DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group I claims 2-15 in the reply filed on 01/21/2026 is acknowledged. The traversal is on the ground(s) that no burden exist. This is not found persuasive because as noted in MPEP 808.02 burden is established as three factors.
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries), a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
As noted in the restriction mailed on 11/21/2025 at least two of these factors where identified.
The requirement is still deemed proper and is therefore made FINAL.
Rejoinder will be allowed upon indication of allowable claims.
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 2-4, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,609,950. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same tamp and stir machine for tobacco sachets specifically including a chamber, movable piston/head, with gas and liquid nozzles and system. See the table of equated claims below.
Instant application 18/975,031
U.S. Patent 10,609,950
2
1,7
3
1,7
4
1,4
5
4
6
1
7
1
8
1
9
1 and 7
10
4
11
1
12
1
13
6
14
5
15
1
Claims 2-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,596,169. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same tamp and stir machine for tobacco sachets specifically including a chamber, movable piston/head, with gas and liquid nozzles and system. See the table of equated claims below.
Instant application 18/975,031
U.S. Patent 11,596,169
2
1, 8
3
1, 7, 8
4
2
5
3
6
1
7
5
8
1, 4
9
4, 10
10
3
11
12
Claims 2-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,193,475. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same tamp and stir machine for tobacco sachets specifically including a chamber, movable piston/head, with gas and liquid nozzles and system. See the table of equated claims below.
Instant application 18/975,031
U.S. Patent 12,193,475
2
1,8,9
3
1,8,9, 12
4
4
5
5
6
6
7
7
8
8,11,12
9
1,8,11,12
10
5,15
11
16
12
17,18
13
18
14
19
15
20
Allowable Subject Matter
Claims 2-15 are free of art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUCAS E A PALMER whose telephone number is (303)297-4779. The examiner can normally be reached Monday -Thursday 8am-6pm PT.
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, Anna Kinsaul can be reached at 571-270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Lucas E. A. Palmer/Primary Examiner, Art Unit 3731