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.
Claims 1-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 19/380351. Although the claims at issue are not identical, they are not patentably distinct from each other because
both applications claim a gripping apparatus with a plurality of compensators, each compensator having a cylinder, a piston, a piston rod, and a vacuum chamber surrounding the cylinder and a vacuum port in a sidewall….being isolated from the vacuum pathway when the compensator is in the retracted position, the claims of the two applications differing only by minor phraseology which obviously does not affect the scope of the invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-15 would be allowable if rewritten or amended to overcome the rejection(s), set forth in this Office action.
The claims 1-15 are patentable over the prior art of record because the teachings of the references taken as a whole do not show or render obvious the combination set forth in claims 1 and 10, including every structural element recited in the claim, especially a gripping apparatus with a plurality of compensators, each compensator having a cylinder, a piston, a piston rod, and a vacuum chamber surrounding the cylinder and a vacuum port in a sidewall….being isolated from the vacuum pathway when the compensator is in the retracted position. The prior art, Hvass ‘987 shows a similar vacuum gripping system, but lacks all the structural elements and how each element is arranged with respect to each other.
None of the references of the prior art teach or suggest the elements of the device as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG K KIM whose telephone number is 571-272-6947. The examiner can normally be reached Tuesday through Thursday from 10:30 A.M. to 9 P.M or Tuesday through Thursday from 10:30 A.M. to 7 P.M.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Hodge, can be reached on (571) 272-2097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SK
9/2/26
/SANG K KIM/ Primary Examiner, Art Unit 3654
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