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 and 10 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 11 of U.S. Patent No. 12,071,069 (Patent ‘069). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 9 and 11 of Patent ‘069 anticipate claims 1 and 10 of the current application.
Claims of current application
Claims of Patents 12,071,069
1.A device for attaching a camera to an existing light on a support surface of a towed vehicle without disconnecting wires from the existing light, the support surface having a support surface hole for receiving a fastener, the existing light having a light housing with a housing hole for receiving the fastener for securing the light housing to the support surface, the device comprising:
a flange for positioning between the support surface and the existing light, the flange comprising-
a light housing hole for receiving the light housing and the wires connected to the existing light therethrough, and
a fastener hole capable of aligning with the housing hole of the existing light and the support surface hole for receiving the fastener to secure the light and the device to the support surface; and
a bracket extending from the flange and configured to engage the camera.
10. The device of claim 1, further comprises a side portion adjacently attached to the flange and having a protrusion with an antenna support.
9. A camera device for attaching to an existing light on a support surface of a towed vehicle without disconnecting wires from the existing light, the support surface having a support surface hole for receiving a fastener, the existing light having a light housing with a housing hole for receiving the fastener for securing the light housing to the support surface, the camera device comprising:
a flange for positioning between the support surface and the existing light, the flange comprising-
a light housing hole for receiving the light housing and the wires connected to the existing light therethrough, and
a fastener hole capable of aligning with the housing hole of the existing light and the support surface hole for receiving the fastener to secure the light and the camera device to the support surface;
a bracket connected to the flange; and
a camera attached to the bracket.
10. The camera device of claim 9, further comprising a bottom portion that extends downward from the flange and connects to the bracket.
11. The camera device of claim 10, wherein the camera includes an antenna, further comprising a side portion extending horizontally from the flange, and an antenna support extending outwardly relative to the support surface to engage the antenna.
Allowable Subject Matter
Claims 2-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 11-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 11, applicant has sufficiently defined and claimed a mount for attaching a camera to an existing light on a support surface of a towed vehicle, whereby the prior art does not teach or suggest a light housing hole for receiving the light housing and the one or more wires connected to the existing light therethrough, a fastener hole capable of aligning with the housing hole of the existing light and the support surface hole for receiving the fastener to secure the light and the mount to the support surface, and a notch configured to engage one or more camera wire; and a wire hole located between the bracket and the flange and sized to receive the one or more camera wire, in combination with all other limitations set forth in the claim.
Regarding claim 17, applicant has sufficiently defined and claimed a kit for installing on an existing light on a support surface of a towed vehicle, whereby the prior art does not teach or suggest a mount for placing between the existing light and the support surface, the mount comprising: a flange for positioning between the support surface and the existing light, the flange comprising: a light housing hole for receiving the light housing and the one or more wires connected to the existing light therethrough, and a fastener hole capable of aligning with the housing hole of the existing light and the support surface hole for receiving the fastener to secure the light and the mount to the support surface, in combination with all other limitations set forth in the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MINH Q PHAN whose telephone number is (571)270-3898. The examiner can normally be reached Mon-Fri 9am-5pm.
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MINH Q. PHAN
Primary Examiner
Art Unit 2852
/MINH Q PHAN/Primary Examiner, Art Unit 2852