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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on April 15, 2026 is acknowledged.
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 29 of U.S. Patent No. 11,958,099 Although the claims at issue are not identical, they are not patentably distinct from each other because the differences which exist between the claims would be obvious to one having ordinary skill in the art upon review of the accompanying claims and disclosure.
Claim Rejections - 35 USC § 102
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 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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nobles (US 2017/0095849).
With regards to claim 1, Nobles discloses a pipe bender comprising:
a bender head (110) comprising an arcuate-shaped rocker (112);
a handle (120) attached to the bender head and having a free end; and
an angle indicator display device comprising:
a housing (130) that is selectively coupleable to the handle;
at least one sensor (not labeled, as described in at least paragraph 0035) coupled to the housing and configured to determine an orientation angle of the sensor in or on the pipe bender; and
a display (132) configured to display the orientation angle of the sensor.
With regards to claim 2, Nobles discloses wherein the display is coupled to the housing, as seen in at least Figure 1.
Claims 1-2, 4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wood (US Patent 5,144,823).
With regards to claim 1, Wood discloses a pipe bender comprising:
a bender head comprising an arcuate-shaped rocker, as seen in Figure 4;
a handle attached to the bender head and having a free end, as seen in Figure 4; and
an angle indicator display device comprising:
a housing (12, 13) that is selectively coupleable to the handle;
at least one sensor (not labeled, as described in at least Column 3) coupled to the housing and configured to determine an orientation angle of the sensor in or on the pipe bender; and
a display (24) configured to display the orientation angle of the sensor.
With regards to claim 2, Wood discloses wherein the display is coupled to the housing, as seen in Figure 1.
With regards to claim 4, Wood discloses wherein the housing is configured to clamp to the handle [Column 2, lines 45-60].
With regards to claim 6, Wood discloses wherein the housing comprises a main portion (12) and a coupling portion (13), wherein the coupling portion is securable to the handle and the main portion is selectively coupleable to the coupling portion, wherein the sensor is coupled to the main portion [as seen in Figure 1 and described in Column 2, lines 45-60].
With regards to claim 7, Wood discloses wherein the handle is ferromagnetic and the housing comprises a magnet configured to secure the housing to the handle [Column 2, lines 45-60].
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wood in view of Ramsey (US Patent 6,980,880).
Wood discloses the invention substantially as claimed except for wherein the magnet is disposed in a longitudinal groove defined by the housing, wherein the groove comprises a radius that is substantially similar to a radius of the handle. Ramsey is relied upon to teach as conduit bending system having an angle indicator display device (26) with a housing (30) have a longitudinal groove defined by the housing where the magnet (37) is disposed and wherein the groove comprises a radius that is substantially similar to a radius of the handle, as seen in Figure 2. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the claimed invention, that Wood’s housing would have groove, as taught by Ramsey, since Ramsey teaches its commonly known that a display device’s housing has a groove to hold the magnet.
Allowable Subject Matter
Claims 3, 5 and 9-10 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERESA M EKIERT whose telephone number is (571)272-1901. The examiner can normally be reached Monday-Friday 8AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Templeton can be reached at 571-270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TERESA M EKIERT/Primary Examiner, Art Unit 3725
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