Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Terminal Disclaimer
The terminal disclaimer filed on 2/19/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent Number 10,598,699 has been reviewed and is NOT accepted. The prior patent was cited incorrectly. The correct citation is 10,598,699, rather than 10/598,699; the slash should be replaced with a comma. Additionally, all claims stand rejected on the ground of nonstatutory double patenting over Patents 10,598,699 and 10,823,761; however, a terminal disclaimer has been filed only for Patent 10,598,699.
NOTE: Per MPEP 804, a complete response to a nonstatutory double patenting (NSDP) is either a reply by Applicant showing that the claims subject to the rejection are patentably distinct from the reference claims or the filing of a terminal disclaimer. Such a showing or filing will not be held in abeyance.
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 1-3 and 5-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 24 of U.S. Patent No. 10,598,699. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are anticipated by the claims of the patent as layout below.
Pending Application 17/984,209
All the limitations of the below pending claims are anticipated by the underlined limitations of the patent.
Patent 10598699
Claim 1. A method for indicating tampering with a utility enclosure, the utility enclosure comprising a meter box [meter box 1], the method comprising:
uniting a connector housing member [a connector 5] to a receiver housing member [receiving housing 4] comprising an engaging member [engaging member 11];
disposing a frangible member [frangible portion (or urging member) 8] on the receiver housing member [4] for urging contact of the connector housing member [5] with the engaging member [11],
wherein the connector housing member [5] may be urged into contact with the engaging member [11] of the receiver housing member [4].
Claim 1. A method for creating a seal,
the method comprising:
uniting a connector housing member comprising a force-bearing surface to a receiver housing member comprising an engaging member;
disposing a frangible member on the receiver housing member for urging contact of the connector housing member with the engaging member,
wherein the frangible member bears against the force-bearing surface of the connector housing member urging contact of the connector housing member with the engaging member during the uniting; and flexibly biasing the engaging member to engage the connector housing member to create a seal, wherein the engaging member is disposed separably with respect to the frangible member.
Claim 2. The method of claim 1, further comprising the step of creating a tamper-evident seal.
Claim 4. The method of claim 1, further comprising the step of creating a tamper-evident seal.
Claim 3. The method of claim 1, further comprising the step of mounting the connector housing member [5] and receiver housing member [4] on a retaining member [retaining band 13].
Claim 5. The method of claim 1, further comprising the step of mounting the connector housing member and receiver housing member on a retaining member.
Claim 5. The method of claim 1, wherein the engaging member [11] is disposed separately from the frangible member [8].
Claim 24. The method of claim 1, wherein the engaging member is disposed separately from the frangible member.
Claim 6. The method of claim 1, wherein the frangible member [8] further comprises a frangible sealing device.
Claim 2. The method of claim 1, wherein the frangible member further comprises a frangible sealing device.
Claim 7. The method of claim 1, wherein the engaging member [11] is integrally formed with the receiver housing member [4].
Claim 6. The method of claim 1, wherein the engaging member is integrally formed with the receiver housing member.
Claim 8. The method of claim 1, wherein the connector housing member [5] is mounted to a first end of a meter sealing ring [retaining band 13], and the receiver housing member [4] is mounted to a second end of the sealing ring [13] for securing a meter [2] to a meter box [1].
Claim 3. The method of claim 1, wherein the connector housing member is mounted to a first end of a meter sealing ring, and the receiver housing member is mounted to a second end of the sealing ring for securing a meter to a meter box.
Claims 1-3 and 5-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 10,823,761. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are anticipated by the claims of the patent as layout below.
Pending Application 17/984,209
All the limitations of the below pending claims are anticipated by the underlined limitations of the patent.
Patent 10823761
Claim 1. A method for indicating tampering with a utility enclosure, the utility enclosure comprising a meter box [meter box 1], the method comprising:
uniting a connector housing member [a connector 5] to a receiver housing member [receiving housing 4] comprising an engaging member [engaging member 11];
disposing a frangible member [frangible portion (or urging member) 8] on the receiver housing member [4] for urging contact of the connector housing member [5] with the engaging member [11],
wherein the connector housing member [5] may be urged into contact with the engaging member [11] of the receiver housing member [4].
