DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/450,325, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There is no support for a vice frame; a vice frame rotation joint that is coaxial with a drill string axis; a common jaw pivot coupled to both jaws in the first pair of gripping jaws, the common pivot coupled to the vice frame; both jaws in the first pair of gripping jaws are constrained to only rotational motion about the common jaw pivot; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; each jaw carrier includes the common pivot on a first end of the jaw carrier and an actuating device coupled to a second end of the jaw carrier; a second pair of gripping jaws; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first pair of gripping jaws and the second pair of gripping jaws; a second gripper and its related structure; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first gripper and the second gripper; the rotation actuator is a hydraulic rotation actuator; a slot in the second gripper to permit sideways loading and unloading of drill rods into the second pair of gripping jaws; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; the second pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; and each jaw in the second pair of gripping jaws is actuated by a separate actuating device.
Accordingly, claims 1-14 are not entitled to the benefit of the prior application.
The disclosure of the prior-filed application, Application No. 15/879,980, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There is no support for a vice frame; a vice frame rotation joint that is coaxial with a drill string axis; a common jaw pivot coupled to both jaws in the first pair of gripping jaws, the common pivot coupled to the vice frame; both jaws in the first pair of gripping jaws are constrained to only rotational motion about the common jaw pivot; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; each jaw carrier includes the common pivot on a first end of the jaw carrier and an actuating device coupled to a second end of the jaw carrier; a second pair of gripping jaws; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first pair of gripping jaws and the second pair of gripping jaws; a second gripper and its related structure; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first gripper and the second gripper; the rotation actuator is a hydraulic rotation actuator; a slot in the second gripper to permit sideways loading and unloading of drill rods into the second pair of gripping jaws; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; the second pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; and each jaw in the second pair of gripping jaws is actuated by a separate actuating device.
Accordingly, claims 1-14 are not entitled to the benefit of the prior application.
The disclosure of the prior-filed application, Application No. 16/838,243, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There is no support for a vice frame; a vice frame rotation joint that is coaxial with a drill string axis; a common jaw pivot coupled to both jaws in the first pair of gripping jaws, the common pivot coupled to the vice frame; both jaws in the first pair of gripping jaws are constrained to only rotational motion about the common jaw pivot; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; each jaw carrier includes the common pivot on a first end of the jaw carrier and an actuating device coupled to a second end of the jaw carrier; a second pair of gripping jaws; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first pair of gripping jaws and the second pair of gripping jaws; a second gripper and its related structure; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first gripper and the second gripper; the rotation actuator is a hydraulic rotation actuator; a slot in the second gripper to permit sideways loading and unloading of drill rods into the second pair of gripping jaws; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; the second pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; and each jaw in the second pair of gripping jaws is actuated by a separate actuating device.
Accordingly, claims 1-14 are not entitled to the benefit of the prior application.
The disclosure of the prior-filed application, Application No. 17/697,450, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. There is no support for a vice frame; a vice frame rotation joint that is coaxial with a drill string axis; a common jaw pivot coupled to both jaws in the first pair of gripping jaws, the common pivot coupled to the vice frame; both jaws in the first pair of gripping jaws are constrained to only rotational motion about the common jaw pivot; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; each jaw carrier includes the common pivot on a first end of the jaw carrier and an actuating device coupled to a second end of the jaw carrier; a second pair of gripping jaws; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first pair of gripping jaws and the second pair of gripping jaws; a second gripper and its related structure; a rotation actuator to drive relative rotation about the vice frame rotation joint between the first gripper and the second gripper; the rotation actuator is a hydraulic rotation actuator; a slot in the second gripper to permit sideways loading and unloading of drill rods into the second pair of gripping jaws; the first pair of gripping jaws includes replaceable jaws held in jaw carriers; the second pair of gripping jaws includes replaceable jaws held in jaw carriers; each jaw in the first pair of gripping jaws is actuated by a separate actuating device; and each jaw in the second pair of gripping jaws is actuated by a separate actuating device.
Accordingly, claims 1-14 are not entitled to the benefit of the prior application.
Due to being unable to claim priority to any of the recited prior applications for the reasons discussed above, the effective filing date of the current application is 19 July 2024, the actual filing date of the current application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, first/second vice frame, first/second vice frame rotation joint, first/second common jaw pivot, jaw carriers, second pair of gripping jaws, rotation actuator, second gripper, and slot must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
The drawings are objected to because the drawings are poor quality with blurry lines.
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.
