DETAILED ACTION
This non-final Office action is responsive to preliminary amendments filed May 26th, 2024. Claims 1-7 have been amended. Claims 1-7 are presented for examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/26/24 & 7/2/24 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
line 1 recites "the quality" which lacks antecedent basis and should recite "a quality"; and
Line 7 recites “the aid” which lacks antecedent basis and should recite “read with aid”.
Appropriate correction is required.
Claim 3 is objected to because of the following informalities: lines 4-5 recite "the anchor base" which lacks antecedent basis and should recite "an anchor base". Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: "checked by means of the identification codes" in claim 3.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter;
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself.
Step 1: Independent claims 1 (method), and dependent claims 2-7, respectively, fall within at least one of the four statutory categories of 35 U.S.C. 101: (i) process; (ii) machine; (iii) manufacture; or (iv) composition of matter. Claim 1 is directed to a method (i.e. process).
Step 2A Prong 1: The independent claims recite inspecting the quality of at least one quality criterion of a fastening of an anchor or mounting rail and/or a fastening of an associated component to the anchor or mounting rail, wherein the anchor or mounting rail has an optoelectronically readable identification code on a visible side which is accessible for optoelectronic reading of the identification code when the anchor or mounting rail is fastened as intended, characterized in that wherein the identification code is read with the aid of an optoelectronic reader and evaluated in terms of the at least one quality criterion, which is also detected optoelectronically (Mental Process), which are considered to be abstract ideas (See PEG 2019 and MPEP 2106.05). [Examiner notes the underlined limitations above recite the abstract idea].
The steps/functions disclosed above and in the independent claims recite the abstract idea of Mental Process because the claimed limitations are inspecting the quality of at least on criterion of a fastening of an anchor or mounting rail and/or a fastening of an associated component to the anchor or mounting rail, which is an observation, judgement, and evaluation of the human mind. The Applicant’s claimed limitations are inspecting the quality of at least on criterion of a fastening of an anchor or mounting rail and/or a fastening of an associated component to the anchor or mounting rail, which recite the abstract idea of Mental Process.
In addition, dependent claims 2-5 further narrow the abstract idea and recite further defining the inspection of the anchor rail within an anchor base, a component within an anchor base, the mounting rail having several optoelectronic codes to read from, and the inspection of the rotational position of the component. These processes are similar to the abstract idea noted in the independent claims because they further the limitations of the independent claims which recite mental processes. Accordingly, these claim elements do not serve to confer subject matter eligibility to the claims since they recite abstract ideas. Dependent claims 6-7 will be discussed in Prong 2 analysis below.
Step 2A Prong 2: In this application, the above “wherein the anchor or mounting rail has an optoelectronically readable identification code on a visible side which is accessible for optoelectronic reading of the identification code; characterized in that wherein the identification code is read with the aid of an optoelectronic reader” steps/functions of the independent claims would not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because receiving/storing data and displaying data merely add insignificant extra-solution activity and merely adds the words to apply it with the judicial exception. Also, the claimed “an optoelectronically readable identification code; an optoelectronic reader; an optoelectronic readable measuring marker; an optoelectronically readable rotational position marker” would not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See PEG 2019 and MPEP 2106.05).
In addition, dependent claims 2-5 further narrow the abstract idea and dependent claims 6-7 additionally recite “wherein a smartphone or tablet computer is used as an optoelectronic reader and a software installed on the optoelectronic reader is used for inspecting the quality” and “wherein data relating to the anchor or mounting rail and to associated components are stored in a database which is accessed for carrying out the method” which do not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because receiving/storing data and displaying data merely add insignificant extra-solution activity and the claimed “smartphone or tablet computer” & “database” which do not account for additional elements that integrate the judicial exception (e.g. abstract idea) into a practical application because the claimed structure merely adds the words to apply it with the judicial exception and mere instructions to implement an abstract idea on a computer (See PEG 2019 and MPEP 2106.05).
