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 .
Response to Amendment
The amendments filed 8/10/2026 are entered and fully considered.
Applicant amended the claims to be patentably distinct from the claims cited in the double patenting rejection. However, the limitations added by amendment narrow the claim scope but fall within the claim scope of the patented claims.
For claim 38, the examiner notes that the patented claims in US 9,461,309 are directed to the genus (all protic acids) while the examined claims are directed to specific species. However, the content of the US 9,461,309 further states that the embodiments of protic acid includes nitric acid, hydrochloric acid, hydrofluoric acid and hydrobromic acid column 4 lines 42-44. Accordingly, the examiner is not persuaded that the species of protic acid added by limitation are patentably distinguished from the generic reference to protic acids when the embodiments describe the same acids. Likewise, the generic reference to a passivating compound is described at column 8 lines 12-16.
Again for claim 38, the patented claim 3 in US 10,211,454 “provides” a hydrogen passivated particle. However, the disclosure indicates that this providing step is actually a passivation step with protic acid column 3 line 55+ where the protic acid is taught in the embodiments as nitric acid, hydrochloric acid, hydrofluoric acid and hydrobromic acid column 4 lines 57-59. Accordingly, the providing step in claim 3 of US 10,211,454 is not distinguished from the treatment with protic acid step of claim 38. The passivated particles can further be passivated with a group of compounds which are the same as those currently claimed column 4 lines 22-28. Accordingly, the treatment with a passivated particle with a compound listed in pending claim 38 is not patentably distinct.
In contrast, the solvents added by amendment to claim 39 are different from the non-competing solvents described in US 10,211,454. The double patenting for claim 39 is removed but a 112 issue regarding the solvent is made below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 39 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 39 is amended to require that the solvent is selected from NMP, DMSO, THF, nitromethane, HMPA, DMF and sulfalone. However, the claim also requires that the solvent comprises benzene. If the solvent is selected from the list, it does not also include benzene. The claim needs to more clearly refer to a solvent in addition to benzene. The double patenting rejection is removed because the non-competing solvents described in the patented claims are different from the solvents of the examined claims.
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.
Claim 38 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of U.S. Patent No. 9,461,309. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims in US 9,461,309 are directed to the genus (all protic acids) while the examined claims are directed to specific species. However, the content of the US 9,461,309 further states that the embodiments of protic acid includes nitric acid, hydrochloric acid, hydrofluoric acid and hydrobromic acid column 4 lines 42-44. Accordingly, the examiner is not persuaded that the species of protic acid added by limitation are patentably distinguished from the generic reference to protic acids when the embodiments describe the same acids. Likewise, the generic reference to a passivating compound is described at column 8 lines 12-16.
Claim 38 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 10,211,454. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim 3 in US 10,211,454 “provides” a hydrogen passivated particle instead of treating with one of the claimed protic acids. However, the disclosure indicates that this providing step is actually a passivation step with protic acid column 3 line 55+ where the protic acid is taught in the embodiments as nitric acid, hydrochloric acid, hydrofluoric acid and hydrobromic acid column 4 lines 57-59. Accordingly, the providing step in claim 3 of US 10,211,454 is not distinguished from the treatment with protic acid step of claim 38. The passivated particles can further be passivated with a group of compounds which are the same as those currently claimed column 4 lines 22-28. Accordingly, the treatment with a passivated particle with a compound listed in pending claim 38 is not patentably distinct.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/ Primary Examiner, Art Unit 1712
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