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: first/second vice frame, first/second vice frame rotation joint, first/second, second gripper, first/second common jaw pivot, second pair of gripping jaws, jaw carriers, replaceable jaws, separate actuating device, rotation actuator, and slot.
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 1-14 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 1 recites the limitation "the common pivot" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation “a separate actuating device.” It is unclear if the separate actuating device is one of the “at least one actuating device” recited in claim 1 or an additional separate actuating device. For the purpose of examination, the limitation will be interpreted as being one of the “at least one actuating device.”
Claim 4 recites the limitation “an actuating device.” It is unclear if the separate actuating device is one of the “at least one actuating device” recited in claim 1 or an additional actuating device. For the purpose of examination, the limitation will be interpreted as being one of the “at least one actuating device.”
Claim 7 recites the limitation “at least one actuating device” in both lines 4 and 11. It is unclear if the claim requires one actuating device are two separate actuating device. For the purpose of examination, the limitations will be interpreted as “at least one first actuating device” and “at least one second actuating device.” Claim 8 will therefore be interpreted as “the first and second actuating devices.”
Claim 12 recites the limitation “ jaw carriers.” It is unclear if the jaw carriers are the same as those recited in claim 11 from which claim 12 depends. For the purpose of examination, the limitation will be interpreted as the same structure in both claims (i.e., claim 12 will be interpreted as “the jaw carriers”).
Claim 13 recites the limitation “a separate actuating device.” It is unclear if the separate actuating device is one of the “at least one actuating device” recited in claim 7 or an additional separate actuating device. For the purpose of examination, the limitation will be interpreted as being one of the “at least one first actuating device.”
Claim 14 recites the limitation “a separate actuating device.” It is unclear if the separate actuating device is one of the “at least one actuating device” recited in claim 7 or an additional separate actuating device. For the purpose of examination, the limitation will be interpreted as being one of the “at least one second actuating device.”
Claims 2-6 and 8-14 are rejected for depending from a rejected claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Olander (US 2018/0320457).
With respect to claim 1: Olander discloses a directional drill vice, comprising:
a first pair of gripping jaws (310, 313, 318; ¶ [0026]; Claims 1, 7) located in a vice frame (¶ [0032]; Claims 1, 7);
at least one actuating device (312, 314; ¶ [0032]; Claim 1) coupled to the first pair of gripping jaws (¶ [0017, 0032]; Claims 1, 7);
a vice frame rotation joint (306; ¶ [0037]; Claim 6) that is coaxial with a drill string axis (¶ [0020, 0037]; Claims 6, 7); and
a common jaw pivot (311; Claims 1, 7) coupled to both jaws in the first pair of gripping jaws (¶ [0032]; Claims 1, 7), the common pivot coupled to the vice frame (¶ [0032]; Claims 1, 7); wherein
both jaws in the first pair of gripping jaws are constrained to only rotational motion about the common jaw pivot (¶ [0032]; Claims 1, 7).
With respect to claim 2: Olander further discloses the first pair of gripping jaws includes replaceable jaws held in jaw carriers (316, 318; ¶ [0026, 0033]; Claim 2).
With respect to claim 3: Olander further discloses each jaw in the first pair of gripping jaws is actuated by a separate actuating device (¶ [0017, 0034]; Claim 3).
With respect to claim 4: Olander further discloses each jaw carrier includes the common pivot on a first end of the jaw carrier and an actuating device coupled to a second end of the jaw carrier (¶ [0035]; Claim 4).
With respect to claim 5: Olander further discloses a second pair of gripping jaws (¶ [0036]; Claim 5).
With respect to claim 6: Olander further discloses a rotation actuator to drive relative rotation about the vice frame rotation joint between the first pair of gripping jaws and the second pair of gripping jaws (¶ [0037]; Claims 6, 7).
With respect to claim 7: Olander discloses a directional drill vice, comprising:
a first gripper (310; Claim 7), including:
a first pair of gripping jaws (313, 318; ¶ [0026, 0038]; Claim 7) located in a first vice frame (¶ [0032, 0038]; Claim 7);
at least one actuating device (312, 314; ¶ [0032, 0038]; Claim 7) coupled to the first pair of gripping jaws (¶ [0017, 0032, 0038]; Claim 7);
a vice frame rotation joint (306; ¶ [0037]; Claim 7) that is coaxial with a drill string axis (¶ [0020, 0037]; Claim 7);
a first common jaw pivot (311; ¶ [0038]) coupled to both jaws in the first pair of gripping jaws (¶ [0032, 0038]);
a second gripper (330; Claim 7), including:
a second pair of gripping jaws (¶ [0036, 0039]; Claim 7) located in a second vice frame (¶ [0039]; Claim 7);
at least one actuating device (¶ [0039]; Claim 7) coupled to the second pair of gripping jaws (¶ [0039]; Claim 7);
a second common jaw pivot (¶ [0039]; Claim 7) coupled to both jaws in the second pair of gripping jaws (¶ [0039]; Claim 7); and
a rotation actuator (¶ [0037, 0040]; Claim 7) to drive relative rotation about the vice frame rotation joint between the first gripper and the second gripper (¶ [0037, 0040]; Claim 7).
