DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/10/2023 has been entered.
This Office action is in response to applicant’s amendments filed 06/08/2023. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . In applicant’s amendments filed 06/08/2023, claims 3, 10, and 18 were cancelled, claims 7, 15, and 16 were amended, and claims 2, 9, and 17 were withdrawn. In addition, claims 8, 11, and 12 were previously withdrawn from consideration in the Non-Final Rejection dated 06/14/2022.
Claims 1, 2, 4-9, 11-17, 19, and 20, as filed on 06/08/2023, are currently pending. Claims 1, 4-7, 13-16, 19, and 20, as filed on 06/08/2023, are considered below.
Response to Amendment
The claim objections have been obviated in view of applicant’s amendments and arguments filed 06/08/2023. The rejections under 35 U.S.C. § 112(b) have been obviated in view of applicant’s amendments and arguments filed 06/08/2023, and were withdrawn. The statutory double patenting rejections of claims 1, 4-7, 13, and 14 under 35 U.S.C. § 101 were not withdrawn in view of applicant’s amendments and arguments filed 06/08/2023, see below. The nonstatutory double patenting rejections of claims 15, 16, 19, and 20 were not withdrawn in view of applicant’s amendments, arguments, or terminal disclaimer filed 06/08/2023, see below.
Claim Objections
Claim 16 is objected to because of the following informality:
In claim 16, lines 2-3, “the different one of the plurality of human interface mechanisms” should be --- the different ones of the plurality of human interface mechanisms ---.
Appropriate correction is required.
Double Patenting
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, 4-7, 13, and 14 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-4, 6, 7, and 9 of prior U.S. Patent No. 10,940,354. These are statutory double patenting rejections.
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 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 15, 16, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-13 of U.S. Patent No. 10,940,354 (reference application).
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of the reference application. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claim is encompassed by claim 10 of the reference application.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of the reference application. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claim is encompassed by claim 11 of the reference application.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of the reference application. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claim is encompassed by claim 12 of the reference application.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of the reference application. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claim is encompassed by claim 13 of the reference application.
Response to Arguments
Applicant's arguments filed 06/08/2023 have been fully considered but they are not persuasive.
Applicant’s arguments that “Several of the pending claims were rejected as claiming a similar invention to US 10,940,354. Applicant submits concurrently a Terminal Disclaimer to overcome this rejection. Applicant submits that all of the pending claims are in allowable form.” is unpersuasive.
Specifically, the filing of a terminal disclaimer cannot overcome the statutory double patenting rejections of claims 1, 4-7, 13, and 14 under 35 U.S.C. § 101, and applicant failed to cancel or amend the claims that are directed to the same invention so they are no longer coextensive in scope.
In addition, as stated in the Advisory Action, dated 07/03/2023:
“The terminal disclaimer (TD) does not overcome the nonstatutory double patenting rejections because the TD has been disapproved. The TD is improper because the person who signed the TD is not the applicant, patentee or an attorney or agent of record. Please file a POA that gives power to the attorney who is signing the TD. Also, resubmit the TD or file a TD that is signed by the applicant.” Emphasis added.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GARY D URBIEL GOLDNER whose telephone number is (313)446-6554. The examiner can normally be reached between 9AM and 5PM, Eastern Time, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LoAn B Jimenez can be reached on (571)272-4966. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/GARY D URBIEL GOLDNER/Primary Examiner, Art Unit 3784