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 .
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, 13, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over corresponding claims of U.S. Patent No. 11,878,820. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 1 is anticipated by claim 22 of ‘820, which recites a method of deploying a plurality of spacecraft (abstract), the method comprising: coupling the plurality of spacecraft in a stack to a payload adaptor via at least one tension rode extending along an entirety of the stack along a longitudinal axis (securing a first end of a tension rod to the rocket and securing a second end of the tension rod to the stack); launching the payload adaptor into an orbit (launching until it attains an orbit); and releasing, after the payload adaptor reaches the orbit, the at least one tension rod, wherein the releasing decouples the entirety of the stack from the payload adaptor (releasing the stack from the rocket).
Claim 13 is anticipated by claim 23, as it depends from claim 22, of ‘820, which recites a method of releasing spacecraft from a payload adaptor (abstract), the method comprising: arranging spacecraft in a stack on the payload adaptor, the stack extending along a longitudinal axis (securing a first end of a tension rod to the rocket and securing a second end of the tension rod to the stack); applying a compressive load along a length of the stack (applying a compressive load); launching the payload adaptor into an orbit (launching the rocket until it attains an orbit); and after the payload adaptor reaches the orbit, releasing the compressive load (releasing the compressive load by moving the tension rod to a second configuration) to allow an entirety of the stack to passively separate from the payload adaptor (releasing, as the rocket is in the orbit, the entire stack from the rocket to allow the layers of the stack to passively separate).
Claim 19 is anticipated by claim 22 of ‘820, which recites a method for deploying spacecraft into orbit (abstract), the method comprising: arranging a stack of spacecraft on a payload adaptor, the stack extending along a longitudinal axis, with each layer of the stack defined by at least one spacecraft and with each spacecraft being releasably mated with at least one spacecraft in an adjacent layer (arranging a stack of spacecraft on a rocket, with each layer of the stack defined by at least one spacecraft and with each spacecraft being releasably mated with at least one spacecraft in an adjacent layer); securing a first end of a tension rod to the payload adaptor and a second end of the tension rod to the stack (securing a first end of a tension rod to the rocket and securing a second end of the tension rod to the stack); launching the payload adaptor into an orbit (orbit); and releasing, as the payload adaptor is in the orbit, an entirety the stack from the payload adaptor to allow the stack to passively separate (releasing, as the rocket is in the orbit, the entire stack from the rocket to allow the layers of the stack to passively separate).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rochefort (US 4,854,526 A).
Regarding claim 13, Rochefort discloses a method of releasing spacecraft from a payload adaptor (abstract), the method comprising:
arranging spacecraft in a stack (510) on the payload adaptor (520), the stack extending along a longitudinal axis (as shown in fig. 5);
applying a compressive load along a length of the stack (via first and second clamp frames 511, 512, as shown in fig. 5);
launching the payload adaptor into an orbit (via launch vehicle body 501, as shown in fig. 5; see also col. 3, lines 40-45); and
after the payload adaptor reaches the orbit, releasing the compressive load to allow an entirety of the stack to passively separate from the payload adaptor (col. 4, lines 61-67, regarding to dispense the stack of satellites, the thrusters are used first to orient the stack; next, the pyro technic bolts are detonated at the corners of the tie down plate and the springs then eject the stack; Examiner notes that the first and second clamp frames 511, 512 are applying a compressive load along the length of the stack during launch and transport by the launch vehicle 501, and are necessarily released during ejection of the stack so as to allow the individual satellites 510 to separate from each other in space, see also col. 3, lines 15-22).
Regarding claim 14, Rochefort discloses the invention in claim 13, and further discloses wherein the step of applying the compressive load along the length of the stack comprises engaging the stack with at least one hold down and deploy system coupled to the payload adaptor (tie down assembly 521, as shown in fig. 5; see again col. 4, lines 61-67).
Regarding claim 15, Rochefort discloses the invention in claim 14, and further discloses wherein the step of releasing the compressive load comprises disengaging the at least one hold down and deploy system from the stack (see again col. 4, lines 61-67).
Regarding claim 16, Rochefort discloses the invention in claim 15, and further discloses wherein the step of releasing the compressive load further comprises disengaging the at least one hold down and deploy system from the payload adaptor (see again col. 4, lines 61-67; Examiner notes that clamps 511, 512 are necessarily released from both the stack and the tie down plate 524).
Response to Arguments
Applicant's arguments filed on November 4, 2025, with respect to the rejection of claims 13-16 under §102 have been fully considered but they are not persuasive. Specifically, Applicant argues that the use of springs in Rochefort equate to actively separating the stack, as opposed to passively separating per amended claim 13. Even if Examiner agreed, the compressive load being applied in this case is being applied by the first and second clamp frames 511, 512, not the springs in the tie down assembly 521. As noted above, the compressive load of the clamp frames is necessarily released after separation to allow the spacecraft 510 to drift apart. Therefore, claims 13-16 remain rejected under §102 as detailed in the present Office Action.
Allowable Subject Matter
Claims 1 and 19 would be allowable if rewritten or amended to overcome the double patenting rejection(s) set forth in this Office action, notwithstanding the filing of a terminal disclaimer as detailed above.
Claims 2-12, 17-18, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The claims are allowable for substantially the same reasons as recorded in the Notice of Allowance filed on September 13, 2023, in application number 16/870,974.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRADY W FRAZIER whose telephone number is (469)295-9263. The examiner can normally be reached Monday-Friday 9:00am-5:00pm CT.
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, Kimberly Berona can be reached at 571-272-6909. 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.
/BRADY W FRAZIER/Primary Examiner, Art Unit 3647