DETAILED ACTION
The preliminary amendment filed 9/22/2025 has been entered.
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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 550 (as throughout paragraphs 113, 115-119, 122). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 8 is objected to because in line 1, the phrase “wherein central planar surface…” appears to require an article before “central planar surface” as being previously recited in claim 6.
Claim Rejections - 35 USC § 112
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.
Claims 12, 27, and 30-31 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 12 recites “the step” in line 1, where claim 1 recites “a first step” and “a second step”, therefore it is not clear what step claim 12 is further limiting and this claim is indefinite.
Claim 27 lacks antecedent basis for “the step” and is therefore indefinite.
Claims 30 lacks antecedent basis for “the substrate” and is therefore indefinite. It appears this limitation should be recited as – the base – as in claim 1.
Claim 31 lacks antecedent basis for “the primary cutting surface” and “the substrate” and is therefore indefinite. It appears this claim should be dependent on claim 16 (rather than claim 15), which would provide antecedent basis for both these terms.
Claim Rejections - 35 USC § 102
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) 1-2, 4-5, 12, 16-18, 22, and 27 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Haijiang et al. (US 2022/0017798).
In regard to claim 1, Haijiang et al. disclose a cutter element for a fixed cutter drill bit configured to drill a borehole in a subterranean formation, the cutter element comprising: a base (500, as in any of figs 1-13) having a central axis, a first end, a second end, and a radially outer cylindrical surface extending axially from the first end to the second end; a cutting layer (100) fixably mounted to the first end of the base, wherein the cutting layer includes a stepped cutting face distal the base (as in figs 1-13) and a radially outer cylindrical surface extending axially from the cutting face to the radially outer cylindrical surface of the base (fig 1-13 all show layer 100 extending to edge of base 500), wherein the radially outer cylindrical surface of the cutting layer is contiguous with the radially outer cylindrical surface of the base (as in any of fig 1-13); wherein the stepped cutting face comprises: a first step (120); a second step (110) axially spaced from the first step; a riser (112) axially positioned between the first step and the second step; wherein the first step is axially positioned between the riser and the base (as in any of figs 1-13); wherein the first step comprises a planar surface disposed in a plane oriented perpendicular to the central axis (as in figs 1, 3, 7-13 as shown), and wherein the second step comprises a planar surface disposed in a plane oriented perpendicular to the central axis (as in figs 1, 3, 7-13).
In regard to claim 2, Haijiang et al. disclose wherein the cutting layer has a thickness Tci measured axially from the base to the second step; wherein the first step is axially spaced from the second step by a distance Ds measured axially from the first step to the second step, wherein the ratio of the distance Ds to the thickness Tci is greater than or equal to 0.25 (as in figs 1-3 and 7-13 at least where Ds appears greater than 50% of Tci).
In regard to claim 4, Haijiang et al. disclose wherein the riser comprises: a plurality of circumferentially adjacent planar surfaces (figs 10-13).
In regard to claim 5, Haijiang et al. disclose wherein the first step, the second step, and the riser are symmetric about a reference plane that contains the central axis of the base and bisects the cutter element (as in fig 1-13).
In regard to claim 12, Haijiang et al. disclose wherein the step has a V-shaped geometry (as in any of figs 1, 3, 7-13) or a W-shaped geometry in top view of the cutter element (as in any of figs 1, 3, 7-9).
In regard to claim 16, Haijiang et al. disclose a cutter element for a fixed cutter drill bit configured to drill a borehole in a subterranean formation, the cutter element comprising: a substrate (500) having a central axis, a first end, a second end, and a radially outer cylindrical surface extending axially from the first end to the second end; a cutting layer (100) having a first end distal the substrate, a second end fixably attached to the first end of the substrate, and a radially outer cylindrical surface extending from the first end of the cutting layer to the second end of the cutting layer, wherein the first end of the cutting layer includes a stepped cutting face, wherein the radially outer cylindrical surface of the cutting layer is contiguous with the radially outer cylindrical surface of the base (figs 1-3, 5-13); wherein the stepped cutting face comprises: a primary cutting surface (exposed portion of lower layer 120) extending from a first cutting tip of the cutter element (as extending from edge as in figs 1-13), wherein the first cutting tip is configured to engage and shear the subterranean formation, wherein the first cutting tip is positioned at an intersection of the primary cutting surface and a first bevel (as in figs 7-13 at least where bevel shown at 120); a secondary cutting surface (top of 110) axially spaced from the primary cutting surface, wherein the secondary cutting surface extends from a second cutting tip of the cutter element (multiple tips as in figs 1-3, 7-13), wherein the second cutting tip is configured to engage and shear the subterranean formation, wherein the second cutting tip is positioned at an intersection of the secondary cutting surface and a second bevel (as in fig 1, 7-13, bevel shown from top surface extending to each tip 1121); a riser (figs 1, 7-13 all show surface extending from lower layer 110 to top layer 120) axially positioned between the primary cutting surface and the secondary cutting surface; wherein the primary cutting surface is axially positioned between the secondary cutting surface and the substrate (as in any of fig 1-3, 7-13); wherein the primary cutting surface comprises a planar surface disposed in a plane oriented perpendicular to the central axis (110, as in figs 1, 3, 7-13 as shown), and wherein the secondary cutting surface comprises a planar surface disposed in a plane oriented perpendicular to the central axis (120 as in figs 1, 3, 7-13); wherein the primary cutting surface is configured to engage and shear the subterranean formation before the secondary cutting surface (as constructed depending on formation shape).
