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 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of co-pending Application No. 18/512,768 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the housing, track module, claws, driving motor and sensor module of the ‘768 claims correspond to the instant housing, bridge crane module, claw mechanisms, driving module and control unit respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3-7 and 9-14 are are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of co-pending Application No. 18/512,768 (reference application) as applied above in view of CN2013333007 (Zhou).
Regarding claims 3 and 11, the ‘768 claims do not discuss the operating speed of the claws. Zhou discloses that it is old and well-known in the multi-claw game machine art to control the claws at the same time or at different times. See Zhou, Abstract. Controlling one claw at a time would mean that one claw is moving and the other is not thereby having different operating speeds. Therefore, it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Zhou to the claw machine game of the ‘768 claims would have yielded predictable results and resulted in an improved system, namely, a claw machine game that would have additional play features to add increased interest in playing the game.
Regarding claims 4, 5, 9, 10, 12 and 13, by operating the claws in different times, a single-control mode is activated; by operating the claws at the same time, a multi-control mode is activated.
Regarding claim 6, by operating the Zhou claws at different times, the claws are inherently sequentially operated.
Regarding claims 7 and 14, the ‘768 claims do not disclose the claw mechanisms having different weights. However, Zhou discloses that multi-claw game machines are known in the art to have different type claws 14,17. See Zhou, Figure 2. One of ordinary skill in the art would recognize that the different claws would have different weights. The substitution of one known element (differently weighted claws as shown in Zhou) for another (uniform claws as shown in the ‘768 claims) would have been obvious to one of ordinary skill in the art at the time of the invention since the substitution of the different claws shown in Zhou would have yielded predictable results, namely an alternative way to capture an object.
Claim 8 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of co-pending Application No. 18/512,768 (reference application) as applied above in view of JP 3108272 (‘272).
The ‘768 claims do not show the recited first and second rail relationship. Figure 1 of ‘272 shows a multi-claw game machine embodiment wherein a first slide rail extends in a front/rear direction and a second side rail extending in a transverse direction, attached to the first slide rail and moveable in a front/rear direction. Further, a body portion (claw) is disposed on, and is movable relative thereto, the second side rail. To provide the multi-claw game machine of the ‘768 claims as modified above with the recited slide rail arrangement would have been obvious to one of ordinary skill in the art, in view of the teachings of ‘272, since all the claimed elements were known in the prior art and one skilled in the art cold have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention, i.e., one skilled in the art would have recognized that the rail arrangement used in ‘272 would allow the ‘768 claims claws to be easily maneuvered within the game space.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Raleigh Chiu whose telephone number is (571) 272-4408. The examiner can normally be reached on Monday-Tuesday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim, can be reached on (571) 272-4463.
The fax number for the organization where this application or proceeding is assigned is (571) 273-8300.
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It is noted that all practice before the Office is in writing (see 37 C.F.R. § 1.2) and the proper authority for action on any matter in this regard are the statutes (35 U.S.C.), regulations (37 C.F.R.) and
the commentary on policy (MPEP). Therefore, no telephone discussion may be controlling or considered authority of Petitioner’s/Caller’s action(s).
/RALEIGH W CHIU/ Primary Examiner, Art Unit 3711
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