DETAILED ACTION
This office action is in response to the communication filed by the applicant on 07/01/2024. The current application is a continuation of 18/208,666 which claims its earliest priority to provisional application 63/147,826. Because all of the requirements for claiming priority are met, the current application has an effective filing date of 02/10/2021. There is only one claim that is pending and examined on the merits.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,059,699.
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter of claim 1 of the instant application is anticipated by claim 1 of the US Patent. Below table shows a detailed comparison of important portions both claims (are underlined) to support the finding of Double Patenting.
Current application 18/760,535
US Patent No. 12,059699 B2
a method of making a plural component spray foam comprising:
providing,
via a computer-controlled proportioner, part A and part B material streams through respective part A and part B material stream flow paths to a spray foam applicator,
the part A and part B material streams delivered in metered amounts from corresponding unpressurized part A material and part B material containers,
the part A and part B material streams pressurized at an amount configured to deliver a spray foam from an end of a mixing nozzle of the spray foam applicator at a pressure of 250 pounds per square inch or less;
receiving, by the spray foam applicator, the part A and part B material streams at corresponding part A and part B material stream input locations from material supply conduits and air into each of the part A and part B material streams at a forward location of each of the respective part A and part B material stream input locations,
where the air is input into each of the part A and part B material streams forward of an end of the spray foam applicator and each of the part A and part B material streams each having the air input therein are conveyed to exit at the end of the spray foam applicator having the mixing nozzle removably engaged thereon; and
dispensing a plural component foam from the end of the mixing nozzle.
A method of making a plural component spray foam comprising:
a) providing a first and a second spray foam (“SPF”) raw material supply container each comprising: i) a part A material; and ii) a part B material, wherein each of the part A and part B materials are each, independently, delivered from unpressurized containers, b)
communicating part A and part B material streams from the unpressurized containers via a computer-controlled proportioner through respective part A and part B material stream flow paths to a spray foam applicator,
wherein: i) the computer-controlled proportioner is configured with instructions for:
conveying each of the part A and part B materials streams in metered amounts from each SPF raw material supply container through respective material conduits to the spray foam applicator;
pressurizing each of the part A and part B material streams at an amount configured to deliver a spray foam from an end of a mixing nozzle at a pressure of 250 pounds per square inch or less; and
the spray foam applicator is configured to: receive each of the part A and part B material streams from material supply conduits at each of a part A material stream input location and a part B material stream input location;
input air into each of the part A and part B material streams at a forward location of each of the respective part A and part B material stream input locations, wherein the air is input into each of the part A and part B material streams at a location forward of an end of the spray foam applicator;
convey each of the part A and part B material streams each having air input therein to exit at the end of the spray foam applicator having the mixing nozzle removably engaged thereon; and c)
dispensing a plural component foam from the end of the mixing nozzle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL J PANCHOLI whose telephone number is (571)272-9324. The examiner can normally be reached Monday - Thursday (9 am - 7 pm).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Paul Durand can be reached at 571-272-4459. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Vishal Pancholi/Primary Examiner, Art Unit 3754
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