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 .
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 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of copending Application No. 18/730,337. Regarding claim 1, although the claims at issue are not identical, they are not patentably distinct from each other because they both claim an ultrasonic atomization apparatus comprising: a material solution container that has an internal space for containing a material solution and includes a mist output pipe at a top surface thereof an ultrasonic transducer that is provided below the material solution container; a non-contact mist supply pipe that is provided above the material solution container including the mist output pipe without being in contact with the material solution container; and a weight measuring instrument that supports the material solution container from below and measures the weight of a measurement target including the material solution container, the ultrasonic transducer, and the material solution, wherein the material solution is misted by ultrasonic vibration operation of the ultrasonic transducer to generate material solution mist in the internal space, the non-contact mist supply pipe includes an overlapping pipe portion and a non- overlapping pipe portion other than the overlapping pipe portion, the overlapping pipe portion having a pipe overlapping region in which the overlapping pipe portion and an upper region of the mist output pipe overlap along a mist output direction, a pipe overlapping space being formed between the overlapping pipe portion and the upper region, and the material solution mist flows in the mist output pipe and the non-contact mist supply pipe along the mist output direction and is output from the non-contact mist supply pipe. Claim 1 of the instant invention is broader in scope than claim 1 of copending Application No. 18/730,337 and is therefore, encompassed in claim 1 of copending Application No. 18/730,337.
As to claim 9, see claim 5 of copending Application No. 18/730,337.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 2-8 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Childers ‘511, Matsuura ‘482, Hashigami et al ‘199 and Mitsui et al ‘443 disclose various ultrasonic atomizers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN J GANEY whose telephone number is (571)272-4899. The examiner can normally be reached M-F 9am-5:30pm.
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STEVEN J. GANEY
Primary Examiner
Art Unit 3752
/STEVEN J GANEY/Primary Examiner, Art Unit 3752