In regard to claim 17, Haijiang et al. disclose wherein the first bevel extends from the primary cutting surface to the radially outer cylindrical surface of the cutting layer (as in figs 7, 9-13 at least), and wherein the second bevel extends from the secondary cutting surface to the riser (as in figs 7, 9-13 at least).
In regard to claim 18, Haijiang et al. disclose wherein the cutting layer has a thickness Toi measured axially from the substrate to the secondary cutting surface; wherein the primary cutting surface is axially spaced from the secondary cutting surface by a distance Ds measured axially from the primary cutting surface to the secondary cutting surface, wherein the ratio of the distance Ds to the thickness Toi is greater than or equal to 0.25 (as in figs 1-3 and 7-13 at least where Ds appears greater than 50% of Tci).
In regard to claim 22, Haijiang et al. disclose wherein the riser comprises: a plurality of circumferentially adjacent planar surfaces including a central planar surface extending axially from the primary cutting surface to the second bevel (as in figs 10-13).
In regard to claim 27, Haijiang et al. disclose wherein the step (see 112 above, interpreted as primary cutting surface) has a V-shaped geometry or a W-shaped geometry in top view of the cutter element (figs 1-3, 7-13 all show V-Shape riser).
Claim(s) 1-2, and 4-6 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Johnson et al. (US 6,045,440).
In regard to claim 1, Johnson et al. disclose a cutter element for a fixed cutter drill bit configured to drill a borehole in a subterranean formation, the cutter element comprising: a base (13) having a central axis, a first end, a second end, and a radially outer cylindrical surface extending axially from the first end to the second end; a cutting layer (12) fixably mounted to the first end of the base, wherein the cutting layer includes a stepped cutting face distal the base and a radially outer cylindrical surface extending axially from the cutting face to the radially outer cylindrical surface of the base (figs 1-5), wherein the radially outer cylindrical surface of the cutting layer is contiguous with the radially outer cylindrical surface of the base (e.g. fig 1A); wherein the stepped cutting face comprises: a first step (where 16 extends fig 1A); a second step (14) axially spaced from the first step; a riser (20,22) axially positioned between the first step and the second step; wherein the first step is axially positioned between the riser and the base (figs 1-5); wherein the first step comprises a planar surface disposed in a plane oriented perpendicular to the central axis (as in fig 1-1, 1A), and wherein the second step comprises a planar surface disposed in a plane oriented perpendicular to the central axis (as in fig 1-1, 1A).
In regard to claim 2, Johnson et al. disclose wherein the cutting layer has a thickness Tci measured axially from the base to the second step; wherein the first step is axially spaced from the second step by a distance Ds measured axially from the first step to the second step, wherein the ratio of the distance Ds to the thickness Tci is greater than or equal to 0.25 (as shown in fig 1A Ds is approximately 50% of Tci).
In regard to claim 4, Johnson et al. disclose wherein the riser comprises: a cylindrical surface (as in fig 1A, at 12); or a plurality of circumferentially adjacent planar surfaces (20 as in fig 1A, or fig 5).
In regard to claim 5, Johnson et al. disclose wherein the first step, the second step, and the riser are symmetric about a reference plane that contains the central axis of the base and bisects the cutter element (figs 1, 3-5 all have such symmetry).
