Final Rejection
The communications received 08/31/2026 have been filed and considered by the Examiner. Claims 1-16 and 19-23 are pending.
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 .
Terminal Disclaimer
The terminal disclaimer filed on 03/31/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Pat No. 12,042,099 has been reviewed and is NOT accepted.
Allowable Subject Matter
Claims 1-16 and 19-23 contain allowable subject matter if the double patenting rejection is overcome, as outlined below:
Claim 1 currently requires that in addition to the method that there is also the use of a solidifying material made of two compounds that co-polymerize after being mixed in a nozzle. It is unclear why one of ordinary skill in the art would elect to do this especially as the carbomer gel being printed inside would run the risk of interfering with the curing dynamics of the mixed polymer and therefore lead to a sub-optimal 3D printed product. Therefore the limitation is not anticipated nor obvious before the effective filing date of the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Double Patenting
55. 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.
56. Claims 1-16 and 19-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 19-23 of U.S. Patent No. 12,042,999 hereinafter ‘999. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
57. Claim 1 of ’999 discloses the method steps of claim 1.
58. Claim 2 of ‘999 discloses the method step of claim 2.
59. Claim 3 of ‘999 discloses the method step of claim 3.
60. Claim 4 of ‘999 discloses the method step of claim 4.
61. Claim 5 of ‘999 discloses the method step of claim 5.
62. Claim 6 of ‘999 discloses the method step of claim 6.
63. Claim 7 of ‘999 discloses the method step of claim 7.
64. Claim 8 of ‘999 discloses the method step of claim 8.
65. Claim 9 of ‘999 discloses the method step of claim 9.
66. Claim 10 of ‘999 discloses the method step of claim 10.
67. Claim 11 of ‘999 discloses the method step of claim 11.
68. Claim 12 of ‘999 discloses the method step of claim 12.
69. Claim 13 of ‘999 discloses the method step of claim 13.
70. Claim 14 of ‘999 discloses the method step of claim 14.
71. Claim 15 of ‘999 discloses the method step of claim 15.
72. Claim 16 of ‘999 discloses the method step of claim 16.
75. Claim 19 of ‘999 discloses the method step of claim 19.
76. Claim 20 of ‘999 discloses the method step of claim 20.
77. Claim 21 of ‘999 discloses the method step of claim 21.
78. Claim 22 of ‘999 discloses the method step of claim 22.
79. Claim 23 of ‘999 discloses the method step of claim 23.
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 Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/E.V./Examiner, Art Unit 1748 /Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748
Prosecution Insights