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 .
Letter of Suspension
As was noted in the letter of September 19, 2023, the Request for Deferral of Examination of July 20, 2023 was approved, and as such examination of the application was deferred for a period of 36 months from December 27, 2022. A Non-Final Rejection was mistakenly sent before the end of the deferral period on May 6, 2024, but after discussion with the applicant’s representative Thomas Tatonetti, this action was vacated with the letter of June 28, 2024. As the deferral period has ended, examination of the present application begins herewith.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 11,814,250. This is a statutory double patenting rejection.
Conclusion
It is noted that the applicant did not take the opportunity to amend the claims during the deferral period. As such, the above rejection is identical to the vacated rejection of May 6, 2024.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A DEUBLE whose telephone number is (571)272-6912. The examiner can normally be reached Monday-Friday flex schedule.
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, Gene Crawford can be reached at 571-272-6911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK A DEUBLE/Primary Examiner, Art Unit 3651
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