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 .
Information Disclosure Statement
The I.D.S. has been considered. The I.D.S. has NPL documents that have been lined through. It is unclear how the objection/rejection/allowance of claims with different combination of limitations is relevant to the instant application. Without any reasoning provided by Applicant, these NPL documents have not be considered.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0001] needs to be amended to indicate Application 17/935,523 is now U.S. Patent 12,076,873.
Appropriate correction is required.
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.
Claims 1-11 are 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.
With regards to claim 1, the phrase “the at least two regions comprise three or more dissimilar materials” is unclear. It is unclear if the at least two regions, as a whole, have 3 or more as a total or if each region has 3 or more making the total 6 or more.
With regards to claim 6, The “a coating layer strength-enhancing region” is unclear. As written, this region is not part of the “at least two regions” limitation which does not appear to be supported. Claim 6 needs to disclose that the “at least two regions comprise a coating layer strength-enhancing region”.
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 1-3 and 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-9 of U.S. Patent No. 12,076,873 in view of U.S. Patent No. 9,598,761.
Patent 12,076,873 claims 4-9 substantially cover the limitations of claims 1-3 and 6-10 of the instant application but fail to disclose the at least two regions comprise three or more dissimilar materials (from claim 4) and the metal list (from claim 10). It is noted that claim 4 of Patent 12,076,873 does disclose “the at least two regions comprise dissimilar materials. The term “materials” is plural which could be interpreted as two or more as no upper boundary has been established. However, the limitation does not explicitly disclose “three”.
Patent No. 9,598,761 teaches it is known in the art of razor blade coatings featuring a metal and boron to incorporate three or more dissimilar materials as column 4 lines 34-34 discloses a list of metals which includes Cr and Nb and includes that “combinations” can be utilized which allows for three or more dissimilar materials in the coating. It would have been obvious to have utilized any known and reasonable coating including one with three or more dissimilar materials from the claimed metal list.
Patent 12,076,873 claims 4-9 incorporate an alternate claim dependency. It would have been obvious to utilized any claim dependency including the one incorporated by the instant application because the razor blade is capable of incorporating these limitations as support by the specification.
Allowable Subject Matter
Claims 4 and 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached on Monday-Friday: 7:30 am-3:30 pm.
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03 February 2026
/Jason Daniel Prone/Primary Examiner, Art Unit 3724