DETAILED ACTION
The Amendment filed May 14, 2026 has been received and considered. Contrary to applicant’s remarks in his amendment, no terminal disclaimer has been received.
Claim Objections
Claims 24 and 25 are objected to because of the following informalities: both Claims 24 and 25 are dependent upon canceled Claim 23 but should depend from Claim 22. Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 2, and 4-15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 and 10-14 of prior U.S. Patent No. 12,110,933. This is a statutory double patenting rejection.
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.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,895,295. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claim 28 of the instant invention, Claim 1 of the '295 patent discloses all the features of the instant claim including: a method comprising: transferring an amount of friction material from a brake pad to a friction surface of a brake rotor having persistent surface roughness features, the transferring creating a transfer film layer on the friction surface, retaining a transfer film layer on the friction surface at least in part due to the persistent roughness features, and stopping a vehicle, the stopping comprising actuating a braking system comprising the brake pad and the brake rotor, the actuating causing the friction material of the brake pad to be urged into contact with the transfer film layer on the friction surface of the brake rotor such that an adherent friction interaction between the friction material and the transfer film layer enhances a braking power of the braking system. In addition, Claim 1 of the '295 patent also claims the brake rotor comprising a supporting layer applied to the friction surface after formation of an activated layer on the friction surface, the formation of the activated layer resulting from a process comprising back-sputtering of the friction surface, the supporting layer configured to receive one or more coating materials.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the method of the instant invention with the additional forming of a supporting layer applied to the friction surface after formation of an activated layer on the friction surface, the formation of the activated layer resulting from a process comprising back-sputtering of the friction surface, the supporting layer configured to receive one or more coating materials as claimed by the '295 patent in order to impart improved wear and corrosion resistant properties to the friction surface of the brake rotor.
Note: Applicant has stated in their remarks that a Terminal Disclaimer has been filed, which would overcome this rejection. However, no such Terminal Disclaimer has been received.
Allowable Subject Matter
Claims 1, 2, and 4-15 are rejected under the statutory double patenting rejection above. However, such a statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 16-21 would be allowable if independent Claim 1 and their corresponding dependent rejected Claims that they depend therefrom were amended to overcome their statutory double patenting rejections above.
Claim 22, 26, and 27 are allowed.
Claims 24 and 25 are objected to as outlined above but would be allowable if rewritten to overcome their objections.
Claim 28 would be allowable if a terminal disclaimer is filed to overcome its non-statutory double patenting rejection above.
Response to Arguments
Applicant's arguments filed May 14, 2026 regarding both the statutory and nonstatutory double patenting rejections outlined above have been fully considered but they are not persuasive as outlined below.
In particular, the statutory double patenting rejection of now cancelled Claim 3 has not been overcome, as its incorporation into independent Claim 1 now creates more statutory double patenting rejections for Claims 1, 2 and 4-15 above. In addition, the remaining non-statutory double patenting rejection of Claim 28 has also not been overcome, as no terminal disclaimer has been filed to refute it.
Applicant’s arguments, see remarks, filed May 14, 2026, with respect to the 102 and 103 rejections of Claims 1, 2, 5-22, and 28 have been fully considered and are persuasive. The 102 and 103 rejections of these claims have been withdrawn. And, as noted above, the allowable subject matter indicated in now cancelled Claim 3 being incorporated into independent Claim 1 now creates a statutory double patenting issue as outlined above.
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 PAMELA RODRIGUEZ whose telephone number is (571)272-7122. The examiner can normally be reached Monday - Thursday 7 AM - 5 PM.
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PAMELA RODRIGUEZ
Primary Examiner
Art Unit 3616
/PAMELA RODRIGUEZ/Primary Examiner, Art Unit 3616 07/16/26
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