Prosecution Insights
Last updated: April 19, 2026
Application No. 18/828,253

AROMATIC COPOLYESTER THERMOSET DOWNHOLE TOOLS

Non-Final OA §102§103§DP
Filed
Sep 09, 2024
Examiner
RUNYAN, SILVANA C
Art Unit
3674
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Halliburton Energy Services, Inc.
OA Round
3 (Non-Final)
82%
Grant Probability
Favorable
3-4
OA Rounds
2y 3m
To Grant
99%
With Interview

Examiner Intelligence

Grants 82% — above average
82%
Career Allow Rate
846 granted / 1032 resolved
+30.0% vs TC avg
Strong +17% interview lift
Without
With
+17.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 3m
Avg Prosecution
54 currently pending
Career history
1086
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
41.0%
+1.0% vs TC avg
§102
25.0%
-15.0% vs TC avg
§112
24.0%
-16.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1032 resolved cases

Office Action

§102 §103 §DP
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 . Continued Examination Under 37 CFR 1.114 A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/10/2025 has been entered. Response to Arguments Applicant’s arguments, filed on11/10/2025, with respect to the rejection(s) of Claims 1, 3-11, 13-21 and 23 rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Frazier et al. (US 2013/0240201 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Claim Rejections - 35 USC § 102 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claims 1,2, and 5-9 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Meyer et al. (US Meyer et al. (US 2019/0040220 A1) (“Meyer” herein). Claims 1 Meyer discloses a downhole tool for use in a borehole, wherein the downhole tool comprises (i.e. oil and oil and gas process and extraction equipment) [0002] a composite of an aromatic copolyester thermoset (ACT) [0003, 0013, 0040] and a reinforcement material, [0010, 0043] wherein the ACT has a glass transition temperature in a range of 150°C to 350 °C, and is configured to degrade in a water-based fluid having a PH of 13 or greater and disclose comprises an aromatic polyester backbone interconnected by one or more covalent bonds to form a crosslinked network. [0002-0003, 0008, 0013, 0040] Since Meyer discloses the same tool composition comprising and aromatic copolyester thermoset comprises an aromatic polyester backbone interconnected by one or more covalent bonds to form a crosslinked network, it would be a vitrimer, configured to degrade or dissolve in a water-based fluid having a PH of 13 or greater . "Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934). Claim 2 Meyer discloses the downhole tool of claim 1wherein the aromatic polyester backbone comprises one or more crosslinked oligomers having one or more ester bonds to form an ACT vitrimer . [0002-0003, 00010, 0043] Claim 5 Meyer discloses the downhole tool of claim 1, wherein the ACT configured to degrade comprises the ACT is configured to dissolve in the water-based fluid having a pH of 13 or greater. (Same as claim 1) Claim 6 Meyer discloses the downhole tool of claim 1, wherein the downhole tool is a dissolvable downhole tool. (Same as claim 1) Claim 7 Meyer discloses the downhole tool of claim 1, wherein a component of the downhole tool is dissolvable in a borehole in response to presence of the water-based fluid having a PH of 13 or greater in the borehole. (Same as claim 1) Claim 8 Meyer discloses the downhole tool of claim 1, wherein the reinforcement material comprises fibers or particles, or both. [0010, 0043, 0093] Claim 9 Meyer discloses the downhole tool of claim 1, wherein the reinforcement material comprises fibers comprising carbon, glass, aramid, boron, basalt, metal, polyethylene, polypropylene, poly(p- 1] |phenylene-2,6-benzobisoxazole) (PBO),flax fibers, jute biers or any combinations thereof. [0010, 004343] Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claims 1-3, 5-14,18-19, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Frazier et al. (US 2013/0240201 A1) ("Frazier" herein - cited previously) and further in view of Meyer et al. (US 2019/0040220 A1) (“Meyer” herein). Claims 1 Frazier discloses a downhole tool for use in a borehole, wherein the downhole tool comprises [0060-0062, 0099- 0100] a composite of an aromatic copolyester thermoset (ACT) [0064, 0082] and a reinforcement material, [0077-0079], wherein the ACT has a glass transition temperature in a range of 150°C to 350 °C, [0062] and is configured to degrade in a water-based fluid having a PH of 13 or greater. [0060-0061, 0063-0068] Frazier however does not explicitly disclose comprises an aromatic polyester backbone interconnected by one or more covalent bonds to form a crosslinked network. Meyer teaches the limitation above. (see paragraphs 0003, 0040, & Fig.1 → Meyer teaches this limitation in that ATSP exhibits excellent specific strength, stiffness and dimensional stability at high temperature