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 1-21 and 26-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-17 and 20-29 are of U.S. Patent No. 12025489 to Li et al (hereinafter “Li”).
Although the claims at issue are not identical, they are not patentably distinct from each other because in claims 1-21 and 26-28 of the instant application, applicant claims, an apparatus comprising:
a sensor fiber including:
an optical waveguide comprising a core and a cladding structure; the optical waveguide comprising at least one acoustically responsive material;
an optical sensor structure coupled to a first end of the optical waveguide having an acoustically responsive portion and at least one reflecting surface, the optical sensor structure being configured for:
detecting an acoustic signal, and
providing an optical signal corresponding to the acoustic signal to the optical waveguide.
Li discloses an apparatus comprising:
a sensor fiber including:
an optical waveguide comprising a core and a cladding structure;
an optical sensor structure coupled to a first end of the optical waveguide including at least one of an optical resonator, an optical interferometer, a facet end microstructure, and a polarization sensitive structure, the optical sensor structure being configured for:
detecting an acoustic signal, and
providing an optical signal corresponding to the acoustic signal to the optical waveguide.
Although the scope of claims 1-21 and 26-28 of the instant application and claims 1-6, 9-17 and 20-29 of the Li patent are very similar, the difference between the present claimed invention and the Li patent is that the instant application recites the same invention with a more generality in scope. It would have been obvious at the time of the effective filing date to use the teachings of Li as a general teaching to arrive at the instant application because the same elements are used to arrive at the same invention.
Limitations of claim 2 in the instant application correspond to limitations found in claim 2 and 6 of the Li patent.
Limitations of claim 3 in the instant application correspond to limitations found in claim 2- 6 of the Li patent.
Limitations of claim 4 in the instant application correspond to limitations found in claim 2 and 11-13 of the Li patent.
Limitations of claim 5 in the instant application correspond to limitations found in claim 2 and 11-13 of the Li patent.
Limitations of claim 6 in the instant application correspond to limitations found in claim 1 and 9 of the Li patent.
Limitations of claim 7 in the instant application correspond to limitations found in claim 1 and 9 of the Li patent.
Limitations of claim 8 in the instant application correspond to limitations found in claim1 and 9 of the Li patent.
Limitations of claim 9 in the instant application correspond to limitations found in claim 1 and 10 of the Li patent.
Limitations of claim 10 in the instant application correspond to limitations found in claim 1 and 11 of the Li patent.
Limitations of claim 11 in the instant application correspond to limitations found in claim 12 of the Li patent.
Limitations of claim 12 in the instant application correspond to limitations found in claim 13 of the Li patent.
Limitations of claim 13 in the instant application correspond to limitations found in claim 1, 14-16 of the Li patent.
Limitations of claim 14 in the instant application correspond to limitations found in claim 1-8 and 21-28 of the Li patent.
Limitations of claim 15 in the instant application correspond to limitations found in claim 16-17 and 20 of the Li patent.
Limitations of claim 16 in the instant application correspond to limitations found in claim 21 of the Li patent.
Limitations of claim 17 in the instant application correspond to limitations found in claim 22 of the Li patent.
Limitations of claim 18 in the instant application correspond to limitations found in claim 23 of the Li patent.
Limitations of claim 19 in the instant application correspond to limitations found in claim 24 of the Li patent.
Limitations of claim 20 in the instant application correspond to limitations found in claim 1, 14-16 and 28 of the Li patent.
Limitations of claim 21 in the instant application correspond to limitations found in claim 29 of the Li patent.
Limitations of claim 26 in the instant application correspond to limitations found in claim 1, 7 and 14-16 of the Li patent.
Limitations of claim 27 in the instant application correspond to limitations found in claim 28 of the Li patent.
Limitations of claim 28 in the instant application correspond to limitations found in claim 28 of the Li patent.
Allowable Subject Matter
Claims 1-28 would be allowable if rewritten or amended to overcome the double patenting rejection or with the timely filing of a terminal disclaimer, set forth in this Office action.
Conclusion
The prior art as cited on the PTO-892 is made of record and not relied upon but considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIGEL H PLUMB whose telephone number is (571)272-8886. The examiner can normally be reached Monday-Friday 7am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Breene can be reached at 571-272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIGEL H PLUMB/Examiner, Art Unit 2855
/Eric S. McCall/Primary Examiner, Art Unit 2855
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