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 .
Claim Objections
Claim 1 is objected to because of the following informalities: “the leak detection gas therefrom” (l. 4) lacks antecedent basis in the claim and should be amended to read - - a leak detection gas therefrom - -. Additionally, a comma or semicolon should follow “gas dispenser” (l. 11) to denote the end of the limitation.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 does not further limit independent claim 1 from which it depends because claim 1 recites “the motion detector further comprises a first accelerometer and a second accelerometer” (l. 12). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-8 and 10-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,025,534 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the instant application are broader and thus, fully met, by the claims of the Patent.
Regarding claim 1, the Patent recites an apparatus for detecting a leak in a unit under test, comprising (claim 1, c. 12, ll. 10-11): a leak detection gas dispenser (helium dispenser) connectable to a leak detection gas source having a motion detector connected thereto, the leak detection gas dispenser configured to selectively dispense the leak detection gas (helium) therefrom (c. 12, ll. 12-15); a vacuum source releasably connectable to the unit under test through a fitting (c. 12, ll. 16-17); a leak detection gas detector (helium detector) fluidly coupled to the vacuum source (c. 12, ll. 18-19); and a controller operatively coupled to the leak detection gas detector and the motion detector and configured to receive electrical signals indicative of a speed of motion of the leak detection gas dispenser as the leak detection gas is dispensed from the leak detection gas dispenser (c. 12, ll. 20-24) the motion detector further comprises a first accelerometer and a second accelerometer (c. 12, ll. 25-26); the leak detection gas dispenser including a nozzle having an opening therein for the dispensing of the leak detection gas therefrom (c. 12, ll. 27-29); and the first accelerometer and the second accelerometer are disposed within the nozzle (c. 12, ll. 30-31). Claims 2-8 are similarly met by claims 2-8 of the Patent.
Regarding claim 10, the Patent recites a method for sensing a leak in a unit under test, comprising (claim 9, c. 12, ll. 57-58): scanning a SKU on a unit under test giving SKU information (c. 12, ll. 59-60); sending the SKU information to a computer (c. 12, l. 61); connecting the unit under test to a testing apparatus (c. 12, l. 62); removing gas from an interior volume of the unit under test (c. 12, ll. 63-64); monitoring a vacuum pressure within the interior volume of the unit under test until the vacuum pressure reaches a test pressure (c. 12, ll. 65-67); initiating delivery of a leak detection gas (helium) to an exterior of the unit under test through a leak detection gas gun (helium gun) by pulling a trigger on the leak detection gas gun to dispense the leak detection gas therefrom (c. 13, ll. 1-3); providing the leak detection gas gun comprising a motion detector, the motion detector comprising a first accelerometer and a second accelerometer (c. 13, ll. 4-6); the leak detection gas gun including a nozzle having an opening therein for the dispensing of the leak detection gas therefrom (c. 13, ll. 7-8); and the first accelerometer and the second accelerometer are disposed within the nozzle (c. 13, ll. 10-11); positioning the leak detection gas gun so that the leak detection gas is released over a weld of the unit under test (c. 13, ll. 12-13); detecting a movement speed of the leak detection gas gun during dispensing of the leak detection gas therefrom (c. 13, ll. 14-15); and displaying a leak detection gas content (helium content) internal to the unit under test on a graphical user interface (c. 13, ll. 16-17). Claims 11-17 are similarly met by claims 10-16 of the Patent.
Claims 9 and 18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims of prior U.S. Patent No. 12,025,534 B2. This is a statutory double patenting rejection.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 9 is coextensive in scope with claim 1 of the Patent because it limits the “leak detection gas” to helium. Similarly, claim 18 is coextensive in scope with claim 9 of the Patent.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Erika J. Villaluna whose telephone number is (571)272-8348. The examiner can normally be reached Mon-Fri 9:00 am - 5:30 pm.
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/ERIKA J. VILLALUNA/Primary Examiner, Art Unit 2852
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