In regard to claim 6, Johnson et al. disclose wherein the riser comprises: a central planar surface (18, in fig 1-1, 1A, 2-1); a first lateral planar surface (20 as in fig 1A) extending from the central planar surface to the radially outer cylindrical surface of the cutting layer; and a second lateral planar surface (other 20 fig 1A) extending from the central planar surface to the radially outer cylindrical surface of the cutting layer, wherein the first lateral planar surface and the second lateral planar surfaces are disposed on opposite sides of the reference plane (as in fig 1A).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. alone.
In regard to claim 7, Johnson et al. disclose wherein the first lateral planar surface and the second lateral planar surface are angularly spaced apart by an angle θ in a top view of the cutter element, wherein the angle θ appears to range from 70 to 140 (fig 5, where surfaces 20 extend to outer circumference show an angle greater than 70 and less than 140). Johnson et al. does not explicitly disclose that the angle is between 70 to 140. However, it would have been considered obvious to one of ordinary skill in the art at the time of effective filing to use an angle between 70 and 140 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art (as providing planar extending surfaces at an angle), discovering the optimum or workable range involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215. Further, such a selection of an angle will be inherently necessary in actual construction. Therefore it is also a routine design choice that must be made by the operator / manufacturer.
In regard to claim 8, Johnson et al. disclose wherein central planar surface is oriented at an angle σ relative to the central axis of the base in side view of the cutter element (as in fig 1A, col. 5, lines 30-32), but does not explicitly disclose wherein the angle σ ranges from -20° to +20°. However, it would have been considered obvious to one of ordinary skill in the art at the time of effective filing to use an angle between -20 and 20 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art (as providing a central planar surface oriented at an angle), discovering the optimum or workable range involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215. Further, such a selection of an angle will be inherently necessary in actual construction. Therefore it is also a routine design choice that must be made by the operator / manufacturer.
In regard to claim 9, Johnson et al. disclose wherein each lateral planar surface is oriented at an angle β relative to the central axis of the base in side view of the cutter element (as in figs 1-5), but does not explicitly disclose wherein the angle β ranges from -15° to +250. However, it would have been considered obvious to one of ordinary skill in the art at the time of effective filing to use an angle between -15 and 25 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art (as providing a planar surfaces oriented at an angle), discovering the optimum or workable range involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215. Further, such a selection of an angle will be inherently necessary in actual construction. Therefore it is also a routine design choice that must be made by the operator / manufacturer.
Claim(s) 14-15 and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haijiang et al. in view of Renard et al. (US 4,984,642).
In regard to claims 14 and 28, Haijiang et al. disclose all the limitations as applied to claims 1 and 16 above, except for a plurality of elongate raised ridges and recesses. Renard et al. disclose a cutting element wherein a cutting surface defines a primary cutting surface comprising a surface finish including a plurality of elongate raised ridges (27) and a plurality of recesses (28) positioned between the raised ridges, wherein the plurality of raised ridges are arranged in a plurality of parallel rows (as in figs 1-6). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the ridges and recesses as taught by Renard et al. with the cutting element of Haijiang et al. in order to provide a more efficiently cooled cutter (col. 3, lines 33-47).
In regard to claim 15 and 29, Renard et al. disclose wherein each of the plurality of raised ridges has a linear central axis (figs 1-6), a first end, a second end opposite the first end, a length measured axially from the first end to the second end, and a width measured perpendicular to the central axis (as in fig 1-6); wherein the plurality of raised ridges are oriented parallel to each other (fig 1-6). Renard et al. does not disclose wherein the width of each raised ridge ranges from 2.0 micron to 250.0 micron; and wherein the length of each raised ridge ranges from 25.0 micron to 750.0 micron. However, it would have been considered obvious to one of ordinary skill in the art at the time of effective filing to provide the ridges within the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art (each ridge and recess with some width and length), discovering the optimum or workable range involves only routine skill in the art. In other words, narrowing a general condition taught by the prior art to a specific numerical value has been held to be an obvious variation thereof. In re Aller, 105 USPQ 233 and In re Boesch, 205 USPQ 215. Further, such a selection of an angle will be inherently necessary in actual construction. Therefore it is also a routine design choice that must be made by the operator / manufacturer.
Claim(s) 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haijiang et al. in view of Johnson et al.
In regard to claim 23, Haijiang et al. disclose all the limitations of this claim, as applied to claim 22 above, and including a central surface (at 1121 as in fig 11 at corner); a first lateral planar surface extending laterally from the central planar surface to the radially outer cylindrical surface of the cutting layer (as in fig 11, with linear section 112 extending from corner at 1121); and a second lateral planar surface (as in fig 11, extending opposite from first surface) extending laterally from the central planar surface to the radially outer cylindrical surface of the cutting layer, but does not disclose that the central surface is planar.
