DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, 7, and 14 of copending Application No. 16/945,914 (reference application). Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1 and 2 are generic to all that is recited in claims 1, 3, 5, 6, 7, and 14 of Application No. 16/945,914. In other words, claims 1, 3, 5, 6, 7, and 14 of Application No. 16/945,914 fully encompasses the subject matter of claim 1 and therefore anticipates claims 1 and 2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 8, 9, 15 and 16 of U.S. Patent No. 10,822,839. Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claims 1, 2, 8, 9, 15 and 16 of U.S. Patent No. 10,822,839. In other words, claims 1, 2, 8, 9, 15 and 16 of U.S. Patent No. 10,822,839 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1 and 2 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by U.S. Patent Number 6,684,670 to Agbay et al.
Agbay et al. disclose an apparatus (10) for securing first (28) and second (26) ends of a meter sealing ring (22), the meter sealing ring adapted for use in installing a meter (meter enclosed within cover 12) to a watthour meter box (14), the apparatus comprising: a lock (34) having a head member (36) and a shank portion (38) comprising moveable locking members (44), the shank portion being inserted through an aperture (opening that allows the shank portion to extend therethrough; inserted during locking operation thereof) formed in the first end of the sealing ring; and a retaining sleeve (30) adapted to capture the shank portion (figure 7), wherein the lock is permanently retained on the first end of the sealing ring (figures 5 and 7; column 4, lines 21-36), as in claim 1.
Agbay et al. also disclose the first end of the sealing ring is disposed between the retaining sleeve and the head member (figures 5 and 7), and wherein the lock is permanently retained on the first end of the sealing ring (via engagement between the locking members and recess 60 of sleeve 32), as in claim 2.
Response to Arguments
Applicant's arguments filed May 5, 2025 have been fully considered but they are not persuasive. In response to the argument that Agbay et al. do not disclose the lock is permanently retained on the first end of the sealing ring, the examiner respectfully disagrees. The force needed to remove the lock from the sealing ring has already been discussed in the Office action mailed December 4, 2024. Concerning, the applicant’s assertion that Agbay et al. needs a key during initial assembly, therefore cannot be considered permanently retained, the examiner disagrees. During normal use of the sealing ring assembly, the lock of Agbay et al. is permanently retained, as the claims are directed to the assembly as a whole, and not the method of assembly, thus the steps Agbay et al. disclose during assembly are not relevant to the current claims.
In regards to the argument that the shank portion of Agbay et al. is not inserted through an aperture formed in the first end of the sealing ring, the examiner disagrees. As clearly shown in figures 2 and 7, the shank portion is inserted through an aperture in the first end of the sealing ring.
Responding to the argument that Agbay et al. does not disclose “the first end of the sealing ring is disposed between the retaining sleeve and the head member,” as noted and concerning the “exterior tubular collar 32,” and head member 36 are both disposed with respect to one side of the first end, the examiner requests the applicant to review the rejection concerning the aforementioned recitation, as the elements the applicant is pointing to are not utilized in the rejection. As clearly shown in figures 2, 4, 5 and 7 of Agbay et al., a portion of the first end of the sealing ring is disposed between the retaining sleeve and the head member.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J BOSWELL whose telephone number is (571)272-7054. The examiner can normally be reached M-R: 9-4; F 9-12.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina Fulton can be reached at 571-272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J BOSWELL/ Primary Examiner, Art Unit 3675
CJB /cb/
December 9, 2025