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 .
Response to Arguments
Applicants’ arguments, see pages 1-2, filed 07/29/26, with respect to claim 1, has been fully considered:
Regarding the rejection of claim 1 on the ground of non-statutory double patenting as allegedly being unpatentable over claim 1 of U.S. Patent No. 11,264,912, and U.S. Patent No. 10,806,181, Applicant argues that, as noted, claim 1 was previously cancelled, thereby rendering the rejection moot. Accordingly, Applicant respectfully requests withdrawal of this rejection.
Examiner Amendment/Comment
Applicants’ remarks filed 07/29/26 are persuasive, the cancellation of claim 1 has been acknowledged.
The Patent Office apologies for the oversight. During the previous examination, we inadvertently omitted the examination of claims 2-21, filed 09/15/25. A supplemental examination has now been completed for these claims, and the findings are provided below.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2,9-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13,15 of U.S. Patent No. 11,764,687. Although the claims at issue are not identical, they are not patentably distinct from each other because when an applicant has received a patent for a species or a more specific embodiment, he/she is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. A more specific claim “anticipates” the broader claim. In an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. Thus, the two claims are not patentably distinct. Furthermore,
i. The subject matter of claim 2 is further disclosed by claim 1 of the ‘687 patent.
ii. The subject matter of claim 9 is further disclosed by claim 2 of the ‘687 patent.
iii. The subject matter of claim 10 is further disclosed by claim 3 of the ‘687 patent.
iv. The subject matter of claim 11 is further disclosed by claim 4 of the ‘687 patent.
v. The subject matter of claim 12 is further disclosed by claim 5 of the ‘687 patent.
vi. The subject matter of claim 13 is further disclosed by claim 6 of the ‘687 patent.
vii. The subject matter of claim 14 is further disclosed by claim 7 of the ‘687 patent.
viii. The subject matter of claim 15 is further disclosed by claim 8 of the ‘687 patent.
ix. The subject matter of claim 16 is further disclosed by claim 9 of the ‘687 patent.
x. The subject matter of claim 17 is further disclosed by claim 10 of the ‘687 patent.
xi. The subject matter of claim 18 is further disclosed by claim 11 of the ‘687 patent.
xii. The subject matter of claim 19 is further disclosed by claim 12 of the ‘687 patent.
xiii. The subject matter of claim 20 is further disclosed by claim 13 of the ‘687 patent.
xiv. The subject matter of claim 21 is further disclosed by claim 15 of the ‘687 patent.
Allowable Subject Matter
Claims 3-8 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI BAKER whose telephone number is (571)272-4971. The examiner can normally be reached Monday thru Friday: 9 am - 6 pm.
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/LORI L BAKER/Primary Examiner, Art Unit 3754
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