DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the America Invents Act (AIA ).
Response and Claim Status
The instant Office action is responsive to the response received May 5, 2026 (the Response).
In response to the Response, the previous (1) objection to the drawings under 37 C.F.R. § 1.84(q); (2) objections to the Specification 37 C.F.R. §§ 1.71(a), 1.75(d)(1); (3) rejection of claims 1–20 on the ground of nonstatutory double patenting; (4) invoking of 35 U.S.C. § 112(f); and (5) rejection of claims 13–17 under 35 U.S.C. § 112(b)
are WITHDRAWN.
Claims 1–20 are currently pending.
Possible Continuation or Divisional of 18/061834
The instant application discloses and claims only subject matter disclosed in prior Application No. 18/061834, filed December 5, 2022, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional of 18/061834. Should Applicants desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. § 120; 37 C.F.R. § 1.78; and MPEP § 211 et seq.
Current Benefit Claim
Applicants’ claim for the benefit of a prior-filed application under 35 U.S.C. §§ 120, 121, 365(c), or 386(c) is acknowledged. Notably, Applicants’ claim the instant application to be a “continuation” of application 18/061607, now Lojko et al. (US 12,368,708 B1; filed Dec. 5, 2022; the ‘708 Patent). See 18/756,234; Application Data Sheet (ADS) 3; filed June 27, 2024.
Thus, the instant application must be an application for an invention which is also disclosed in the application 18/061607. In other words, the disclosure of the invention in the parent application and in the instant application must be sufficient to comply with the requirements of 35 U.S.C. § 112(a), except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994); see also MPEP § 211.05(I) (citing Transco).
Applicants, however, have not complied with one or more conditions for receiving the benefit of an earlier filing date. In particular, the disclosure of application 18/061607 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. § 112(a) for the original claims of the instant application.
Notably, the disclosure of application 18/061607 does not provide adequate support and enablement for claims 1–20 in their entirety of the instant application filed June 27, 2024. See MICROSOFT WORD Comparison Document Between Specifications of 18-756234 and 18-061607, pp. 1–42 (2026).1
Accordingly, Applicants are required to delete the continuation-benefit-claim or change the relationship (continuation or divisional application) to continuation-in-part because the instant application contains the above matter not disclosed in the application 18/061607. See §§ MPEP 201.06(c); 201.07; 211.05.
Drawings
37 C.F.R. § 1.84(t) recites “These [numbering of sheets of drawings], if present, must be placed in the middle of the top of the sheet, but not in the margin. . . . The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion.” See MPEP § 608.02.
The drawings are objected to under 37 C.F.R. § 1.84(t) for failing to include the numbering of sheets of drawings—if present—(1) in the middle of the top of the sheet, but not in the margin and (2) larger than the numbers used as reference characters to avoid confusion.
Corrected drawing sheets in compliance with 37 C.F.R. § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Applicants are advised to employ the services of a competent patent draftsperson outside the Office, as the USPTO does not prepare new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 C.F.R. § 1.121(d). If the changes are not accepted by the Examiner, Applicants will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections – 35 U.S.C. § 112
The following is a quotation of 35 U.S.C. § 112(a):
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The MPEP recites
To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35 U.S.C. 119, 120, 365, or 386, each claim limitation must be expressly, implicitly, or inherently supported in the originally filed disclosure.
MPEP § 2163(II)(A)(3)(b).
Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement.
Applicants’ claim the instant application to be a “continuation” of application 18/061607, now Lojko et al. (US 12,368,708 B1; filed Dec. 5, 2022; the ‘708 Patent). See 18/756,234; Application Data Sheet (ADS) 3; filed June 27, 2024.
But the disclosure of application 18/061607 and the disclosure of the instant application are essentially different. See MICROSOFT WORD Comparison Document Between Specifications of 18-756234 and 18-061607, pp. 1–42 (2026). Thus, the disclosure of application 18/061607 fails to provide adequate support or enablement of claims 1–20 in the manner provided by 35 U.S.C. § 112(a) for the instant application. Therefore, claims 1–20 were not described in the originally filed disclosure in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID P. ZARKA whose telephone number is (703) 756-5746. The Examiner can normally be reached Monday–Friday from 9:30AM–6PM ET.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Vivek Srivastava, can be reached at (571) 272-7304. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicants are encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
/DAVID P ZARKA/PATENT EXAMINER, Art Unit 2449
1 The Examiner notes the text of 18-726234 is from Nodzak et al. (US 2024/0348599 A1; filed June 27, 2024) and the text of 18-061607 is from Lojko et al. (US 12,368,708 B2; filed Dec. 5, 2022).
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