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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
This application is claiming the benefit of prior-filed application No. 16/932282 under 35 U.S.C. 120, 121, 365(c), or 386(c). Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
This application repeats a substantial portion of prior Application No. 16/928,502, filed 07/14/20, and adds disclosure not presented in the prior application (“aqueous solvent”). Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
Claim 1 recites the limitation “the vessel is sealed and comprised a plurality of razor blades.” The limitation should read that the vessel is sealed and contains a plurality of razor blades or the like; the vessel does not itself “comprise” razor blades. The limitation “comprised a plurality” is not correct grammar and is past tense.
In Claim 8, “polyfluorcarbon” should read “polyfluorocarbon.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The present application (effective filing date: 1/17/25) is copending with application 16/928,502 (issue date: 05/07/25), but not with prior-filed application No. 16/932282 (issue date: 10/18/23). The specification of application 16/928,502 does not describe an aqueous solvent in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. The specification of application 16/928,502 also does not describe an aqueous solvent comprising a perfluoroperhydrophenanthrene in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. Instead, it describes a solution comprising perfluoroperhydrophenanthrene (p. 2, lines 13-14). Additionally, the specification describes a solvent sold under the trademark FLUTEC PP11 with no disclosure of an aqueous solution. The specification references patent US 5,985,459, which provides evidence that FLUTEC PP11 is an oligomer, not an aqueous solution (col. 9, lines 44-50). Therefore, neither “aqueous solvent” nor “aqueous solution comprises perfluoroperhydrophenanthrene” is supported, but is new matter.
Claim 13 and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites the limitation "said one or more compounds of C14Fn” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim, and the scope of the recited formula is broader than the formula of the compositions, recited in Claim 1. Examiner considers the limitation to include the interpretation that the limitation “said one or more compounds of C14Fn” refers only to C14F10, C14F14, and/or C14F18, recited in Claim 1.
Claim 15 recites the limitation "said aqueous solution” in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner considers the limitation to include the interpretation “an aqueous solution.”
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chadwick et al. (US 2020/0391398).
Regarding Claim 15, Chadwick et al. (US’398) teach a method of treating razor blade coatings comprising the steps of: (a) providing a vessel; (b) providing a plurality of razor blades in said vessel; (c) sealing said vessel; (d) placing an aqueous solvent in said vessel; (e) heating said vessel to form a heated solution; (f) contacting a portion of said plurality of razor blades with said heated solution; (g) removing said heated solution; and (h) cooling said plurality of razor blades (Claim 1). US’398 teaches that said aqueous solution comprises perfluoroperhydrophenanthrene (Claim 15).
NOTE: US’398 includes new matter (“aqueous solvent”) in relation to its parent applications 16/928,502 and 15/431,553 for the claims in US’398, and thus does not have the benefit of priority of the filing dates of those prior-filed applications as to the new matter. Also, the present application does not have the benefit of priority of application 16/932282, which is not copending with the present application. See, also, MPEP 2133.01: “When applicant files a continuation-in-part application, none of whose claims are supported by the parent application under pre-AIA 35 U.S.C. 112, first paragraph, the effective filing date is the filing date of the child CIP. Any prior art disclosing the invention or an obvious variant thereof having a critical reference date more than 1 year prior to the filing date of the child will bar the issuance of a patent under pre-AIA 35 U.S.C. 102(b)” and “Any claim that only contains subject matter that is fully supported in compliance with the statutory requirements of pre-AIA 35 U.S.C. 112, first paragraph, by the parent application of a CIP will have the effective filing date of the parent application. On the other hand, any claim that contains a limitation that is only supported as required by pre-AIA 35 U.S.C. 112, first paragraph, by the disclosure of the CIP application will have the effective filing date of the CIP application.”).
Double Patenting
Statutory 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.
Claim 2 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,806,886. This is a statutory double patenting rejection.
A reliable test for double patenting under 35 U.S.C. 101 is whether a claim in the application could be literally infringed without literally infringing a corresponding claim in the patent. In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970). Although present Claim 2 recites different words, Claim 2 cannot be literally infringed without infringing Claim 1 of US’886. Placing solvent in a vessel also requires providing a vessel; and “wherein the vessel is sealed” requires “sealing the vessel.”
Non-Statutory 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 1-2, 6-8, and 11-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 10,011,030.
Regarding Claim 1, US’030 claims a method of treating razor blade coatings comprising the steps of:(a) placing solvent in a vessel, wherein the vessel is sealed and contains a plurality of razor blades; (b) heating said vessel to form a heated solution; and (c) contacting a portion of said plurality of razor blades with said heated solution (Claims 1, 23). Claim 14 includes the recited defluorination compounds.
Regarding Claim 21, Claim 23 recites removing the heated solution and cooling the plurality of razor blades.
Regarding Claim 2, it is obvious to cool the razor blades and remove the heated solution in any order or simultaneously. MPEP 2144.04.
