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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 9,488,000 (Kirby ‘000) in view of U.S. Patent No. 2013/0233496 (Ogden). Kirby ‘000 claims the same subject matter in different terms as the instant invention but uses the term a roller shade instead of a window treatment and it is understood that a roller shade is equivalent to a window treatment. Although, Kirby ‘000 claims a housing, Kirby ‘000 fails to claim that the housing has a front wall, first wall, rear wall, and second wall. However, Ogden teaches a housing with a front, first, rear and second wall and it would have been obvious to one having ordinary skill in the art to provide the housing of Kirby ‘766 with the claimed sides. Modification to provide the housing with front, rear, first, and second walls would not have led to any new or unpredictable results.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-17 of U.S. Patent No. 10,968,696 (Kirby ‘696) in view of U.S. Patent No. 2013/0233496 (Ogden). Kirby ‘696 claims the same subject matter in different terms as the instant invention but uses the term a roller shade instead of a window treatment and it is understood that a roller shade is equivalent to a window treatment. Although, Kirby ‘696 claims a housing, Kirby ‘696 fails to claim that the housing has a front wall, first wall, rear wall, and second wall. However, Ogden teaches a housing with a front, first, rear and second wall and it would have been obvious to one having ordinary skill in the art to provide the housing of Kirby ‘766 with the claimed sides. Modification to provide the housing with front, rear, first, and second walls would not have led to any new or unpredictable results.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,578,531 (Kirby ‘531) in view of U.S. Patent No. 2013/0233496 (Ogden). Kirby ‘531 claims the same subject matter in different terms as the instant invention but uses the term a roller shade instead of a window treatment and it is understood that a roller shade is equivalent to a window treatment. Although, Kirby ‘531 claims a housing, Kirby ‘531 fails to claim that the housing has a front wall, first wall, rear wall, and second wall. However, Ogden teaches a housing with a front, first, rear and second wall and it would have been obvious to one having ordinary skill in the art to provide the housing of Kirby ‘766 with the claimed sides. Modification to provide the housing with front, rear, first, and second walls would not have led to any new or unpredictable results.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,006,766 (Kirby ‘766) in view of U.S. Patent No. 2013/0233496 (Ogden). Kirby ‘766 claims the same subject matter in different terms as the instant invention but uses the term a roller shade instead of a window treatment and it is understood that a roller shade is equivalent to a window treatment. Although, Kirby ‘766 claims a housing, Kirby ‘766 fails to claim that the housing has a front wall, first wall, rear wall, and second wall. However, Ogden teaches a housing with a front, first, rear and second wall and it would have been obvious to one having ordinary skill in the art to provide the housing of Kirby ‘766 with the claimed sides. Modification to provide the housing with front, rear, first, and second walls would not have led to any new or unpredictable results.
Allowable Subject Matter
Claims 1-20 would be allowable if the double patenting issues are overcome.
The allowable subject matter claimed in present application is similar to that of the parent application 14/253664 (now U.S. Patent No. 9,488,000). Although the closest prior art, Baugh (US 2011/0253320) or Blair (US 2013/0153162) disclose a motorized window treatment having a housing, window treatment assembly, and battery compartment, the modification to provide the battery compartment that is pivotally supported by the housing along a pivot axis with a first wall of the battery compartment configured to pivot downward and away from the front wall of the housing and the pivot axis being offset relative to a center line defined by the batteries such that the pivot axis is not coincident with the center line is not obvious absent hindsight and/or the Applicant’s teachings. Baugh’s front wall pivots upwardly while the first and second walls remain stationary. Blair teaches first and second walls pivoting downwardly but the front wall also pivots therefore the first wall is not capable of pivoting away from the front wall. Modification of the prior art would not have been obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnnie A. Shablack whose telephone number is (571)270-5344. The examiner can normally be reached Mon-Thu 6am-3pm EST, alternate Friday.
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/Johnnie A. Shablack/Primary Examiner, Art Unit 3634
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