DETAILED ACTION
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 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 26 of U.S. Patent No. 11460221 B2. Although the claims at issue are not identical, they are not patentably distinct from each other or are minor variations of each other.
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Hoang can be reached at 571-272-6460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON LAU/Primary Examiner, Art Unit 3762
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