FUEL INJECTOR TESTING MACHINE
FINAL OFFICE ACTION
This action is in response to the Applicant’s amendment of Dec. 29, 2025.
CLAIMS
In the event that the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same.
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.
In response to the Applicant’s claim amendments, claims 1 - 5, 9 - 14, and 17 - 25 are now rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,703,023 (parent application 17/466,011). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations set forth in the present claims have been set forth or suggested in the respective patented claim.
With respect to independent claim 1, patented independent claim 1 sets forth the subject matter thereof.
With respect to claim 2, patented claim 1 sets forth the subject matter thereof.
With respect to claim 3, patented claim 1 sets forth the subject matter thereof.
With respect to claim 4, patented claim 1 sets forth the subject matter thereof.
With respect to claim 5, patented claim 1 sets forth the subject matter thereof.
With respect to independent claim 9, patented independent claim 18 sets forth the subject matter thereof.
With respect to claim 10, patented claim 18 sets forth the subject matter thereof.
With respect to claim 11, patented claim 18 sets forth the subject matter thereof.
With respect to claim 12, patented claim 18 sets forth the subject matter thereof.
With respect to claim 13, patented claim 18 sets forth the subject matter thereof.
With respect to claim 14, patented claim 18 sets forth the subject matter thereof.
With respect to claim 17, patented claim 18 sets forth the subject matter thereof.
With respect to claim 18, patented claim 18 sets forth the subject matter thereof.
With respect to claim 19, patented claim 19 sets forth the subject matter thereof.
With respect to claim 20, patented claim 20 sets forth the subject matter thereof.
With respect to claim 21, patented claim 18 sets forth the subject matter thereof.
With respect to claim 22, patented claim 2 sets forth the subject matter thereof.
With respect to claim 23, patented claim 8 suggests the subject matter thereof.
With respect to claim 24, patented claim 1 suggests the subject matter thereof.
With respect to claim 25, patented claim 8 suggests the subject matter thereof.
35 U.S.C. § 102
In view of the Applicant’s amendments to the claims, the claim rejection under 35 U.S.C. 102(a)(1) as set forth in the previous Office Action (9/30/2025) with respect to the Applicant’s cited prior art of Cueto (2013/0031775) has been overcome.
35 U.S.C. § 103
In view of the Applicant’s amendments to the claims, the claim rejection under 35 U.S.C. 103 as set forth in the said previous Office Action with respect to the Applicant’s cited prior art of Cueto (2013/0031775) has been overcome.
Response To Arguments
The Applicant’s arguments have been considered and have been found to be persuasive in view of the Applicant’s amendments to the claims. All previous grounds of rejection have been overcome, however the claims have not been found to be allowable in view of the Double Patenting rejection set forth in this Office Action.
CONTACT INFORMATION
The Applicant's amendment necessitated the new grounds of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). The 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 from the Examiner should be directed to Eric S. McCall whose telephone number is 571-272-2183. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. For questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, the Applicant is advised to use the USPTO Automated Interview Request (AIR) Form at:
https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/Eric S. McCall/Primary Examiner
Art Unit 2855