DETAILED ACTION
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-14 of U.S. Patent No. 12,622,511 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 11 (which comprises limitations of claim 1, “a forearm support according to claim 1”) of ‘511 recites claimed limitations of claims 1-2 of the instant application.
Claim 12 of ‘511 recites claimed limitations of claim 3 of the instant application.
Claim 13 of ‘511 recites claimed limitations of claim 4 of the instant application.
Claim 14 of ‘511 recites claimed limitations of claim 5 of the instant application.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Peng (CN 114451664 B).
Regarding claim 1, Peng (‘664) discloses a workbench (fig1), comprising:
a work table 3 (fig1), arranged to receive workpieces (abstract),
a frame (fig2), supporting the work table 3 (fig2), defining at least one work face or one work station on the work table 3 for an operator (figs1-2),
characterized in that the workbench comprises at least one mounting rail 158 (figs10-11, “sliding rail”) arranged below the work table 3 (figs10-11) and facing the work face or the work station (figs10-11), and arranged to receive at least one work module 15 (fig2, “an arm supporting mechanism”) to be coupled to the workbench in a position that is adjustable along said at least one mounting rail 158 (figs2, 10-11, abstract).
However, Peng does not explicitly disclose that the workbench is a watchmaker’s bench and the work table is to receive timepieces. However, “timepieces” are recited as an intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the workbench of Peng discloses each and every positively recited structural limitations, therefore, the workbench of Peng is capable of being used as a watchmaker’s bench. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the workbench of Peng as a watchmaker’s bench to provide more versatility of the workbench.
Regarding claim 3, Peng teaches the watchmaker’s bench according to claim 1, comprising the at least one work module 15 to be coupled to said at least one mounting rail 158, forming: a table nosepiece (fig1), forming an overhang of the work table 3 toward the operator (fig1).
Regarding claim 4¸ Peng teaches the watchmaker’s bench according to claim 1, wherein said at least one working module 15 to be coupled to said at least one mounting rail 158 comprises a coupling portion 151,152,154,155 (fig11) on said at least one mounting rail 158 comprising a runner or a carriage (fig11), arranged to be engaged on said at least one mounting 158 rail in a rotation movement (via elements 154,155, “a first rotating plate 154”, “a second rotating plate 155”) around an axial direction (along a length of the at least one mounting rail 158, fig11) of said at least one mounting rail 158.
Regarding claim 5¸ Peng teaches the watchmaker’s bench according to claim 1, wherein said at least one mounting rail 158 is recessed with respect to a peripheral edge of the work table 3 (figs10-11).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 Seahee Hong whose telephone number is (571)270-5778. The examiner can normally be reached M-Th 8am-4pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAHEE HONG/Primary Examiner, Art Unit 3723
