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 .
Examiner Interview
The Examiner was contacted by the attorney of record Mary Vanatten on 6/10/2026 regarding the restriction issued on 6/8/2026. The attorney informed the Examiner that the restriction was directed to the improper claim set and should be directed to the Preliminary Amendment that was filed at the time of the filing of the application so the restriction was directed towards claims that are no longer pending in the application. The Examiner informed the attorney that the claims identified in the Preliminary Amendment had not been identified as claims in the software system PE2E. The Examiner requested a corrective action through “case resolution” and the claims were properly separated from the document and viewable as “claims” in PE2E.
The Restriction Requirement directed to now cancelled claims 1-17 mailed on 6/8/2026 is hereby vacated. This Office Action replaces the vacated Restriction Requirement.
Priority
This application claims the benefit of U.S. Provisional Application No. 63/585,642 filed September 27, 2023.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 04/09/20263 (83 references). The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of the Claims
Currently, claims 18-42 are pending in the instant application and examined on their merits.
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 18-42 are identical to the claims 18-42 in the “084” application:
Claims 18-42 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 18-42 of copending U.S. Provisional Application No.19/576, 084 filed as a Continuation of the instant application and claims priority to the same provisional application 63/585,642 filed on 09/27/2023 (hereinafter “084”). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The claims at issue are identical and are therefore not patently distinct from each other because both the instant application and 084 are identical including the claim numbers and scope of invention.
Claims 18-42 are identical to the claims 18-42 in the “108” application:
Claims 18-42 are provisionally rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 18-42 of copending U.S. Provisional Application No.19/576, 108 filed as a Continuation of the instant application and claims priority to the same provisional application 63/585,642 filed on 09/27/2023 (hereinafter “108”). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The claims at issue are identical and are therefore not patently distinct from each other because both the instant application and 108 are identical including the claim numbers and scope of invention.
Conclusion
Claims 18-42 are rejected.
No Claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL RANDALL GAUGER whose telephone number is (571)272-1325. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffery Lundgren can be reached at (571)272-5541. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/P.R.G./ Examiner, Art Unit 1629
/JEFFREY S LUNDGREN/Supervisory Patent Examiner, Art Unit 1629
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