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 .
Response to Arguments/Amendments
This Office Action is responsive to the amendment filed 4/28/2026. Claims 1-20 are pending. Claims 1, 11, 13-15, 18, and 19 have been amended. Claims 5-8, and 15-18 are withdrawn from further consideration.
Claims 1-4, 9-14, 19, and 20 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,932,979. Claims 1-3, 9-13, 19, and 20 were rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,312,731. Applicant indicates that a Terminal Disclaimer may be filed if the claims are otherwise allowable. Since the double patenting rejections still appear to be appropriate, they have been maintained.
The rejection of claim(s) 1-3, 9-13, 19, and 20 under 35 U.S.C. 102(a)(1) as being anticipated by Czarnecki et al. (US 2019/0062978; cited by Applicant) is withdrawn in response to Applicant’s amendments.
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 1-4, 9-14, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,932,979. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are either broader than or substantially the same as the conflicting claims with only minor differences in language.
Claims 1-3, 9-13, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,312,731. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are either broader than or substantially the same as the conflicting claims with only minor differences in language or only minor obvious differences. For example, claims 1 and 2 are broader than the conflicting claims, and despite differences in wording, are considered to be anticipated by the conflicting claims. And for example, claim 3 recites differences in structure, but those differences are considered to be minor differences in structure that would have been obvious to a PHOSITA (see the following prior art rejections for discussions of what is known in the prior art and considered to be obvious).
Election/Restrictions
The Examiner notes that claims 5-8, and 15-18 appear to be eligible for rejoinder if the elected claims are allowed. However, claims 8 and 18 contain the limitation “an actuator” which should be amended to be “the actuator” to avoid any antecedent basis issues.
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 DAVID G CORMIER whose telephone number is (571)270-7386. The examiner can normally be reached M-F: 9:30 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Barr can be reached at (571) 272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID G. CORMIER
Examiner
Art Unit 1711
/DAVID G CORMIER/ Primary Examiner, Art Unit 1711
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