent alloys of the above comprising one or more of the following:
[0112] The materials are used for manufacturing the needle files of present invention may include, but are not limited to, metals, alloys, oxides, plastics, composites, and mixtures thereof. Metals that may be used to fabricate a needle file of present invention, include, but are not limited to, Aluminum, Gallium, Indium, Tin, Thallium, Bismuth, Scandium, Titanium, Vanadium, Chromium, Manganese, Iron, Cobalt, Nickel, Copper, Zinc, Yttrium, Zirconium, Niobium, Molybdenum, Tantalum, Tungsten, Rhenium, Platinum, Gold, Cerium, Ytterbium and mixture thereof. Allows that may be used to fabricate a needle file of present invention, include, but are not limited to, Aluminum Alloys, Cobalt Alloys, Copper Alloys (Brass), Bronze (copper, tin, aluminum, or any other element), Aluminum bronze (copper, aluminum), Arsenical bronze (copper, arsenic), Nickel silver (copper, nickel), Gold Alloys, Indium Alloys, Iron or Ferrous Alloys, Steel (carbon), Stainless steel (chromium, nickel), Surgical stainless steel (chromium, molybdenum, nickel), Silicon steel, Magnesium Alloys, Mercury Alloys, Nickel Alloys, Ni—Ti alloys, Silver Alloys, Tin Alloys, Titanium Alloys, Zinc Alloys, and mixture thereof.
Allowable Subject Matter
Claims 1-6 and 8-9 would be allowable but for the double patenting rejection above and Claim 7 would be eligible for rejoinder.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL CAVALLARI whose telephone number is (571)272-8541. The examiner can normally be reached Mon-Fri 0900-18:30.
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/DANIEL CAVALLARI/Primary Examiner, Art Unit 2836
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