With respect to claim 8: Olander further discloses the actuating devices are hydraulic actuating devices (¶ [0041]; Claim 8).
With respect to claim 9: Olander further discloses the rotation actuator is a hydraulic rotation actuator (¶ [0042]; Claim 9).
With respect to claim 10: Olander further discloses a slot (¶ [0023, 0025]) in the second gripper to permit sideways loading and unloading of drill rods into the second pair of gripping jaws (¶ [0023, 0025]).
With respect to claim 11: Olander further discloses the first pair of gripping jaws includes replaceable jaws held in jaw carriers (¶ [0026, 0033]).
With respect to claim 12: Olander further discloses the second pair of gripping jaws includes replaceable jaws held in jaw carriers (¶ [0026, 0033, 0051]).
With respect to claim 13: Olander further discloses each jaw in the first pair of gripping jaws is actuated by a separate actuating device (¶ [0034]).
With respect to claim 14: Olander further discloses each jaw in the second pair of gripping jaws is actuated by a separate actuating device (¶ [0034, 0051]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Randall (US 2014/0151124) in view of Pierce (US 2003/0205411).
Claims 1-3 are rejected under a first interpretation of the art.
With respect to claims 1: Randall discloses a directional drill vice, comprising:
a first gripper (62) located in a vice frame (34);
a vice frame rotation joint (joint that allows rotation of 62 relative to 64; ¶ [0025]) that is coaxial with a drill string axis (¶ [0025]). Randal does not disclose the details of the first gripper and its activation.
Pierce teaches a gripper and its activation where the gripper includes:
a pair of gripping jaws (52, 54) located in a vice frame (30);
at least one actuating device (46, 48) coupled to the pair of gripping jaws (Figs. 5-6);
a common jaw pivot (where 52 and 54 attach and rotate in Figs. 5-6) coupled to both jaws in the pair of gripping jaws (Figs. 5-6), the common pivot coupled to the vice frame (Figs. 1, 5-6).
wherein both jaws in the pair of gripping jaws are constrained to only rotational motion about the common jaw pivot (Figs. 5-6).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the gripper design of Pierce for that of Randall since doing so would perform the same predictable result of gripping a tubular for instillation and removal.
With respect to claim 2: Pierce from the combination of Randall and Pierce further teaches the first pair of gripping jaws includes replaceable jaws (52, 54; ¶ [0037-39]) held in jaw carriers (32a, 32b; ¶ [0037-39]).
With respect to claim 3: Pierce from the combination of Randall and Pierce further teaches each jaw in the first pair of gripping jaws is actuated by a separate actuating device (46, 48; ¶ [0029]).
Claims 1, 3, and 4 are interpreted under a second interpretation of the art.
With respect to claim 1: Randall discloses a directional drill vice, comprising:
a first gripper (62) located in a vice frame (34);
a vice frame rotation joint (joint that allows rotation of 62 relative to 64; ¶ [0025]) that is coaxial with a drill string axis (¶ [0025]). Randal does not disclose the details of the first gripper and its activation.
Pierce teaches a gripper and its activation where the gripper includes:
a pair of gripping jaws (32a, 32b, 52, 54) located in a vice frame (30);
at least one actuating device (46, 48) coupled to the pair of gripping jaws (Figs. 5-6);
a common jaw pivot (38) coupled to both jaws in the pair of gripping jaws (Figs. 5-6), the common pivot coupled to the vice frame (Figs. 1, 5-6).
wherein both jaws in the pair of gripping jaws are constrained to only rotational motion about the common jaw pivot (Figs. 5-6).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the gripper design of Pierce for that of Randall since doing so would perform the same predictable result of gripping a tubular for instillation and removal.
With respect to claim 3: Pierce from the combination of Randall and Pierce further teaches each jaw in the first pair of gripping jaws is actuated by a separate actuating device (46, 48; ¶ [0029]).
