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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “204” has been used to designate both mounting holes and webbing band. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Forklift loops (column 7 line 60). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: In line 20 of column 1, “whe5124el” should be corrected to –wheel--. As noted above in the drawing objections, the reference numeral for the webbing band (first mentioned on line 60 of column 5) or the mounting holes (first mentioned in line 59 of column 5) is 204. The reference numeral for one of these components needs to be changed throughout the specification.
Appropriate correction is required.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
As noted above amendments are required for both the drawings and the specification. In a reissue all amendments must be made in accordance with 37 C.F.R. 1.173. Specifically for the specification, the entire paragraph containing the change must be submitted with deletions relative to the published specification (not any prior amendment) in single brackets and additions underlined. For the drawings, the amended figures must be labeled as “Amended”, all figures on a drawing sheet must appear, and the sheet of drawings should be labeled as a “Replacement Sheet”. See MPEP 1453. Claim 20, and all claims higher than 19 if added in an amendment, should be completely underlined.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,260,992 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414.
The error statement of March 1, 2024 is not specific enough. While it does state that the patentee claimed less than he had a right to claim in claim 1 and 11, a broadening reissue (for claiming less than applicant had a right to) requires specific claim language that the patent owner deems not required for patentability. MPEP 1414(II) states in part, “For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the patent, the reissue oath or declaration must also identify a claim that the application seeks to broaden in the identification of the error that is relied upon to support the reissue application. A general statement, e.g., that all claims are broadened, is not sufficient to satisfy this requirement. In specifically identifying the error as required by 37 CFR 1.175(a), it is sufficient that the reissue oath/declaration identify the claim being broadened and a single word, phrase, or expression in the specification or in an original claim, and how it renders the original patent wholly or partly inoperative or invalid.”
Claims 1-20 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Application Data Sheet
The Application Data Sheet is objected to. The Application Data needs to be corrected. This application is a CIP of a design patent. The parent application to the design application claimed benefit of provisional application 61/953,772. A design application may not claim priority based on a provisional application. MPEP 1504.20 states, “ Where the conditions of 35 U.S.C. 120 are met, a design application may be considered a continuing application of an earlier utility application. Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989). Conversely, this also applies to a utility application relying on the benefit of the filing date of an earlier filed design application. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991). In addition, a design application may claim benefit from an earlier filed PCT application under 35 U.S.C. 120 if the U.S. was designated in the PCT application. It should be noted that where a design patent application claims benefit under 35 U.S.C. 120 to an intermediate nonprovisional utility patent application that directly claims the benefit of a provisional application, the design patent application cannot claim the benefit of the filing date of the provisional application. This is because a design application may not claim the benefit of a provisional application. See 35 U.S.C. 172.” The provisional application should be removed from the priority chain. Due to the design patent in the priority chain, priority to the provisional application is improper.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,103,708. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same invention with only minor, obvious semantic differences.
Both patents claim a dolly for positioning under landing gear of an aircraft, the dolly comprising a steel frame including a pair of beams that are substantially parallel to each other and an aircraft wheel receiving platform extending between the beams. Each of the beams has a vertical wall portion and a horizontal wall portion. The aircraft wheel receiving platform comprises two horizontal support plates vertically separated from each other, each attached to the pair of beams that have a plurality of brackets extending intermediate the two horizontal support plates below the respective horizontal wall. Both patents claim a plurality of castors attached to each of the beams and a winch platform supporting a winch. Claim 1 of the ‘708 patent requires the frame to be adapted for selective attachment to a detachable towbar, which is claim 2 of the current claims.
Although the ‘708 patent was filed before the ‘701 application and the ‘992 patent claims priority based on ‘911 application that matured into the ‘708 patent, it would be improper to allow the current claims without a terminal disclaimer which will ensure that the patents cannot be licensed to different parties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Pugh et al (US 2012/0271495) and Zschoche (US 5,302,075) each shows a device for moving an airplane with a platform for supporting a wheel of the landing gear but the platform is not between beams with a plurality of castors attached to each beam. Perry et al (US 2010/0140392) shows an airplane tug with a platform for the front gear of a plane, but the platform does not extend between beams with castors. The device has side beams which house wheels, but the platform does not extend from the wall of the beams. Hamman (US 2009/0104009) shows a dolly for moving an airplane with a platform for receiving the front wheel with the platform between parallel beams each with a wheel, but the platform does not extend from a wall portion of the beams, there are not a plurality of castors on each beam and the platform is not formed from two horizontal plates with brackets between extending intermediate the two horizontal support plates. WO 2008/113911 shows a composite plate with intermediate brackets and discloses such a structure improves strength. Hulbert (US 2,610,750) shows a wheel truck for a vehicle wheel but does not teach a winch, the platform formed from two horizontal plates with brackets between extending intermediate the two horizontal support plates, or the beam specifics.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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, Patricia Engle can be reached at (571) 272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993