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 92 – 121 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 16 of U.S. Patent No. 10,512,868. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 – 16 of the ‘868 patent teach or suggest all of the features in claims 92 – 121 of the present application. In regard to independent claim 92, claim 1 of the ‘868 patent discloses an air filter cartridge having a media pack having an outer perimeter and opposite flow faces, a housing engagement member including a seal arrangement with a pinch seal portion, and a member of an air cleaner security, housing closure, inhibition arrangement positioned in the housing engagement member, where the member of an air cleaner security, housing closure, inhibition arrangement comprising a pocket. Claim 5 of ‘868 patent further discloses a receiving trough between at least a portion of the pinch seal portion and the media pack, with the pocket defining a deeper recess than portions of the receiving trough. In this case, the pocket inherently has an opening extending into the receiving trough. Claims 1 – 16 of the ‘868 patent further teach or suggest all of the features of dependent claims 93 – 121 of the present application.
Claims 92 – 121 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 38 of U.S. Patent No. 11,198,083. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 – 38 of the ‘083 patent teach or suggest all of the features in claims 92 – 121 of the present application. In regard to independent claim 92, claim 1 of the ‘083 patent discloses an air filter cartridge having a media pack having an outer perimeter and opposite flow faces; and, a housing engagement member including a seal arrangement having: a pinch seal portion; and a receiving trough between at least a portion of the pinch seal portion and the media pack; and, a member of an air cleaner security, housing closure, inhibition arrangement positioned in the housing engagement member; the member of an air cleaner security, housing closure, inhibition arrangement comprising a pocket, and the pocket being deeper than portions of the receiving trough. Claim 28 of the ‘083 further discloses the receiving pocket to be in the receiving trough. In this case, the pocket inherently has an opening extending into the receiving trough. Claims 1 – 38 of the ‘083 patent further teach or suggest all of the features of dependent claims 93 – 121 of the present application.
Claims 92 – 121 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 22 of U.S. Patent No. 11,660,558. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 – 22 of the '558 teach or suggest all of the features in claims 92 – 121 of the present application. In regard to independent claim 92, claim 1 of the ‘558 patent discloses an air filter cartridge having a media pack having an outer perimeter and opposite flow faces; and, a housing engagement member including a seal arrangement having: a pinch seal portion; and a receiving trough between at least a portion of the pinch seal portion and the media pack; and, a member of an air cleaner security, housing closure, inhibition arrangement positioned in the housing engagement member; the member of an air cleaner security, housing closure, inhibition arrangement comprising a pocket. Claim 19 of the ‘558 patent further discloses the receiving pocket to be in the receiving trough. In this case, the pocket inherently has an opening extending into the receiving trough. Claims 1 – 22 of the ‘558 patent further teach or suggest all of the features of dependent claims 93 – 121 of the present application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Clemente whose telephone number is (571)272-1476. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Lebron can be reached at 571-272-0475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT CLEMENTE/Primary Examiner, Art Unit 1773
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