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 .
Continuation
The current application is a continuation of U.S. Application No. 18/242,238 which is issued as U.S. Patent No. 12,055,218.
Response to Amendment
Amendment to claims of 12/19/2025 is acknowledged.
Claims rejections under 35 U.S.C. § 112 in the Office action of 10/01/2025 are withdrawn.
Applicant argues, on page 6, that a terminal disclaimer will be considered upon allowance of the claims. Submission of a terminal disclaimer overcome the rejection and place the case in condition for allowance.
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 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-9, 11-19 of U.S. Patent No. 12,055,218. Although the claims at issue are not identical, they are not patentably distinct from each other because
(a) the subject matter of the current application is directed to a gasket comprising a gasket body with an axial end surface (could include both top and bottom axial end surfaces), a through hole for fluid path with an inner surface, axial end surface includes stress concentration features, a lip on the axial end surface, the lip includes a sealing surface, and the stress concentration features comprising a plurality of cavities defined in the axial end surface (independent claim 2).
The subject matter of current application also directed to plastic deformation of lip (claim 3), plurality of cavities comprises asymmetrical cylindrical shape with curved bottom (claim 4), plurality of cavities is configured to form an undercut of the sealing surface (claims 5, 7), the plurality of cavities include cavity openings that face a same direction (claim 6), the gasket is a unitary metallic material of stainless steel alloy (claim 8), the lip comprises a protective ridge adjacent the sealing surface (claim 9), the protective ridge is disposed radially outward of the sealing surface (claim 10), the sealing surface comprises a circumferential sector exhibiting a generally constant angle with respect to the axial end surface (claim 11), and the axial end surface function as a hard stop (claim 12).
(b) The subject matter of the issued patent is directed to a gasket comprising a gasket body with an axial end surface (first axial end and second axial end surfaces), a through hole for fluid path with an inner surface, the first axial end surface includes first stress concentration features, a first lip on the first axial end surface, the first lip includes a first sealing surface, the first stress concentration features comprising a first plurality of cavities defined in the first axial end surface, the second axial end surface includes second stress concentration features, a second lip on the second axial end surface, the second lip includes a second sealing surface, and the second stress concentration features comprising a second plurality of cavities defined in the second axial end surface (independent claim 1).
The subject matter of issued patent also directed to plastic deformation of lip (claim 2), plurality of cavities comprises asymmetrical cylindrical shape with curved bottom (claim 6), plurality of cavities is configured to form an undercut of the sealing surface (claims 11-13), the gasket is a unitary metallic material of stainless steel alloy (claim 7), the plurality of cavities comprise the first cavity opening in a first direction and the second plurality of cavities comprise the second cavity openings in a second direction (claim 9), the lip comprises a protective ridge adjacent the sealing surface (claim 14), the protective ridge is disposed radially outward of the sealing surface (claim 15, 17), the sealing surface comprises a circumferential sector exhibiting a generally constant angle with respect to the axial end surface (claim 18), and the axial end surface function as a hard stop (claim 19).
The subject matter of the current application and issued patent are not patentably distinct.
Generally, in a continuation application the claims are directed to different aspects of the invention detailed in the original specification and the drawings.
Conclusion
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides examples of similar inventions. There are no suggestions in the prior art of record for combining any of the references to arrive at as claimed.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN CUMAR whose telephone number is (571)270-3112. The examiner can normally be reached Monday thru Friday, 8:00 am to 5:00 pm EST.
Examiner interviews are available via telephone, 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, KRISTINA FULTON can be reached on 571-272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN CUMAR/Primary Examiner, Art Unit 3675