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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-5 and 7-18 of U.S. Patent No. 12,075,674 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
The following is to compare claims 1-20 of instant application with claims 2-5 and 7-18 of Patent No.: 12,075,674 B2.
Instant Application
Patent No.: 12,075,674 B2 (hereinafter ‘674)
Claims 1 and 3
Claim 10
Claim 2
Claim 2
Claim 4
Claim 4
Claim 5
Claim 5
Claim 6
Claim 7
Claim 7
Claim 8
Claim 8
Claim 9
Claim 9
Claim 11
Claims 10-11
Claim 13
Claim 12
Claim 14
Claim 13
Claim 15
Claim 14
Claim 16
Claims 15 and 19
Claim 3
Claim 16
Claim 17
Claim 17
Claim 12
Claim 18
Claim 15
Claim 20
Claim 18
As shown in the comparison chart above, although independent claim 1 of instant application and claim 10 of ‘674 are not identical, they are not patentably distinct from each other. Claim 10 of '674 recites all the limitations of claim 1 of instant application and more limitations. It appears that they are not the same invention because narrower vs. broader claimed limitations; thus they are not patentably distinct.
Conclusion
The following prior art made of record, not relied upon for rejection, but is considered pertinent to applicant's disclosure:
US PG-Pub No.: 2018/0158895 A1;
US PG-Pub No.: 2019/0229177 A1.
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/XIA L CROSS/Primary Examiner, Art Unit 2892
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