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 .
Claims 1-18 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,9867,47. Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claim(s) is merely broader than the patent claim(s). Once an applicant has received a patent for a specific embodiment, he is not entitled to a patent for a generic or broader invention; the more specific anticipates the broader. In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993).
Claims 1-18 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,583,782. Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claim(s) is merely broader than the patent claim(s). Once an applicant has received a patent for a specific embodiment, he is not entitled to a patent for a generic or broader invention; the more specific anticipates the broader. In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993).
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.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6, & 8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lai 6,224,451.
Lai shows an airfoil system, which includes a first sub-element airfoil 11, removably attached to a structure 10, with an upper surface, lower surface, first end face, and second end face; a second sub-element 12 which may be a modular wing, with a second end face; the first end face of the first sub-element is attached to the second end face of the second sub-element by a connecting sub-element, which is an opening in a lower surface to receive a connecting stud element 13 to attach to an internal structure 123, 115 of the first and second sub-elements (figure 3).
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) 5, 7, & 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lai.
The airfoil of Lai appears to be a cambered airfoil. A symmetric airfoil may be found to provide better flight for a toy airplane. A symmetric airfoil would be an obvious variation for the airfoil of Lai.
Claim(s) 10-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lai in view of Zaic 2,876,585.
It is not clear if the airfoil system of Lai includes a wing flap. A wing flap would be desired to better adjust the flight. For example, Zaic shows that a toy airplane may include a wing with a rotatable flap. This rotatable flap would be an obvious addition to the airfoil of Lai.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A RICCI whose telephone number is (571)272-4429. The examiner can normally be reached Mon to Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nicholas Weiss can be reached at 571-270-1775. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A RICCI/ Primary Examiner, Art Unit 3711