Johnson et al. disclose a cutting element wherein a riser includes a central planar surface (18). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the planar riser portion as taught by Johnson et al. with the cutting element of Haijiang et al. in order to better circulate fluid across the surface of the cutter.
In regard to claim 24, Haijiang et al. disclose all the limitations of this claim, as applied to claim 23 above, and including wherein the first lateral planar surface and the second lateral planar surface are angularly spaced apart by an angle θ in a top view of the cutter element, wherein the angle 0 ranges from 70 to 140° (as shown, fig 11 angle is 90); wherein the central surface is oriented at an angle σ relative to the central axis of the substrate in side view of the cutter element, wherein the angle σ ranges from -20 to +20 (as shown fig 11 angle appears as 0) and wherein each lateral planar surface is oriented at an angle β relative to the central axis of the substrate in side view of the cutter element, wherein the angle β ranges from -15° to +25° (as shown fig 11 angle appears as 0).
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haijiang et al. in view of Webb et al. (US 2023/0203892).
In regard to claim 30, Haijiang et al. disclose all the limitations of this claim, as applied to claim 1 above, except for a pair of circumferentially-spaced planar flats, wherein each planar flat extends axially from the first step surface across the radially outer cylindrical surface of the cutting layer and the radially outer cylindrical surface of the substrate. Webb et al. disclose a cutter element wherein a pair of circumferentially-spaced planar flats (516 as in fig 5a-c; also shown in figs 6-8), wherein each planar flat extends axially from a first step surface (518) across a radially outer cylindrical surface of the cutting layer and the radially outer cylindrical surface of the substrate (as extending into 406 as shown). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the planar flats, as taught by Webb et al. with the cutter element of Haijiang et al. in order to reduce wear and abrasion of the substrate (i.e. base) below the cutting edge during drilling.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Haijiang et al. in view of Renard et al. and further in view of Webb et al. (US 2023/0203892).
In regard to claim 31, Haijiang et al. and Renard et al. disclose all the limitations of this claim, as applied to claim 15 above, except for a pair of circumferentially-spaced planar flats, wherein each planar flat extends axially from the first step surface across the radially outer cylindrical surface of the cutting layer and the radially outer cylindrical surface of the substrate. Webb et al. disclose a cutter element wherein a pair of circumferentially-spaced planar flats (516 as in fig 5a-c; also shown in figs 6-8), wherein each planar flat extends axially from a first step surface (518) across a radially outer cylindrical surface of the cutting layer and the radially outer cylindrical surface of the substrate (as extending into 406 as shown). It would have been obvious to one of ordinary skill in the art before the time of effective filing to provide the planar flats, as taught by Webb et al. with the cutter element of Haijiang et al. as modified by Renard et al. in order to reduce wear and abrasion of the substrate (i.e. base) below the cutting edge during drilling.
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, 4-9, 16, 19-20 and 22-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-9, 18-21 and 25-26 of U.S. Patent No. 12,448,852. An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim is not patentably distinct from the reference claim(s) because the examined 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). Although the conflicting claims are not identical, they are not patentably distinct from each other because, for example, instant claim 1 is generic to all that is recited in claim 3 of U.S. Patent No. 12,448,852. In other words, claim 3 of U.S. Patent No. 12,448,852 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 3 of the patent, it is not patentably distinct from claim 3. Thus the invention of claim 3 of the patent is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 3 of the patent, claim 1 is not patentably distinct from claim 3, regardless of any additional subject matter present in claim 10. Claims 4-9, 16, 19-20 and 22-24 appear similarly encompassed by claims 3-9, 18-21 and 25-26 of ‘852.
Claims 1 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of copending Application No. 19/335,823 (reference application, ‘823). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is generic to all that is recited in claim 21 of ‘823. In other words, claim 21 of ‘823 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1. Since claim 1 is anticipated by claim 21 of the ‘823, it is not patentably distinct from claim 21. Thus the invention of claim 21 of ‘823 is in effect a “species” of the “generic” invention of claim 1. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 is anticipated (fully encompassed) by claim 21 of ‘823, claim 1 is not patentably distinct from claim 21, regardless of any additional subject matter present in claim 21. Claims 16 appears similarly encompassed by claim 21 of ‘823.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/D. ANDREWS/Primary Examiner, Art Unit 3672
2/23/2026