DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
The drawings were received on 18 August 2025. These drawings are entered.
Specification
Amendments to the specification were received on 18 August 2025. These amendments are entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(g)(1) during the course of an interference conducted under section 135 or section 291, another inventor involved therein establishes, to the extent permitted in section 104, that before such person’s invention thereof the invention was made by such other inventor and not abandoned, suppressed, or concealed, or (2) before such person’s invention thereof, the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it. In determining priority of invention under this subsection, there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other.
Claim(s) 11-26, 28, 31-36 is/are rejected under pre-AIA 35 U.S.C. 102(g) as failing to demonstrate due diligence as to provoking interference over U.S. Publication No. 2022/0054757 (“Houmand”) based on the publication thereof on 24 February 2022 which antedates the first appearance of the instant claims (01 August 2023) by more than one year.
35 U.S.C. 135(a)(2) recites:
“(2) TIME FOR FILING.—A petition under this section with respect to an invention that is the same or substantially the same invention as a claim contained in a patent issued on an earlier application, or contained in an earlier application when published or deemed published under section 122(b), may not be filed unless such petition is filed during the 1-year period following the date on which the patent containing such claim was granted or the earlier application containing such claim was published, whichever is earlier.
Specifically, while the instant claims are purported to be copied from U.S. Patent No. 11,400,222 (published on 02 August 2022), the instant claims first appeared in publication in the above noted pre-grant publication in identical form to those which later issued.
Interference
Applicant has suggested an interference pursuant to 37 CFR 41.202(a) in a communication filed 01 August 2023.
Applicant failed to (1) identify all claims the applicant believes interfere, and/or (2) propose one or more counts, and/or (3) show how the claims correspond to one or more counts. See 37 CFR 41.202(a)(2) and MPEP § 2304.02(b).
Applicant failed to provide a claim chart comparing at least one claim of each party corresponding to the count. See 37 CFR 41.202(a)(3) and MPEP § 2304.02(c).
Applicant failed to provide a detailed explanation as to why applicant will prevail on priority. See 37 CFR 41.202(a)(4), (a)(6), (d) and MPEP § 2304.02(c).
Applicant failed to provide a claim chart showing the written description for each claim in the applicant’s specification. See 37 CFR 41.202(a)(5) and MPEP § 2304.02(d).
Furthermore, as noted above, the instant claims have been rejected under 35 USC 102(g) inasmuch as any petition to consider prior conception and invention for purposes of interferences was not made within at least one year as per the earliest publication of the claims in question. As such, there is insufficient showing that Applicant possesses the necessary standing to bring forth a claim of interference and would be likely to prevail.
Response to Arguments
Applicant’s arguments with respect to the noted issues under 35 USC 112(a) and (b) been fully considered and are persuasive. As such, these rejections have been withdrawn. However, as noted above there presents new issues concerning the timeliness as to the filing of the instant claims for purposes of initiating interference proceedings.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM R CARPENTER whose telephone number is (571)270-3637. The examiner can normally be reached Mon. to Thus. - 7:00AM to 5:00PM (EST/EDT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEVIN SIRMONS can be reached at (571) 272-4965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM R CARPENTER/Primary Examiner, Art Unit 3783
10/01/2025