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.
Claim 1-2 and 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6-11 and 13-15 of U.S. Patent No. 12590643. Although the claims at issue are not identical, they are not patentably distinct from each other because they define substantially the same structures with slightly different wording and in different combinations.
Claim 1 differs from patent claim 13 in that the details of the MPA fill valve are not recited, however, they are recited in dependent claim 14.
Claim 1 also differs from patent claim 13 in that the powered MPA one-way valve is defined more broadly as a powered valve, as opposed to the powered solenoid valve of the patent claim. A powered valve is obvious in view of a powered solenoid valve.
Claim 1 also differs from patent claim 13 in that reciprocal motion of the MPA one-way valve poppet occurs at least partially responsive to a predetermined amount of fluid pressure differential between the MPA cavity and the at least one corresponding wheel brake whereas the patent claim defines a fluid pressure differential between the source of pressurized hydraulic fluid and the MPA cavity. However, this feature is set forth in claim dependent 15. Claim 1 is therefore an obvious combination of claims 13-15.
Claim 2 recites “the source of pressurized hydraulic fluid is at least one of a pump piston of a secondary brake module and a master cylinder.” This is the obvious combination of claims 13-15 with the master cylinder of claim 17.
Claim 8 recites details of the MPA one-way valve corresponding to patent claim 6. This is the obvious combination of claims 13-15 with claim 6.
Claim 9 recites details of the MPA one-way valve corresponding to patent claim 7. This is the obvious combination of claims 13-15 with claim 7.
Claim 10 recites details of the MPA one-way valve corresponding to patent claim 8. This is the obvious combination of claims 13-15 with claim 8.
Claim 11 recites details of the MPA one-way valve corresponding to patent claim 9. This is the obvious combination of claims 13-15 with claim 9.
Claim 12 recites details of the MPA one-way valve corresponding to patent claim 11. This is the obvious combination of claims 13-15 with claim 11.
Claim 13 recites details of the MPA one-way valve corresponding to patent claim 10. This is the obvious combination of claims 13-15 with claim 10.
Claim 14 recites details of the MPA one-way valve corresponding to patent claim 15. This is the obvious combination of claims 13-15.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. It is noted that reference application has been allowed and has a projected patent number of 12590643 and issue date of 3/31/2026.
Allowable Subject Matter
Claims 15-20 are allowed.
Claims 3-7 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.
Response to Arguments
Applicant's arguments filed 6/24/2026 have been fully considered but they are not persuasive.
Regarding MPEP 804 I.B.1(b)(i), the passage indicates that the earlier application should be permitted to issue to a patent “thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent.” While it is preferable to allow the earlier filed application and reject the later filed application, in this case, another examiner had already allowed the earlier application. Allowing this application would not have functioned to convert a provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection.
Regarding the distinctness of claim 13, Applicant argues that “Claims 1-2 and 8-14 of the present application do not recite or suggest a valve poppet shoulder of a powered MPA one-way valve including a resilient annular seal contained within a sealing groove extending circumferentially around a valve poppet shoulder with the sealing groove being cooperatively defined at least partially longitudinally between a distal valve poppet flange of the valve poppet body and an annular poppet collar as recited in claim 13 of the '463 application. Therefore, claims 1- 2 and 8-14 of the present application are patentably distinct from claims 13-15 of the '463 application.” This is not persuasive as only a one-way test for distinctness is required, as Applicant could have filed the conflicting claims in a single application. MPEP 804(II)(B)(4). Applicant’s arguments here appear to be based on the obviousness of the reference claims in view of the application claims, which is the second part of the two-way test for distinctness.
Conclusion
THIS ACTION IS MADE FINAL. 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 BRADLEY T KING whose telephone number is (571)272-7117. The examiner can normally be reached 10:30-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at 571 272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY T KING/Primary Examiner, Art Unit 3616
BTK
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