Claim 1. A method for indicating tampering with a meter box,
the method comprising:
uniting a connector housing member comprising a force-bearing surface to a receiver housing member comprising an engaging member;
disposing a frangible member on the receiver housing member for urging contact of the connector housing member with the engaging member,
wherein the frangible member bears against the force-bearing surface of the connector housing member urging contact of the connector housing member with the engaging member during the uniting; and biasing the engaging member to engage the connector housing member.
Claim 2. The method of claim 1, further comprising the step of creating a tamper-evident seal.
Claim 2. The method of claim 1, further comprising the step of creating a tamper-evident seal.
Claim 3. The method of claim 1, further comprising the step of mounting the connector housing member [5] and receiver housing member [4] on a retaining member [retaining band 13].
Claim 3. The method of claim 1, further comprising the step of mounting the connector housing member and receiver housing member on a retaining member.
Claim 5. The method of claim 1, wherein the engaging member [11] is disposed separately from the frangible member [8].
Claim 5. The method of claim 1, wherein the engaging member is disposed separately from the frangible member.
Claim 6. The method of claim 1, wherein the frangible member [8] further comprises a frangible sealing device.
Claim 6. The method of claim 1, wherein the frangible member further comprises a frangible sealing device.
Claim 7. The method of claim 1, wherein the engaging member [11] is integrally formed with the receiver housing member [4].
Claim 4. The method of claim 1, wherein the engaging member is integrally formed with the receiver housing member.
Claim 8. The method of claim 1, wherein the connector housing member [5] is mounted to a first end of a meter sealing ring [retaining band 13], and the receiver housing member [4] is mounted to a second end of the sealing ring [13] for securing a meter [2] to a meter box [1].
Claim 7. The method of claim 6, wherein the connector housing member is mounted to a first end of a meter sealing ring, and the receiver housing member is mounted to a second end of the sealing ring for securing a meter to a meter box.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The specification discloses that “a tamper-evident seal could be used with the urging member” (page 23, lines 1-2) and that “the sealing device 7 as shown in the following embodiments, comprises a frangible portion 8 (or urging member)” (page 13, lines 14- 15). Disposing the frangible member 8 as recited in claim 1 inherently results in a tamper-evident seal. Accordingly, this limitation does not further limit claim 1. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 5-8 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Langdon et al (U.S. Patent 4,934,747.
As to claim 1, Langdon et al teaches uniting a connector housing member [tongue 34] to a receiver housing member [three-sided hollow housing 42] comprising an engaging member [a threaded fastener 60; column 5, lines 6-9]; disposing a frangible member [thin wire 88] on the receiver housing member [housing 42; disposing the thin wire 88 on tabs 80 & 82; tabs 80 & 82 are part of the housing 42; column 6, lines 13-20] for urging contact [threaded fastener 60 threadingly engages the apertures 36 in the tongue 34] of the connector housing member [tongue 34] with the engaging member [threaded fastener 60], wherein the connector housing member [tongue 34] may be urged into contact with the engaging member [threaded fastener 60] of the receiver housing member [42].
As to claim 2, Langdon et al teaches the step of creating a tamper-evident seal (column 6, lines 59-61).
As to claim 3, Langdon et al teaches the step of mounting the connector housing member [tongue 34; column 4, lines 22-27] and receiver housing member [housing 42; column 4, 61-62] on a retaining member [band 22].
As to claim 5, Langdon et al teaches wherein the engaging member [threaded fastener 60] is disposed separately [clearly illustrated in Fig 5] from the frangible member [thin wire 88].
As to claim 6, Langdon et al teaches wherein the frangible member [thin wire 88] further comprises a frangible sealing device [seal means 86].
As to claim 7, Langdon et al teaches wherein the engaging member [threaded fastener 60] is integrally formed [clearly illustrated in Fig 4] with the receiver housing member [housing 42].
As to claim 8, Langdon et al teaches wherein the connector housing member [tongue 34] is mounted [column 4, lines 25-27] to a first end [first end 30] of a meter sealing ring [band 22], and the receiver housing member [housing 42] is mounted [column 4, line 61] to a second end [second end 32] of the sealing ring [band 22] for securing a meter to a meter box.
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUDY NGUYEN whose telephone number is (571)272-2258. The examiner can normally be reached 8:30 AM - 5 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, Kiesha Bryant can be reached at 571-272-3606. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUDY NGUYEN/Supervisory Patent Examiner, Art Unit 2858