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 .
Information Disclosure Statement
The lined-through reference is incomplete (no date).
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, 17, 51, 125, 157 and 165 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 10, 27 and 28 of (parent) U.S. Patent No. 10,716,858 B2, cited in the IDS. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant independent claim 1 is simply a subset of the macromonomer compounds of patented independent claim 1.
The subject matter of instant dependent claim 51 is identical to the subject matter of patented dependent claim 2.
The subject matter of instant dependent claim 157 is identical to the subject matter of patented dependent claim 6.
The subject matter of instant dependent claim 165 is identical to the subject matter of patented dependent claim 10.
The subject matter of instant dependent claim 125 is identical to the subject matter of patented dependent claim 27.
The subject matter of instant dependent claim 17 is identical to the subject matter of patented dependent claim 28.
In sum, the instantly claimed subject matter is simply a subset of the claimed subject matter of the parent patent and as such is fully encompassed by the claims of the parent.
Claims 1 and 157 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of (parent) U.S. Patent No. 12,186,396 B2, cited in the IDS. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant independent claim 1 is simply a subset of the macromonomer compounds of patented independent claim 1.
The subject matter of instant dependent claim 157 is identical to the subject matter of patented dependent claim 4.
In sum, the instantly claimed subject matter is simply a subset of the claimed subject matter of the parent patent and as such is fully encompassed by the claims of the parent.
Allowable Subject Matter
Claims 13, 50, 126, 127, 158-164 and 166-168 are objected to as being dependent upon a rejected base claim, 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 key to the instant invention is the Markush set of compounds of Formula (I). The closest art is inventor’s own work (the parent patents) cited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J DAVIS whose telephone number is (571)272-0638. The examiner can normally be reached M-F 8:30-5:00 PM EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush, can be reached at 571-272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN J DAVIS/Primary Examiner, Art Unit 1614 9/24/2026
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