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 .
Claim Rejections - 35 USC § 102
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.
Claims 1 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dreher (US 4010763).
Claims 1 and 14. Dreher discloses an apparatus and method for cutting V-shaped segments from a continuous sheet for making cigar wrappers (Abstract) wherein a tobacco wrapper sheet S (continuous web) is drawn from reel 11 through opposed feed rollers 12, 13 (feeding means) at least one of which is a driven roller (feeding a continuous web of substrate material). Sheet S then passes over oscillating idler roller 14 mounted on arm 15 which is held on a stationary pivot 16. Link arm 17 is pivotally fastened to arm 15 at 18 and to rotating disk 19 at eccentric pivot 20. Sheet S continues from roller 14 around stationary idler roller 21 to first suction drum 22 which has several V-shaped knife blades equally spaced from one another and projecting slightly out of the cylindrical surface of drum 22 (cutting wheel having multiple cutting dies). The leading end of sheet S held on suction drum 22 passes under block 23 which is preferably an integral part of fixed steel channel 24 and which has a narrow V-shaped cutting anvil 25 of hardened tool steel projecting slightly out of its concave bottom face (cutting out continuous web to define the plurality of substrates). The V-shaped segment cut from the leading end of sheet S when one of the V-shaped knife blades on suction drum 22 passes in rubbing contact with V-shaped cutting anvil 25 of block 23 is carried by drum 22 to second suction drum 26 (conveyor) which is positioned so that its cylindrical surface nearly contacts that of drum 22. In the known manner, suction is not applied to the portion of the cylindrical surface of suction drum. Therefore, the V-shaped segment on drum 22 is drawn to suction drum 26 (remove each defined substrate from each cutting die at a chosen instant). The cut V-shaped segment on suction drum 26 is carried past suction head 31 which removes from drum 26 the portions of the two tails of the V-shaped segment which have been cut away by a pair of cutting blocks 28. The V-shaped segment with its two flag-shaped tails is carried by suction drum 26 to a point where its cylindrical surface nearly contacts the cylindrical surface of a third suction drum 32 (rotating suction wheel). At this point in suction drum 26 suction is cut off so that the V-shaped segment thereon is drawn by and transferred to the cylindrical surface of suction drum 32 as drum 32 rotates in the direction opposite to the rotational direction of drum 26. The cylindrical surfaces of drums 26, 32 are disposed with a slight clearance between them to avoid pressing the V-shaped segment being transferred from drum 26 to drum 32 (Column 4, lines 1-59).
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/569422 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claims the same feeding and cutting out steps, however the ‘873 application includes the steps of “conveying said defined substrates by a conveyor and lifting said defined substrates from said conveyor by rotating a suction wheel having multiple suction areas arranged circumferentially” where the instant application comprises the step of “removing each defined substrate from each cutting die at a chosen instant to make the defined substrate fall at a chosen position”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Katherine A Will whose telephone number is (571)270-0516. The examiner can normally be reached Monday-Friday 10:00AM-6:00PM(EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE A WILL/Primary Examiner, Art Unit 1747
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