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 .
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 18/282,938 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a frame member having: a closed cross-section portion, at least one flat part defined using Karman’s effective width, a reference flat part defined by a maximum width to effective width ratio, a Vickers hardness of 300 Hv or greater in a thickness in a middle portion, a reference flat part width ≤ 2.0 times the effective width, and a standard deviation ratio of hardness in a surface layer portion relative to a thickness middle portion.
The sole distinction between the claims is that the instant claims recite forming the frame member by hot-stamping, whereas the claims of Application No. 18/282,938 recite forming a frame member by cold pressing.
The difference in manufacturing process does not impart a patentably distinct structural difference to the claimed frame member, as both processes are capable of producing a frame member that satisfies the same claimed structural and hardness limitations.
Accordingly, the claimed invention would have been an obvious variation of the invention claimed in Application No. 18/282,938, and allowing both would result in an unjustified extension of patent exclusivity.
Although the claims of the instant application require a standard deviation ratio of hardness less than 1.0, whereas the claims of Application No. 18/282,938 require a standard deviation ratio greater than 1.0, both claims define and control the same hardness distribution parameter in the same portion of the frame member.
The recited difference represents a selection of opposite values of the same design variable, and does not impart a patentably distinct structural difference to the claimed frame member. Selecting whether the surface layer of the thickness of the middle portion exhibits greater hardness variation would have been an obvious design choice to one of ordinary skill in the art.
Further, the claims do not recite any structural limitation that would distinguish the resulting frame member based on the recited forming process.
This rejection may be overcome by filing a terminal disclaimer in compliance with 37 CFR 1.321 or by amending the claims to render them patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see Page 2, filed 3/26/26, with respect to claim 1 have been fully considered and are persuasive. The prior art rejection of claim 1 has been withdrawn.
This Double Patenting rejection may be overcome by filing a terminal disclaimer in compliance with 37 CFR 1.321 or by amending the claims to render them patentably distinct.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Amanda J Kreiling whose telephone number is (571)272-6091. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amanda Kreiling/Examiner, Art Unit 3726 6/9/26
/JASON L VAUGHAN/Primary Examiner, Art Unit 3726
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