The claimed “an optoelectronically readable identification code; an optoelectronic reader; an optoelectronic readable measuring marker; an optoelectronically readable rotational position marker” are recited so generically (no details whatsoever are provided other than that they are general purpose computing components and regular office supplies) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. Even when viewed in combination, the additional elements in the claims do no more than use the computer components as a tool. There is no change to the computers and other technology that is recited in the claim, and thus the claims do not improve computer functionality or other technology (See PEG 2019).
Step 2B: When analyzing the additional element(s) and/or combination of elements in the claim(s) other than the abstract idea per se the claim limitations amount(s) to no more than: a general link of the use of an abstract idea to a particular technological environment and merely amounts to the application or instructions to apply the abstract idea on a computer (See MPEP 2106.05 and PEG 2019). Further, method claims 1-7 recite “an optoelectronically readable identification code; an optoelectronic reader; an optoelectronic readable measuring marker; an optoelectronically readable rotational position marker”; however, these elements merely facilitate the claimed functions at a high level of generality and they perform conventional functions and are considered to be general purpose computer components which is supported by Applicant’s specification in Paragraphs 0007 and 0028. The Applicant’s claimed additional elements are mere instructions to implement the abstract idea on a general purpose computer and generally link of the use of an abstract idea to a particular technological environment. Also, the above “wherein the anchor or mounting rail has an optoelectronically readable identification code on a visible side which is accessible for optoelectronic reading of the identification code; characterized in that wherein the identification code is read with the aid of an optoelectronic reader” steps/functions of the independent claims would not account for significantly more than the abstract idea because receiving data and displaying/presenting data (See MPEP 2106.05) have been identified as well-known, routine, and conventional steps/functions to one of ordinary skill in the art. When viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
In addition, claims 2-5 further narrow the abstract idea identified in the independent claims. The Examiner notes that the dependent claims merely further define the data being analyzed and how the data is being analyzed. Similarly, claims 6-7 additionally recite “wherein a smartphone or tablet computer is used as an optoelectronic reader and a software installed on the optoelectronic reader is used for inspecting the quality” and “wherein data relating to the anchor or mounting rail and to associated components are stored in a database which is accessed for carrying out the method” which do not account for additional elements that amount to significantly more than the abstract idea because receiving data and displaying/presenting data (See MPEP 2106.05) have been identified as well-known, routine, and conventional steps/functions to one of ordinary skill in the art and the claimed “smartphone or tablet computer” & “database” which do not account for additional elements that amount to significantly more than the abstract idea because the claimed structure merely amounts to the application or instructions to apply the abstract idea on a computer and does not move beyond a general link of the use of an abstract idea to a particular technological environment (See MPEP 2106.05). The additional limitations of the independent and dependent claim(s) when considered individually and as an ordered combination do not amount to significantly more than the abstract idea. The examiner has considered the dependent claims in a full analysis including the additional limitations individually and in combination as analyzed in the independent claim(s). Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claim(s) 1-3, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt (U.S 2014/0345110 A1)
Claim 1
Regarding Claim 1, Schmidt discloses the following:
A method for inspecting the quality of at least one quality criterion of a fastening of an anchor or mounting rail and/or a fastening of an associated component to the anchor or mounting rail [see at least Paragraph 0005 for reference to the method for fastening an undercut anchor system, wherein it is possible to precisely and reliably detect an axial end position of the expansion sleeve; Paragraph 0006 for reference to the method detecting the axial end position in a particularly precise manner, and a particularly recure and reliable setting of the anchor; Paragraph 0015 for reference to the engagement means used to fasten a component is advantageously formed by a threading worked into the anchor bolt; Figure 3 and related text regarding the undercut anchor following the fastening of a component]
wherein the anchor or mounting rail has an optoelectronically readable identification code on a visible side which is accessible for optoelectronic reading of the identification code when the anchor or mounting rail is fastened as intended [see at least Paragraph 0013 for reference to the anchor bolt of the expansion sleeve having an identification device for example a barcode or an RFID chip; Paragraph 0013 for reference to the identification device providing a means to record the setting procedure to demonstrate the reliable and secure setting of the set anchor all the way to the axial position; Paragraph 0038 for reference to the anchor bolt having a code and/or marking as a sensor element; Figures 1-6 and related text regarding item 24 ‘code’ and item 28 ‘barcode’]
