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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: provide antecedent basis for the claimed terminology “magnet channel”, “screen channel.”
Drawings
The drawings are objected to because the terms “magnet channel” and “screen channel” in the claims lack corresponding reference characters in the specification and drawings. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to for a typographical error. Claim 1 recites in line 17 “the screen channel associated with the screen receive” which should read --the screen channel associated with the screen receiver--.
Claim 4 is objected to for a typographical error. Claim 4 recites “of have a polarity” which should read --have a polarity--.
Claims 27 and 41 are objected to for a typographical error. The claims both recite “relative to the two of opposing side walls” which should read --relative to the two opposing side walls--.
Claim 42 is objected to for a typographical error. Claim 42 recites “a pair of opposing side walls an open side and a compartment” which lacks commas and read --a pair of opposing side walls, an open side, and a compartment--.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12, 14, 27, 41, 51, 54, and 62 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12 recites “the funnel” and “the first channel” there is a lack of antecedent basis for these terms and it is unclear what is being referred to in the claim.
Claims 14, 27, 41, 51, and 62 recite “wherein the screen receiver is inserted into the compartment of the elongate channel by rotating the screen receiver relative to opposing sidewalls of the elongate channel and advancing the screen receiver toward the elongate channel.” It is unclear what is required of the claims since they appear to recite a process and steps of forming the system rather than what is structurally required. Should the screen receiver be “configured to be inserted?”
Claim 54 recites “wherein when the screen receiver is positioned with the compartment of the elongate channel; wherein the elongate channel…” The limitation is unclear and appears incomplete. It is not clear what is required “when the screen receiver is positioned.”
In view of the 112 issues discussed above the claims have been examined as best understood.
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.
At least claims 1-3, 5-25, 28-39, 41-49, 51-60, and 62-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-44 of U.S. Patent No. 12,338,683. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of pending claims 1-3, 17, 28, 31, 42, and 54 are recited in patented claim 2, 5, 6, 15, 27, and 36, the claims recite the same subject matter in different terms. The pending “stop features” corresponds to the “opposing partitions are configure to engage the screen receiver so as to limit the distance” of claim 2 and to the “set of features” in claims 15, 27, and 37. Claims 5-16, 18-25, 29-39, 41, 43-49, 51-53, 55-60, and 62-64 correspond to at least claims 18, 25, 28, 29, 34, 35-38, 41, and 43.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnnie A. Shablack whose telephone number is (571)270-5344. The examiner can normally be reached Mon-Thu 6am-3pm EST, alternate Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Cahn can be reached at 571-270-5616. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Johnnie A. Shablack/Primary Examiner, Art Unit 3634
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