DETAILED CORRESPONDENCE
Summary
This Office Correspondence is based on the Amendment & Reply filed with the Office on 2 March 2026, regarding the Oja, et al. application.
Claims 1-7 and 13-28 are currently pending and have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-5, 7, 14-21 and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, 9, 10, 12, and 18-27 of copending Application No. 19/340,421 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of instant claim 1 are taught by reference claims 1 and 13; limitations of instant claim 2 are taught by reference claim 9; limitations of instant claim 3 are taught by reference claim 10; limitations of instant claim 4 are taught by reference claim 13; limitations of instant claim 5 are taught by reference claim 1; limitations of instant claim 7 are taught by reference claim 12; limitations of instant claims 14 and 15 are taught by reference claim 18; limitations of instant claim 16 are taught by reference claim 19; limitations of instant claim 17 are taught by reference claim 20; limitations of instant claim 18 are taught by reference claim 21; limitations of instant claim 19 are taught by reference claim 22; limitations of instant claim 20 are taught by reference claim 23; limitations of instant claim 21 are taught by reference claim 24; limitations of instant claim 26 are taught by reference claim 25; limitations of instant claim 27 are taught by reference claim 26; and, limitations of instant claim 28 are taught by reference claim 27.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 16-21 and 26-28 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 9, 15, 10, 14-21 and 24 of copending Application No. 19/340,445 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because limitations of instant claim 1 are taught by reference claim 1 and 10; limitations of instant claim 2 are taught by reference claim 9; limitations of instant claim 3 are taught by reference claim 15; limitations of instant claim 16 are taught by reference claim 14; limitations of instant claim 17 are taught by reference claim 15; limitations of instant claim 18 are taught by reference claim 16; limitations of instant claim 19 are taught by reference claim 17; limitations of instant claim 20 are taught by reference claim 18; limitations of instant claim 21 are taught by reference claim 19; limitations of instant claim 26 are taught by reference claim 20; limitations of instant claim 27 are taught by reference claim 21; and, limitations of instant claim 28 are taught by reference claim 24.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
All non-mentioned instant pending claims ARE NOT rejected under nonstatutory double patenting, but are objected as depending from rejected claims.
Response to Arguments
Applicant’s arguments, filed 2 March 2026, with respect to the prior art rejection of claims have been fully considered and are persuasive. The prior art rejections of the claims have been withdrawn.
Applicant’s arguments, filed 2 March 2026, with respect to the drawings have been fully considered and are persuasive. The objection of the drawings has been withdrawn.
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
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 JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached on M - F, 9 am - 5:30 pm.
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, Luan Van can be reached on (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J. Christopher Ball/ Primary Examiner, Art Unit 1795