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
In response to the Amendment received on 12/11/2025, the examiner has carefully considered the amendments.
Terminal Disclaimer
The terminal disclaimer filed on 12/11/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,578,431 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 21-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,104,287. Although the claims at issue are not identical, they are not patentably distinct from each other because they appear to comprise overlapping subject matter. Both the instant and co-pending claims set forth a method of making a fiber. US’287 sets forth in the method combining a polymer component, a solvent, and an epoxy to form a composition, the polymer component comprising a 4-vinyl pyridine-containing polymer and the epoxy being at least difunctional, wherein the solvent does not complex with 4-vinyl pyridine; spinning the composition to form the plurality of fine fibers such that the entirety of each fiber is prepared from the composition; causing the 4-vinyl pyridine-containing polymer and the epoxy to crosslink in the plurality of fine fibers under conditions having an ambient temperature of no greater than 40° C. This overlaps with the method of instant claim 1 since crosslinking below 80 deg. C encompasses no greater than 40 deg. C. The instant claims set forth electrostatic spinning—see claim 23. The method overlap such that a person in possession of the method of making the fiber in US’287 is in possession of the instant claimed method. It is deemed that the instant claims, as written, cannot be infringed without literally infringing upon the claims of the co-pending application(s) as cited in the obviousness-type double patenting rejection(s).
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 14-22 of U.S. Patent No. 11,186,928. Although the claims at issue are not identical, they are not patentably distinct from each other because they appear to comprise overlapping subject matter. The instant claims set forth a method of making a fiber while US’928 sets forth a method of making a filter media comprising a plurality of five fibers. US’928 sets forth in the method combining a polymer component, a solvent, and an epoxy to form a composition, the polymer component comprising a 4-vinyl pyridine-containing polymer and the epoxy being at least difunctional, wherein the solvent does not complex with 4-vinyl pyridine; electrospinning the composition to form the plurality of fine fibers such that the entirety of each fiber is prepared from the composition; causing the 4-vinyl pyridine-containing polymer and the epoxy to crosslink in the plurality of fine fibers under conditions having an ambient temperature of no greater than 40° C.; and forming the filter media from the plurality of fine fibers without increasing the temperature of the plurality of fine fibers above 40° C. This overlaps with the method of instant claim 1 since crosslinking below 80 deg. C encompasses no greater than 40 deg. C. The instant claims set forth electrostatic spinning—see claim 23. It appear the method for forming said filter in US’928 comprises the same steps and materials as found in both claim sets. The instant claims, also set forth a method of making a filter media which sets forth the same composition above in a 1:0.4 to 1:1 ratio of 4-vinylpyridine-containing polymer with the epoxy and solvent and allowing to crosslinking at a temperature no greater than 80 deg. C. By definition in the disclosure of US’298 the mixing ratio of 4-vinylpryridine-containing polymer with the epoxy and solvent is 1:0.4 and 1:1.5 [col. 7, lines 10-20], which is deemed to encompass the instantly claimed ratio. Applicant's attention is drawn to MPEP 804 where it is disclosed that “the specification can always be used as a dictionary to learn the meaning of terms in a patent claim.” In re Boylan, 392 F.2d 1014, 157 USPQ 370 (CCPA 1968). Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F/2d 438,164 USPQ 619,622 (CCPA 1970).
Thus, the method overlap such that a person in possession of the method of making the filter media in US’928 is in possession of the instant claimed method. It is deemed that the instant claims, as written, cannot be infringed without literally infringing upon the claims of the co-pending application(s) as cited in the obviousness-type double patenting rejection(s).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached on 8-5.
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, Heidi Riviere-Kelley can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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