wherein the identification code is read with the aid of an optoelectronic reader and evaluated in terms of the at least one quality criterion, which is also detected optoelectronically [see at least Paragraph 0014 for reference to the sensor device or setting tool having the means of a device for reading the identification device wherein the device; Paragraph 0022 for reference to an identification device – for example a barcode or an RFID chip – on an undercut anchor is read by a device and the data detected by the sensor is evaluated according to the data read; Figures 1-6 and related text regarding item 24 ‘code’ and item 28 ‘barcode’; Figure 6 and related text regarding item 26 ‘setting tool’]
Claim 2
Regarding Claim 2, Schmidt discloses the following:
wherein the anchor rail is anchored in an anchor base and has an optoelectronically readable measuring marker on its visible side, with the aid of which the optoelectronic reader detects a position of the anchor rail in the anchor base, and in that the quality criterion is a position criterion for the anchor rail in the anchor base [see at least Paragraph 0005 for reference to the method for fastening an undercut anchor system, wherein it is possible to precisely and reliably detect an axial end position of the expansion sleeve; Paragraph 0006 for reference to the method detecting the axial end position in a particularly precise manner, and a particularly recure and reliable setting of the anchor; Paragraph 0013 for reference to the anchor bolt of the expansion sleeve having an identification device for example a barcode or an RFID chip; Paragraph 0013 for reference to the identification device providing a means to record the setting procedure to demonstrate the reliable and secure setting of the set anchor all the way to the axial position; Paragraph 0038 for reference to the anchor bolt having a code and/or marking as a sensor element; Paragraph 0038 for reference to the pressure being applied to the expansion sleeve or to the conical expansion element in the direction of a bore hole base; Figures 1-6 and related text regarding item 24 ‘code’ and item 28 ‘barcode’; Figures 2-3 an related text regarding item 19 ‘bore hole base’]
Claim 3
Regarding Claim 3, Schmidt discloses the following:
wherein a component associated with the anchor or mounting rail has an optoelectronically readable identification code which is accessible for optoelectronic reading of the identification code when the anchor rail is anchored in the anchor base as intended and the component associated with the anchor or mounting rail is arranged on or fastened to the anchor or mounting rail as intended, and in that the identification codes are read with the optoelectronic reader and whether the component and the anchor rail belong together is checked by means of the identification codes [see at least Paragraph 0005 for reference to the method for fastening an undercut anchor system, wherein it is possible to precisely and reliably detect an axial end position of the expansion sleeve; Paragraph 0006 for reference to the method detecting the axial end position in a particularly precise manner, and a particularly recure and reliable setting of the anchor; Paragraph 0013 for reference to the anchor bolt of the expansion sleeve having an identification device for example a barcode or an RFID chip; Paragraph 0013 for reference to the identification device providing a means to record the setting procedure to demonstrate the reliable and secure setting of the set anchor all the way to the axial position; Paragraph 0038 for reference to the anchor bolt having a code and/or marking as a sensor element; Paragraph 0038 for reference to the pressure being applied to the expansion sleeve or to the conical expansion element in the direction of a bore hole base; Figures 1-6 and related text regarding item 24 ‘code’ and item 28 ‘barcode’; Figures 2-3 an related text regarding item 19 ‘bore hole base’]
Claim 5
Regarding Claim 5, Schmidt discloses the following:
wherein the component associated with the anchor or mounting rail has an optoelectronically readable rotational position marker, and in that a rotational position of the component arranged on or fastened to the anchor or mounting rail [see at least Paragraph 0005 for reference to the method for fastening an undercut anchor system, wherein it is possible to precisely and reliably detect an axial end position of the expansion sleeve; Paragraph 0006 for reference to the method detecting the axial end position in a particularly precise manner, and a particularly recure and reliable setting of the anchor; Paragraph 0013 for reference to the anchor bolt of the expansion sleeve having an identification device for example a barcode or an RFID chip; Paragraph 0013 for reference to the identification device providing a means to record the setting procedure to demonstrate the reliable and secure setting of the set anchor all the way to the axial position; Paragraph 0027 for reference to the axis of rotation of the rotary movement of the expansion sleeve corresponding to the longitudinal axis of the anchor bolt; Paragraph 0038 for reference to the anchor bolt having a code and/or marking as a sensor element; Paragraph 0038 for reference to the expansion sleeve being made to execute a rotary movement about an axis of rotation by means of a setting tool; Figures 1-6 and related text regarding item 24 ‘code’ and item 28 ‘barcode’]
Claim 7
Regarding Claim 7, Schmidt discloses the following:
wherein data relating to the anchor or mounting rail and to associated components are stored in a database which is accessed for carrying out the method [see at least Paragraph 0008 for reference to data detected by the sensor or by a device for reading an identification device can be processed by means of the processor and can be saved by means of the data storage device; Paragraph 0023 for reference to the data detected by the sensor, particularly the data pertaining to the prespecified axial end position for the undercut anchor identified by means of the identification device is saved in a data storage device in a sensor device or in the setting tool; Paragraph 0023 for reference to the secure setting of the undercut anchor by a user can be electronically recorded by means of the setting tool or the sensor device]
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.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (U.S 2014/0345110 A1) in view of Spearing (U.S 2022/0099120 A1).
