DETAILED ACTION
Claims 1-20 are currently pending. Claims 1-20 are maintained in rejection in view of a provisional nonstatutory double patenting rejection citing copending Application No. 18/053,199 in view of Veilleux Jr. et al. (US 2016/0282061 A1). The Terminal Disclaimer filed 04/23/2026 is disapproved because the party identified in the terminal disclaimer (“Wabtec Hauts-de-France”) is not the applicant of record (“Faiveley Transport Tours”). Please correct and resubmit the TD. (No new fee required). This Office action is final.
Terminal Disclaimer
The Terminal Disclaimer filed 04/23/2026 is disapproved.
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer (“Wabtec Hauts-de-France”) is not the applicant of record (“Faiveley Transport Tours”). A request to change the applicant under 37 CFR § 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR §§ 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR § 1.46(c).
The terminal disclaimer identifies a party who is not the applicant. For cases filed on/after 9/16/2012, 37 CFR § 1.321 specifies that the applicant can disclaim, and the terminal disclaimer must specify the extent of the applicant’s ownership.
To remedy this, a request under 37 CFR § 1.46(c) to change the applicant needs to be filed, which includes:
(1) a request, signed by a 37 CFR § 1.33(b) party;
(2) a corrected ADS (37 CFR § 1.76(c)) that identifies the “new” applicant in the applicant information, and is underlined since it is new; and
(3) a 37 CFR § 3.73(c) statement showing chain of title to the new applicant.
Along with the 37 CFR § 1.46(c) request the Office needs a POA that gives power to the attorney who is signing the TD, along with another copy of the TD, unless filing a TD that is signed by the applicant.
Note: The applicant cited on the TD must be cited exactly as it is cited on the ADS and or filing receipt and also in its entirety. If more space for applicant section is required, please use smaller fonts or submit an attachment page to the TD.
Please correct and resubmit the TD. (No new fee required).
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/053,199 in view of Veilleux Jr. et al. (US 2016/0282061 A1). The copending claims teach all of the limitations of the instant claims, including a positioning system for a pantograph, with the exception of the manifold being a monolithic body defined by layers of material that are stacked and fused together (i.e., additive manufacturing or 3-D printing of the manifold). However, Veilleux teaches a compact heat exchanger, wherein the manifold is a monolithic body defined by layers of material that are stacked and fused together (Para. [0031-0032]) (Fig. 5). It would have been obvious to construct the manifold of the copending claims using the 3-D printing process taught by Veilleux in order to perform free-form fabrication of delicate channels and tubes which results in a strong and lightweight manifold (see Veilleux, Para. [0034-0036]).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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 ZACHARY L KUHFUSS whose telephone number is (571)270-7858. The examiner can normally be reached Monday - Friday 10:00am to 6:00 pm CDT.
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, Samuel (Joe) Morano can be reached at (571)272-6682. 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.
/ZACHARY L KUHFUSS/Primary Examiner, Art Unit 3615
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