with a glass transition temperature as high as 305° C. and a short-term service temperature up to 350° C. and 425° C. in air and nitrogen, respectively. ATSP also shows extreme flame resistance, ablative character, and excellent performance as adhesives, rigid foams (by utilizing the evolution of acetic acid, the by-product of crosslinking), and as tribological wear coatings with low coefficient of friction, excellent wear and abrasion resistance. ATSP is an all-aromatic polyester with superior environmental and chemical resistance with intrinsic resistance to weathering (moisture pick-up <0.3%). ATSP displays a unique feature among high temperature thermosets, known as interchain transesterification reactions (ITR), which allows solid-state bonding between fully cured lamina or other solid bodies. ATSP oligomers are produced by reacting ATSP precursor monomers to form an oligomer having a carboxylic acid end group and an oligomer having an acetoxy end group. ATSP oligomers are mixed and cured at elevated temperature to produce low density/high strength foams. Curing the oligomers causes the end groups to react and form a crosslinked network. (see Fig. 1 Ester backbone of ATSP = vitrimer).)for the purpose of providing ATSP exhibits excellent specific strength, stiffness and dimensional stability at high temperature. [0003] PNG media_image1.png 324 484 media_image1.png Greyscale Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Frazier with the above limitation, as taught by Meyer in order to provide ATSP exhibits excellent specific strength, stiffness and dimensional stability at high temperature. Since Frazier teaches the same tool composition comprising and aromatic copolyester thermoset comprises an aromatic polyester backbone interconnected by one or more covalent bonds to form a crosslinked network, it would be a vitrimer, configured to degrade or dissolve in a water-based fluid having a PH of 13 or greater . "Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934). Claim 2 Frazier discloses the downhole tool of claim 1. Frazier however does not explicitly disclose, wherein the aromatic polyester backbone comprises one or more crosslinked oligomers having one or more ester bonds to form an ACT vitrimer . (Same as claim 1) Claim 3 Frazier discloses the downhole tool of claim 1, wherein the water-based fluid comprises lithium hydroxide (LIOH), sodium hydroxide (NaOH), potassium hydroxide (KOH), rubidium hydroxide (RDOH), cesium hydroxide (CSOH), calcium hydroxide [Ca(OH) 2], strontium hydroxide [Sr(OH)2], or barium hydroxide [Ba(OH)2], or any combinations thereof. [0064] Claim 5 Frazier discloses the downhole tool of claim 1, wherein the ACT configured to degrade comprises the ACT is configured to dissolve in the water-based fluid having a pH of 13 or greater. [0063-0064] Claim 6 Frazier discloses the downhole tool of claim 1, wherein the downhole tool is a dissolvable downhole tool. [0026, 0028, 0061] Claim 7 Frazier discloses the downhole tool of claim 1, wherein a component of the downhole tool is dissolvable in a borehole in response to presence of the water-based fluid having a PH of 13 or greater in the borehole. [0063-0068] Claim 8 Frazier discloses the downhole tool of claim 1, wherein the reinforcement material comprises fibers or particles, or both. [0077-0079] Claim 9 Frazier discloses the downhole tool of claim 1, wherein the reinforcement material comprises fibers comprising carbon, glass, aramid, boron, basalt, metal, polyethylene, polypropylene, poly(p- 1] |phenylene-2,6-benzobisoxazole) (PBO),flax fibers, jute biers or any combinations thereof. [0077-0079] Claims 10 Frazier discloses a method of applying downhole tool, comprising: [0060-0062, 0099- 0100] deploying the downhole tool into a wellbore, wherein the downhole tool comprises a composite of an aromatic copolyester thermoset (ACT) ) [0064, 0082] and a reinforcement material, [0077-0079], wherein the glass transition temperature in a range of 150°C to 350 °C; and providing a water-based fluid having a pH of 13 or greater in the wellbore, thereby degrading the ACT of the downhole tool in the wellbore with the water-based fluid having the pH of 13 or greater. [0060-0061, 0063-0068] Frazier however does not explicitly disclose comprises an aromatic polyester backbone interconnected by one or more covalent bonds to form a crosslinked network. Meyer teaches the limitation above. (see paragraphs 0003, 0040, & Fig.1 → Meyer teaches this limitation in that ATSP exhibits excellent specific strength, stiffness and dimensional stability at high temperature with a glass transition temperature as high as 305° C. and a short-term service temperature up to 350° C. and 425° C. in air and nitrogen, respectively. ATSP also shows extreme flame resistance, ablative character, and excellent performance as adhesives, rigid foams (by utilizing the