DETAILED ACTION
Response to Arguments
Applicant's arguments filed 20 APR 26 have been fully considered but they are not completely persuasive.
Initially, the examiner thanks Applicant for the detailed roadmap of the claims.
With respect to clause (a), Applicant asserts, “FIG. 1 show[s] device isolated from unexploded ordnance, chemical warfare agent, etc.” (italics in original). However, a careful reading of page 5, lines 11-18, reveals this drawing figure is merely to demonstrate the features of blanket 100 and nowhere does the specification disclose that such can be isolated and separated from ordnance, agent, etc., while being deployed. That said, to the degree isolation and separation inheres in deploying the blanket underwater, e.g., at step 403, e.g., Fig. 4, prior to its covering of the ordnance, agent, etc., clause (a) would appear to have adequate support.
With respect to clause (b), Applicant’s assertion appears sufficient, i.e., that “cover” does not necessarily require entirely enclosing the ordnance, agent, etc. However, the “or” portion of the “and/or” limitation at the end of clause (a) does not appear to have adequate support because the entire point of the blanket is to neutralize unexploded ordnance (UXO). That is, Applicant has not disclosed deploying the blanket underwater to dissolve only, but rather, to perform the function of neutralizing UXO. Thus, that limitation requires amendment or clarification of the record as to where support for such can be found.
Regarding the non-statutory double patenting rejection, unfortunately such cannot be held in abeyance, but rather, must be overcome by persuasive argument(s) against such or an approve terminal disclaimer.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 18-31 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Re: claim 18, see above regarding “and/or” limitation.
Any unspecified claim is rejected as being dependent upon a rejected base claim.
The claims will be further treated on the merits as best understood only.
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 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,038,266. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims recite and thus fairly cover the instant claims. See previous office action for details and rationales noted above for support of key features of claim 18. Specifically, when the blanket is deployed underwater some degree of isolation and separation from UXO inheres at least until such is brought into contact therewith. With respect to claims 32-37, the method appears to be fairly covered by the patent.
Evidence contrary to any of the above is welcome. No attempt to contact the Applicant was made because the discussion likely would have required more time than allotted. To the extent possible, the examiner can be available to discuss further, if desired.
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 should be directed to Bret Hayes at telephone number (571) 272 – 6902, fax number (571) 273-6902, or email address bret.hayes@uspto.gov, which is preferred, especially for requesting interviews, general questions, etc. Note, however, that return correspondence cannot be made in the event that information subject to the confidentiality requirement as set forth in 35 U.S.C. § 122 has been included. See MPEP §§ 502.03 and 713.01, I, regarding email communications. The examiner can normally be reached Mondays through Fridays from 5:30 AM to 1:30 PM, Eastern.
The Central FAX Number is 571-273-8300.
If attempts to contact the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers, can be reached at (571) 272 – 6874.
/Bret Hayes/
Primary Examiner, Art Unit 3641
2-Jun-26
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