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 .
Terminal Disclaimer
The terminal disclaimer filed on July 9, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent Numbers 11,414,617, 11,898,116 and 12,340,829 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting (Statutory)
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 1-4 & 9 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 15-19, respectively, of prior U.S. Patent No. 12,340,829. This is a statutory double patenting rejection.
Allowable Subject Matter
Claims 5-8 and 10-20 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.
Response to Arguments
Applicant's arguments filed on July 9, 2026 have been fully considered but they are not persuasive.
Applicant argues that the Office Action has not shown that pending claims 1-4 and 9 are identical or coextensive in scope with claims 15-19 of U.S. Patent No. 12,340,829. As indicated in the Non-Final Rejection (and repeated herein), claims 1-4 and 9 claim the same invention as that of claims 15-19, respectively, i.e., claim 1 is identical to claim 15 of the patent; claim 2 is identical to claim 16 of the patent; claim 3 is identical to claim 17 of the patent; claim 4 is identical to claim 18 of the patent; and claim 9 is identical to claim 19 of the patent. All the Applicant needs to do is look at each set of claims to see that they recite identical limitations.
As an example, the Examiner provides below a copy-and-pasted claim 1 of the current application:
1. A lubricant comprising: a plurality of segments, each linked together by ether linkages according to a general formula: Re1-Rb1-Ri-Rc-Ri-Rb2-Re2; wherein Rc is a divalent center segment including fluorine and oxygen; wherein each of Rb¹ and Rb² is, independently, a sidechain segment including fluorine and oxygen; wherein each Ri is, independently, a divalent linking segment including a functional group including elements from Group 13-17 of the periodic table of the elements; wherein each of Re¹ and Re² is, independently, a monovalent end segment including a functional group including elements from Group 13-17 of the periodic table of the elements; and wherein Rb¹ ≠ Rc ≠ Rb².
The following is a copy-and-pasted claim 15 of U.S. Patent No. 12,340,829:
15. A lubricant comprising: a plurality of segments, each linked together by ether linkages according to a general formula: Re1-Rb1-Ri-Rc-Ri-Rb2-Re2; wherein Rc is a divalent center segment including fluorine and oxygen; wherein each of Rb1 and Rb2 is, independently, a sidechain segment including fluorine and oxygen; wherein each Ri is, independently, a divalent linking segment including a functional group including elements from Group 13-17 of the periodic table of the elements; wherein each of Re1 and Re2 is, independently, a monovalent end segment including a functional group including elements from Group 13-17 of the periodic table of the elements; and wherein Rb¹ ≠ Rc ≠ Rb².
Upon careful visual review of the two sets of claims above, the Examiner believes that they are identical. The Applicant is invited to point out any differences between claim 1 of the current application and claim 15 of U.S. Patent No. 12,340,829 that the Examiner might have inadvertently overlooked.
Applicant argues that the Office Action’s own non-statutory double-patenting analysis confirms that the conflicting claims are not identical. The Examiner disagrees. The non-statutory double patenting rejection of claim 1 is based on claim 1 of U.S. Patent No. 12,340,829, as shown in the claim mapping in the Non-Final Rejection. The statutory double patenting rejection of claim 1, on the other hand, is based on claim 15 of the patent. These were two separate rejections, and it is improper for Applicant to argue based on claim 1 of the patent, when the statutory double patenting rejection is based on claim 15 of the patent. Even though the rejection of claim 1 based on non-statutory double patenting is overcome with the filing of a terminal disclaimer, this does not preclude the entire patent from being applied in a statutory double patenting rejection, especially since claim 1 is completely identical to claim 15 of the patent.
Applicant argues that the stated genus/species difference is inconsistent with a statutory same-invention rejection. As noted above, the non-statutory double patenting rejection of claim 1 is based on claim 1 of U.S. Patent No. 12,340,829, while the statutory double patenting rejection of claim 1 is based on claim 15 of the patent. These were two separate rejections, and it is improper for Applicant to argue based on claim 1 of the patent, when the statutory double patenting rejection is based on claim 15 of the patent.
Applicant’s arguments based on the non-statutory rejections are now moot, since the rejections have been withdrawn in light of the filing of a terminal disclaimer.
Conclusion
THIS ACTION IS MADE FINAL. 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 Peter Vincent Agustin whose telephone number is (571) 272-7567. The examiner can normally be reached on Monday - Thursday 8:30 am - 6:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Lim can be reached on 571-270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Peter Vincent Agustin/
Primary Examiner, Art Unit 2688
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