evolution of acetic acid, the by-product of crosslinking), and as tribological wear coatings with low coefficient of friction, excellent wear and abrasion resistance. ATSP is an all-aromatic polyester with superior environmental and chemical resistance with intrinsic resistance to weathering (moisture pick-up <0.3%). ATSP displays a unique feature among high temperature thermosets, known as interchain transesterification reactions (ITR), which allows solid-state bonding between fully cured lamina or other solid bodies. ATSP oligomers are produced by reacting ATSP precursor monomers to form an oligomer having a carboxylic acid end group and an oligomer having an acetoxy end group. ATSP oligomers are mixed and cured at elevated temperature to produce low density/high strength foams. Curing the oligomers causes the end groups to react and form a crosslinked network. (see Fig. 1 Ester backbone of ATSP = vitrimer).)for the purpose of providing ATSP exhibits excellent specific strength, stiffness and dimensional stability at high temperature. [0003] PNG media_image1.png 324 484 media_image1.png Greyscale Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Frazier with the above limitation, as taught by Meyer in order to provide ATSP exhibits excellent specific strength, stiffness and dimensional stability at high temperature. Claim 11 Frazier discloses the method of claim 10, wherein degrading the ACT comprises dissolving the ACT.[0063-0064] Claim 12 Frazier discloses the downhole tool of claim 1. Frazier however does not explicitly disclose, wherein the aromatic polyester backbone comprises one or more crosslinked oligomers having one or more ester bonds to form an ACT vitrimer . (Same as claim 10) Claim 13 Frazier discloses the method of claim 10, wherein the water-based fluid comprises lithium hydroxide (LiOH), sodium hydroxide (NaOH), potassium hydroxide (KOH), rubidium hydroxide (RDOH), cesium hydroxide (CSOH), calcium hydroxide [Ca(OH)2], 1strontium hydroxide [Sr(OH)2], or barium hydroxide [Ba(OH)2], or any combinations thereof. [0064] Claim 14 Frazier discloses the method of claim 10, wherein providing the water-based fluid comprises pumping the water-based fluid having the pH of 13 or greater into the wellbore. [0063-0064] Claim 18 Frazier discloses the method of claim 10, wherein the reinforcement material comprises fibers or particles, or both. [0077-0079] Claim 19 Frazier discloses the method of claim 10, wherein the reinforcement material comprises fibers comprising carbon, glass, aramid, boron, basalt, metal, polyethylene, polypropylene, poly(p-phenylene-2,6- benzobisoxazole) (PBO),flax fibers, jute fibers, or any combinations thereof. [0077-0079] Claim 21 Frazier discloses the downhole tool of claim 1, wherein the downhole tool is a plug. [0027-0028]. Claim 22 Frazier discloses the downhole tool of claim 1 Frazier however does not explicitly disclose wherein the ACT comprises an ACT comprises a vitrimer having a chemical structure comprising repeat units that include benzene ring. (Same as claim 1) Claim 23 Since Frazier teaches the same composite comprising an aromatic polyester, it would be an aromatic copolyester thermostat configured that behaves as a thermoset prior to being cured and behaves as a thermoplastic after being cured. "Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newtield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934). Claims 3 and 4, are rejected under 35 U.S.C. 103 as being unpatentable over Meyer, as applied to claims 1 above, and further in view of Fripp et al. (US 2016/01775655 A1) ("Fripp" herein- cited previously) Claim 4 Meyer discloses the downhole tool of claim 1. Meyer however does not explicitly disclose , wherein the water-based fluid comprises lithium hydroxide (LIOH), sodium hydroxide (NaOH), potassium hydroxide (KOH), rubidium hydroxide (RDOH), cesium hydroxide (CSOH), calcium hydroxide [Ca(OH) 2], strontium hydroxide [Sr(OH)2], or barium hydroxide [Ba(OH)2], or any combinations thereof and wherein a solid precursor is compounded with the ACT, the solid precursor comprising LiOH, NaOH, KOH, RbOH, CsOH, Ca(OH)2, Sr(OH)2, or Ba(OH)2, or any combinations thereof. Fripp teaches the above limitation (See paragraphs 0055-0056 →Fripp teaches this limitation in that In other cases, the accelerant may be embedded in the material forming either or both of the body 210 and the sealing element 285. The accelerant may be in any form, including a solid or a liquid. In other embodiments, the accelerant can be a natural byproduct of the degradation of the material and is not specifically added to act as an accelerant. Suitable accelerants may include, an acid, an acid releasing agent, a base, a base releasing agent, and any combination thereof. In some embodiments, the accelerant may cause the body 210 or the sealing element 285 to become brittle to aid in