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 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.
Allowable Subject Matter
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), but these claims are otherwise allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach the combination of limitations recited in independent claims 1, 14 and 19. The most relevant prior art reference is Geoffroy (US 2021/0122245 A1) (“Geoffroy ‘245”). However, Geoffroy ‘245 fails to teach all of the limitations of the independent claims. For example, Geoffroy ‘245 teaches many of the limitations of claim 1, including a positioning system for a pantograph, the positioning system comprising: a manifold (Fig. 1) comprising a supply pipe (208), a pantograph pipe (220), and a valve pipe (54),
However, as noted by strikethrough above, Geoffroy ‘245 fails to teach the limitations regarding the manifold housing, including a monolithic body defined by layers of material that are stacked and fused together, and Geoffroy ‘245 fails to teach the limitations regarding the various pipes projecting from the housing and the housing defining the fluid chamber. While Geoffroy ‘245 teaches fluid diagrams and system components that satisfy many of the claim limitations (Figs. 1-8), there is no depiction of the manifold housing, and Geoffroy ‘245 would not inherently have a manifold housing that satisfies all of the claimed limitations regarding the physical structure of the manifold housing. Additional references teach manifolds constructed by additive manufacturing (i.e., 3-D printing) (see, e.g., Veilleux Jr. et al. (US 2016/0282061 A1) and Taylor (US 2016/0298662 A1)). However, Examiner finds that it would require an improper degree of hindsight reasoning to construct the manifold housing of Geoffroy ‘245 using the additive manufacturing process of Veilleux or Taylor and additionally modify Geoffroy ‘245 such that the housing defines the chamber, and the supply pipe, pantograph pipe and the valve pipe all project from the housing, as claimed. Such a modification would seem to either require improperly modifying a modifying reference (modifying the layered manifold housing of Veilleux or Taylor) or require Geoffroy ‘245 to arrange the manifold housing using an improper degree of hindsight reasoning so that the physical manifestation of the manifold replicates the claimed manifold. Independent claims 14 and 19 include limitations similar to claim 1 regarding the monolithic construction and the physical components of the manifold. Thus, all claims are deemed nonobvious and allowable over the prior art.
Conclusion
The references made of record and not relied upon are considered pertinent to applicant's disclosure because the references relate to the state of the art in pantograph positioning systems: US-20230010860-A1, US-20230090618-A1, US-12459367-B2 and US-11565590-B2.
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.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) Morano can be reached on (571)272-6682. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY L KUHFUSS/Primary Examiner, Art Unit 3617