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 .
The application is a continuation of US application 17/429,986, now US Patent 12,110,612.
Claims 1-58 are canceled.
Claims 1-29 have been previously canceled by the applicants.
Claims 30-58 have been canceled by the applicants in the latest
amendment.
Claims 59-78 are pending and have been examined.
Response to Arguments
Applicant’s arguments, based upon the latest amendment, filed 5/27/2026, with respect to the rejection of the claims have been fully considered and are persuasive as the claims were canceled by the applicants. Thereby, the previous double patenting rejections of the claims has been withdrawn.
The applicants have canceled the claims and added new claims. In this regard, the previous statutory double patenting rejection of the claims are now moot, and thus is withdrawn. However, in reviewing the new claims, a new nonstatutory double patenting rejection has been made, as seen below.
Applicants have further stated on in their response, see page 6, that a terminal disclaimer has been submitted herewith their response. However, in reviewing the application history, there does not appear to be any record of this in the files. Whereby, the nonstatutory double patenting rejection remain pending.
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 59 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-21 of U.S. Patent No. 12,110,612 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed invention are similar, particularly the elements claimed and further includes the precursor liquid attenuating component that is contact with the precursor liquid which is also taught in the claims of the ‘612 patent.
Allowable Subject Matter
Claims 59-78 would be allowable over the prior art references.
Claims 60-69 are also objected to as being dependent upon a rejected base claim (based upon the double patenting rejection for claim 59 shown above), but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach the features regarding the precursor liquid attenuating component in relation to the electrical charging component electrode, see similar reasons for allowance stated in the 17/429986 application, see notice of allowance sent out on 6/3/2024, and in which the closest prior art include the HOLMBERG (US 2020/0156945 A1), SMIDA (US 2010/0148404 A1), NAGAYAMA (US 2011/0148006 A1), KELLY (US 2001/0046599 A1), HAFF (US 2019/0338445 A1), BACA (US 2011/0018174 A1), MACEWAN (US 10588734 B2) references fail to teach of the particular arrangement.
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 or earlier communications from the examiner should be directed to EMMANUEL S LUK whose telephone number is (571)272-1134. The examiner can normally be reached Monday-Friday 9 to 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, Xiao S Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMMANUEL S LUK/Primary Examiner, Art Unit 1744
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