Claim 4
While Schmidt discloses the limitations above, Schmidt does not disclose wherein the anchor or mounting rail has several optoelectronically readable identification codes and/or optoelectronically readable measurement markers.
Regarding Claim 4, Spearing discloses the following:
wherein the anchor or mounting rail has several optoelectronically readable identification codes and/or optoelectronically readable measurement markers [see at least Paragraph 0028 for reference to the housing presenting code regions comprising barcodes; Paragraph 0045 for reference to the disposition of two or more code regions; Figures 1-4 and related text regarding item 36 ‘code region’]
Before the effective filing date, it would have been obvious to one of ordinary skill in the art to modify the fastening anchor method of Schmidt to include the several optoelectronically readable identification codes of Spearing. Doing so thereby offering flexible application across multiple industries, as stated by Spearing (Paragraph 0020).
Claim 6
While Schmidt discloses the limitations above, Schmidt does not disclose wherein a smartphone or tablet computer is used as an optoelectronic reader and a software installed on the optoelectronic reader is used for inspecting the quality.
regarding Claim 6, Spearing discloses the following:
wherein a smartphone or tablet computer is used as an optoelectronic reader and a software installed on the optoelectronic reader is used for inspecting the quality [see at least Paragraph 0044 for reference to the code being reachable by optical scanner; Paragraph 0063 for reference to a user can quickly and accurately determine an installation state of the fastening assembly via attempting to read the barcode of the housing, e.g. using a hand - held scanner; Paragraph 0073 for reference to the verification of installation comprising scanning the barcode with a code scanner, for example, smart phones]
Before the effective filing date, it would have been obvious to one of ordinary skill in the art to modify the fastening anchor method of Schmidt to include the specific smartphone or tablet computer of Spearing. Doing so thereby offering flexible application across multiple industries, as stated by Spearing (Paragraph 0020).
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 1-7 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-12 of copending Application No. 18/713,638 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims similar to the claim scope of the instant claims. For example, instant claim 1 is not patentably distinct from copending claim 1 because the claims of instant claim 1 are a genus to the species of copending claim 1 of the copending application. The claims are directed to the same statutory category of invention and are obvious variations of one another. The entire scope of the copending claim 1 falls within the scope of the instant claim 1. Therefore, the instant claims are rendered as being not patentably distinct from copending claims 1-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DOCUMENT ID
INVENTOR(S)
TITLE
US 7,412,898 B1
Smith et al.
Load Sensing System Including RFID Tagged Fasteners
US 2010/0206214 A1
Marczynski et al.
ROTATION INDICATOR DEVICE
US 2014/0017036 A1
Everard, Stephen M.
VERIFICATION ARRANGEMENT FOR FASTENER SYSTEM
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTIN ELIZABETH GAVIN whose telephone number is (571)270-7019. The examiner can normally be reached M-F 7:30-4:30 PM EST.
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, Brian Epstein can be reached at 571-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRISTIN E GAVIN/Primary Examiner, Art Unit 3625