DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-11, 13-20 are pending in this amended application.
Double Patenting
3. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
4. Claims 1-11, 13-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of Grillet et al., US Co-Pending Patent Application No. 18/293,237.
It is clear that all the elements of the instant application independent claim 1 is to be rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of US Co-Pending Patent Application No. 18/293,237. Although the conflicting claims are not identical, they are not patentably distinct from each other because both the claims of instant application and the claims of US Co-Pending Patent Application No. 18/293,237 are almost same in scope. Omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same function as before. See In re KARLSON (CCPA) 136 USPQ 184 (1963).
Claim 1 (independent) of this instant application is patentably indistinct from claim 1 of US Co-Pending Patent Application No. 18/293,237. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
Allowable Subject Matter
5. Claims 1-11, 13-20 are allowed.
REASONS FOR ALLOWANCE
6. The following is an examiner’s statement of reasons for allowance:
The independent claim 1 is allowable over the prior arts of record since the cited references taken individually or in combination fails to particularly anticipate or disclose or suggest the claim limitations recited “wherein the predetermined operation is heating; measuring the deformation to obtain at least one deformation parameter; providing a first master image; performing an image processing operation on the first master image to obtain a second master image; printing the second master image on a second printable substrate to obtain the decorative layer; wherein the image processing operation involves at least modifying the first master image on the basis of the at least one deformation parameter”, in combination with all other limitations as claimed in independent claim 1.
Response to Arguments
7. Applicant’s arguments with respect to claims 1-11, 13-20 have been considered but are moot.
Conclusion
8. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HARIS SABAH whose telephone number is (571)270-3917. The examiner can normally be reached on Monday/Thursday from 7:00AM to 5:30PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Benny Tieu, can be reached on (571)272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. The Examiner’s personal fax number is (571)-270-4917.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/HARIS SABAH/Examiner, Art Unit 2682
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