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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/13/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Status of Claims
Claims 1-20 are pending in this application.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 1.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 2.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 3.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 4.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 5.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 6.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 in the patent encompasses all the claimed language of current claim 7.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 in the patent encompasses all the claimed language of current claim 8.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 in the patent encompasses all the claimed language of current claim 9.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 in the patent encompasses all the claimed language of current claim 10.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 in the patent encompasses all the claimed language of current claim 11.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 in the patent encompasses all the claimed language of current claim 12.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 in the patent encompasses all the claimed language of current claim 13.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 in the patent encompasses all the claimed language of current claim 14.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 in the patent encompasses all the claimed language of current claim 15.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 in the patent encompasses all the claimed language of current claim 16.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 in the patent encompasses all the claimed language of current claim 17.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 in the patent encompasses all the claimed language of current claim 18.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 in the patent encompasses all the claimed language of current claim 19.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,165,661. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 in the patent encompasses all the claimed language of current claim 20.
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.
Claims 2-6 and 14-18 are 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. All of the limitations of claims 2-6 are present in independent claim 1 and all of the limitations of claims 14-18 are present in independent claim 13. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims complies with the statutory requirements.
Examiner Notes
The Examiner cites particular columns and line numbers in the references as applied to the claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully considers the references in its entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or as disclosed by the Examiner.
Communications via Internet e-mail are at the discretion of the applicant and require written authorization. Should the Applicant wish to communicate via e-mail, including the following paragraph in their response will allow the Examiner to do so:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Should e-mail communication be desired, the Examiner can be reached at Edwin.Leland@USPTO.gov
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN S LELAND III whose telephone number is (571)270-5678. The examiner can normally be reached 8:00 - 5:00 M-F.
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, Hai Phan can be reached at 571-272-6338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWIN S LELAND III/Primary Examiner, Art Unit 2654