DETAILED ACTION
This communication is a first Office Action Non-Final rejection on the merits. Claims 1-3 as originally filed are pending and have been considered below.
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 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,000,156. Although the claims at issue are not identical, they are not patentably distinct from each other because they include the same claim language and corresponding structural limitations.
Allowable Subject Matter
Claim 2 is 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. In particular, the limitation “said member has a thin walled region surrounded by a thicker walled region and the region is oval in shape” would overcome the prior art rejection since such a thin walled oval region surrounded by a thicker region was not found in the relevant prior art, and a modification to include a thin walled region surrounded by a thicker walled region and the region is oval in shape would involve impermissible hindsight reconstruction
Claim Objections
Claim 1 is objected to because of the following informalities:
Regarding claim 1, at line 11, the recitation “(vi)”, is understood to mean –(v)--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 and 3, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kufner et al. (U.S. Pub. No. 2010/0287868).
As per claim 1, Kufner et al. teaches a method for reducing lippage in a plurality of tiles (aligning and leveling tiles; abstract) comprising the steps of: (i) providing a substrate (22) configured to be bondable (paragraph 7) to said plurality of tiles (figure 2); (ii) providing a base (12); (iii) providing a first tile (18) disposed adjacent said base (figure 2); (iv) providing a member (14) extending from said base (figure 3); where the member has a distance from the base as a longest dimension along a member longitudinal axis (arbitrary distance from the base to the member along an arbitrary longitudinal axis of the member); a width of the member (width of 14), which runs in a line parallel to a joint longitudinal axis of a joint (joint between tiles; figure 2) containing said member, has a shorter dimension than said longest dimension (as illustrated, the width is shorter than the longest dimension; figure 3) and is a dimension that is longer than a tapering thickness dimension of the member in a line which is orthogonal to the joint longitudinal axis (as illustrated, the width of 14 is longer than a tapering thickness dimension of the member in a line which is orthogonal to the joint longitudinal axis; figure 1); (v) providing a cap (33); (vi) causing said cap to engage and surround a portion of said member (figure 2); and (vii) providing a pressure onto a surface of one of said plurality of tiles by compressing with pressure said cap (it is understood that the cap is adapted to be compressed towards the surface of the tile in order to compress the plate 12, since the locking assembly 33 and the tile are caused to be forced together; paragraph 30), and thereby causing said member to stretch along said member longitudinal axis (allows the shaft 14 to stretch longitudinally when force is applied; paragraph 30).
As per claim 3, Kufner et al. teaches said member further comprises a plurality of voids (16).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The cited patents listed on the included form PTO-892 further show the state of the art with respect to tile leveling in general.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OMAR HIJAZ whose telephone number is (571)270-5790. The examiner can normally be reached on 8-6 EST Monday-Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Mattei can be reached on (571) 270-3238. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OMAR F HIJAZ/Examiner, Art Unit 3633