Regarding Claim 6: Claims 6,7
Regarding Claim 7: Claim 1
Regarding Claim 8: Claims 6,7
Regarding Claim 11: Claim 15, and concentrations will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 12: Claim 16
Regarding Claim 13: Claim 17
Regarding Claim 14: Claim 5
Regarding Claim 15: Claim 10, synonyms
Regarding Claim 16: Claim 18
Regarding Claim 17: Claim 18
Regarding Claim 18: Claims 18, 23
Regarding Claim 19: Claim 23, removing clearly implies evacuating and would be an insignificant difference
Regarding Claim 20: at least some stacking (especially a stack of one blade, as claimed) is obvious
Claims 1-2, 6-8, and 11-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,766,157.
Regarding Claim 1, US’157 claims a method of treating razor blade coatings comprising the steps of:(a) placing solvent (solution) in a vessel, wherein the vessel is sealed and contains a plurality of razor blades; (b) heating said vessel to form a heated solution; and (c) contacting a portion of said plurality of razor blades with said heated solution (Claims 1, 8, 12). Claim 1 includes the recited defluorination compounds.
Regarding Claim 21, Claim 12 recites removing the heated solution and cooling the plurality of razor blades.
Regarding Claim 2, it is obvious to cool the razor blades and remove the heated solution in any order or simultaneously. MPEP 2144.04.
Regarding Claim 6: Claim 13
Regarding Claim 7: Claim 11
Regarding Claim 8: Claims 11,13
Regarding Claim 11: Claim 4, and concentrations will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding Claim 12: Claim 3
Regarding Claim 13: Claim 5
Regarding Claim 14: Claim 6
Regarding Claim 15: Claim 1, synonym for C14F24
Regarding Claim 16: Claim 7
Regarding Claim 17: Claim 8,12
Regarding Claim 18: Claim 8
Regarding Claim 19: Claim 23, removing solution clearly implies evacuating and would be an insignificant difference
Regarding Claim 20: at least some stacking (especially a stack of one blade, as claimed) is obvious
Claims 1, 6-8, and 11-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. US 11,806,886.
Regarding Claims 1 and 21, Claim 1 of US’886 requires:
A method of treating razor blade coatings comprising the steps of: (a) providing a vessel; (b) providing a plurality of razor blades in said vessel; (c) sealing said vessel; (d) placing a solvent in said vessel, wherein said solvent comprises one or more defluorination compounds comprising C14F10, C14F14, or C14F18, or any combination thereof; (e) heating said vessel to form a heated solution; (f) contacting a portion of said plurality of razor blades with said heated solution; (g) removing said heated solution; and (h) cooling said plurality of razor blades, wherein removing said heated solution occurs before cooling said plurality of blades.
Claim 6: Claims 4,5
Claim 7: Clams 4-6
Claim 8: Claims 4-6
Claim 11: Claim 7
Claim 12: Claim 8
Claim 13: Claim 9
Claim 14: Claim 10
Claim 15: Claim 3, synonym for C14F24
Claim 16: Claim 11
Claim 17: Claims 12-14,
Claim 18: Claim 13
Claim 19: Claim 14
Claim 20: Claim 15
Response to Arguments
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the rejections of Claims 1-2, 6-8, 11-14, and 16-21 under 35 USC 112(a) has been fully considered and overcomes the previous rejections under this paragraph. The rejections of Claims 9-12 under Claims 1-2, 6-8, 11-14, and 16-21 under 35 USC 112(a) have been withdrawn.
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the rejections of Claims 9-12 under 35 USC 112(b) has been fully considered and overcomes the previous rejections under this paragraph. The rejections of Claims 9-12 under 35 USC 112(b) have been withdrawn.
Applicant’s amendment to the claims, filed 13 July 2026, with respect to the rejections of Claims 1-2, 6-8, 11-14, and 16-21 under 35 USC 102 has been fully considered and overcomes the previous rejections under this paragraph. The rejections of Claims 1-2, 6-8, 11-14, and 16-21 under 35 USC 102 have been withdrawn.
Applicant's arguments filed 13 July 2026, with respect to the rejections of Claim 15 under 35 USC 102(a), of Claims 13 and 15 under 35 USC 112(b), and of Claims 1-2, 6-8, 11-14, and 16-21 under double patenting have been fully considered but they are not persuasive.
In response to Applicant’s argument concerning the rejection of Claim 15 for new matter (Remarks, pp. 5-6), Claim 15 still retains new matter (“aqueous solution”), and thus does not have benefit of priority as explained in the previous Office Action and repeated herein. Therefore, the rejection of Claim 15 under 35 USC 112(a) is maintained.
In response to Applicant’s argument concerning the rejection of Claims 13 and 15 under 35 USC 112(b) (Remarks, p. 5), the amendment to the claims fails to overcome the rejections for the reasons provided in the rejections herein.
In response to Applicant’s argument concerning double patenting (Remarks, p. 6), the amendment to the claims necessitates a statutory double patenting rejection of Claim 2 over US 11,806,886 and additional non-statutory double patenting rejections of Claims 1-2, 6-8, and 11-21 over US 10,011,030 and US 10,766,157.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
