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 1-29 have been canceled by the applicants in the latest amendment.
Claims 30-58 are pending and have been examined.
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 30 and 58 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 2 of prior U.S. Patent No. US 12,110,612 B2. This is a statutory double patenting rejection.
Re: 58 are the same invention as claim 1 of the ‘612 patent.
Re: 30 are the same invention as claim 2 of the ‘612 patent.
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 31-57 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-21 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, the difference of the claimed features is the teaching that there is not attenuating the precursor liquid attenuating component. However, the teaching of the claims of the ‘612 patent is of broader limitation and would encompass the features.
Re: 31, having the same invention as claim 3 of ‘612 pat.
Re: 32, having the same invention as claim 4 of ‘612 pat.
Re: 33, having the same invention as claim 4 of ‘612 pat.
Re: 34, having the same invention as claim 5 of ‘612 pat.
Re: 35, having the same invention as claim 6 of ‘612 pat.
Re: 36, having the same invention as claim 7 of ‘612 pat.
Re: 37, having the same invention as claim 7 of ‘612 pat.
Re: 38, having the same invention as claim 8 of ‘612 pat.
Re: 39, having the same invention as claim 9 of ‘612 pat.
Re: 40, having the same invention as claim 10 of ‘612 pat.
Re: 41, having the same invention as claim 10 of ‘612 pat.
Re: 42, having the same invention as claim 10 of ‘612 pat.
Re: 43, having the same invention as claim 11 of ‘612 pat.
Re: 44, having the same invention as claim 12 of ‘612 pat.
Re: 45, having the same invention as claim 13 of ‘612 pat.
Re: 46, having the same invention as claim 14 of ‘612 pat.
Re: 47, having the same invention as claim 15 of ‘612 pat.
Re: 48, having the same invention as claim 17 of ‘612 pat.
Re: 49, having the same invention as claim 18 of ‘612 pat.
Re: 50, having the same invention as claim 18 of ‘612 pat.
Re: 51, having the same invention as claim 18 of ‘612 pat.
Re: 52, having the same invention as claim 19 of ‘612 pat.
Re: 53, having the same invention as claim 17 of ‘612 pat.
Re: 54, having the same invention as claim 17 of ‘612 pat.
Re: 55, having the same invention as claim 20 of ‘612 pat.
Re: 56, having the same invention as claim 21 of ‘612 pat.
Re: 57, having the same invention as claim 17 of ‘612 pat.
Conclusion
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.
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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