degradation. Specific accelerants may include, ammonium hydroxide, sodium hydroxide, potassium hydroxide, an amine, an alkanol amine, an inorganic acid or precursor thereof (e.g., hydrochloric acid, hydrofluoric acid, ammonium bifluoride, and the like), an organic acid or precursor thereof (e.g., formic acid, acetic acid, lactic acid, glycolic acid, aminopolycarboxylic acid, polyaminopolycarboxylid acid, and the like), and any combination thereof.) for the purpose of accelerating the degradation of the element. [0055] Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition of Frazier with the above limitation, as taught by Meyer, in order to accelerate the degradation of the element. Claims 4, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Frazier, Meyer, as applied to claims 1 and 10 above, and further in view of Fripp et al. (US 2016/01775655 A1) ("Fripp" herein- cited previously) Claim 4 Frazier discloses the downhole tool of claim 1, wherein the water-based fluid comprises lithium hydroxide (LIOH), sodium hydroxide (NaOH), potassium hydroxide (KOH), rubidium hydroxide (RDOH), cesium hydroxide (CSOH), calcium hydroxide [Ca(OH) 2], strontium hydroxide [Sr(OH)2], or barium hydroxide [Ba(OH)2], or any combinations thereof. wherein is compounded with the ACT, the solid precursor comprising LiOH, NaOH, KOH, RbOH, CsOH, Ca(OH)2, Sr(OH)2, or Ba(OH)2, or any combinations thereof. [0063-0064] Frazier however does not disclose a Solid precursor. Fripp teaches the above limitation (See paragraphs 0055-0056 →Fripp teaches this limitation in that In other cases, the accelerant may be embedded in the material forming either or both of the body 210 and the sealing element 285. The accelerant may be in any form, including a solid or a liquid. In other embodiments, the accelerant can be a natural byproduct of the degradation of the material and is not specifically added to act as an accelerant. Suitable accelerants may include, an acid, an acid releasing agent, a base, a base releasing agent, and any combination thereof. In some embodiments, the accelerant may cause the body 210 or the sealing element 285 to become brittle to aid in degradation. Specific accelerants may include, ammonium hydroxide, sodium hydroxide, potassium hydroxide, an amine, an alkanol amine, an inorganic acid or precursor thereof (e.g., hydrochloric acid, hydrofluoric acid, ammonium bifluoride, and the like), an organic acid or precursor thereof (e.g., formic acid, acetic acid, lactic acid, glycolic acid, aminopolycarboxylic acid, polyaminopolycarboxylid acid, and the like), and any combination thereof.) for the purpose of accelerating the degradation of the element. [0055] Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the composition of Frazier with the above limitation, as taught by Fripp, in order to accelerate the degradation of the element. Claim 15 Frazier discloses the method of claim 10, wherein providing the water-based fluid comprises providing a solid precursor into the wellbore, thereby with wellbore fluid in the wellbore giving the water-based fluid having the pH of 13 or greater in the wellbore. [0063-0068] Frazier does not explicitly disclose the solid precursor. (Same as claim 4) Claim 16 Frazier teaches the method of claim 15, wherein the solid precursor comprises solid NaOH, solid KOH, or solid Ca(OH)2, or any combinations thereof. (Same as claim 4) Claim 17 Frazier teaches the method of claim 15, wherein the solid precursor is compounded into the ACT. (Same as claim 4). 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, 8, 9, 10, and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 6, 9, 12, 18, and 19 of copending Application No. 18/478720 (‘720 herein). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application limitation is contained in the ‘720 application including its independent claim. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30. 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, Doug Hutton can be reached at 571-272-4137. 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. /SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 02/10/2026
Read full office action

Prosecution Timeline

Sep 09, 2024
Application Filed
Apr 09, 2025
Non-Final Rejection — §102, §103, §DP
Jun 26, 2025
Interview Requested
Jul 09, 2025
Examiner Interview Summary
Jul 09, 2025
Applicant Interview (Telephonic)
Jul 11, 2025
Response Filed
Sep 19, 2025
Final Rejection — §102, §103, §DP
Oct 10, 2025
Interview Requested
Nov 10, 2025
Request for Continued Examination
Nov 19, 2025
Response after Non-Final Action
Feb 10, 2026
Non-Final Rejection — §102, §103, §DP (current)

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Prosecution Projections

3-4
Expected OA Rounds
82%
Grant Probability
99%
With Interview (+17.4%)
2y 3m
Median Time to Grant
High
PTA Risk
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