With respect to claim 4: Pierce from the combination of Randall and Pierce further teaches, to the extent best understood (see 112(b) rejection above), each gripper jaw includes the common pivot on a first end of the gripper jaw (Figs. 5, 6) and an actuating device (46, 48) coupled to a second end of the gripper jaw (Figs. 5, 6).
Claims 5 and 6 are rejected under either of the above art interpretations.
With respect to claim 5: Randall from the combination of Randall and Pierce further teaches a second gripper (64). Randall does not teach the second gripper is a pair of gripper jaws. Pierce teaches gripper is a pair of gripping jaws (32a, 32b, 52, 54 OR 52, 54). It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the gripper design of Pierce for that of Randall and Pierce since doing so would perform the same predictable result of gripping a tubular for instillation and removal.
With respect to claim 6: Randall from the combination of Randall and Pierce further teaches a rotation actuator (100) to drive relative rotation about the vice frame rotation joint between the first pair of gripping jaws and the second pair of gripping jaws (¶ [0025]; the actuator is called a linear actuator in the prior art but it drives relative rotation about the vice frame rotation joint and is therefore also a rotation actuator).
With respect to claim 7: Randall discloses a directional drill vice, comprising:
a first gripper (62; joint that allows rotation of 62 relative to 64;), including:
a first gripping and actuating structure (62);
a vice frame rotation joint (joint that allows rotation of 62 relative to 64; ¶ [0025]) that is coaxial with a drill string axis (¶ [0025]);
a second gripper (64), including:
a second gripping and actuating structure (64);
and
a rotation actuator (100) to drive relative rotation about the vice frame rotation joint between the first gripper and the second gripper (¶ [0025]; the actuator is called a linear actuator in the prior art but it drives relative rotation about the vice frame rotation joint and is therefore also a rotation actuator). Randall does not disclose the details of the first and second gripping and actuating structures.
Perce teaches it is known in the art for a gripping and actuating structure to have:
a pair of gripping jaws (52, 54) located in a vice frame (30);
at least one actuating device (46, 48) coupled to the pair of gripping jaws (Figs. 5-6);
a common jaw pivot (where 52 and 54 attach and rotate in Figs. 5-6) coupled to both jaws in the pair of gripping jaws (Figs. 5-6), the common pivot coupled to the vice frame (Figs. 1, 5-6).
wherein both jaws in the pair of gripping jaws are constrained to only rotational motion about the common jaw pivot (Figs. 5-6).
It would be obvious to one having ordinary skill in the art before the effective filing date to substitute the gripper and actuating structures of Pierce for that of Randall since doing so would perform the same predictable result of gripping a tubular for instillation and removal.
With respect to claim 8: Pierce from the combination of Randall and Pierce further teaches the actuating devices include hydraulic actuating devices (46, 48 are pistons which are hydraulic actuation devices; ¶ [0029]).
With respect to claim 9: Pierce from the combination of Randall and Pierce further teaches hydraulic actuators are known in the art (46, 48 are pistons which are hydraulic actuators; ¶ [0029]). The combination of Randall and Pierce are silent as to the rotation actuator being a hydraulic rotation actuator. It would be obvious to one having ordinary skill in the art at the time of filing to substitute a hydraulic actuator like those taught by Pierce for the generic rotation actuator of Randall and Pierce since doing so would perform the same predictable result of allowing a tubing string to be connected to another tubing string.
With respect to claim 10: Randall from the combination of Randall and Pierce further teaches a slot (opening in structure containing 64 that 80 can be seen through) in the second gripper to permit sideways loading and unloading of drill rods into the second pair of gripping jaws (a pipe is capable of being inserted and removed sideways; Fig. 5).
With respect to claim 11: Pierce from the combination of Randall and Pierce further teaches the first pair of gripping jaws includes replaceable jaws (52, 54; ¶ [0037-39]) held in jaw carriers (32a, 32b; ¶ [0037-39]).
With respect to claim 12: Pierce from the combination of Randall and Pierce further teaches the second pair of gripping jaws includes replaceable jaws (52, 54; ¶ [0037-39]) held in jaw carriers (32a, 32b; ¶ [0037-39]).
With respect to claim 13: Pierce from the combination of Randall and Pierce further teaches each jaw in the first pair of gripping jaws is actuated by a separate actuating device (46, 48; ¶ [0029]).
With respect to claim 14: Pierce from the combination of Randall and Pierce further teaches each jaw in the second pair of gripping jaws is actuated by a separate actuating device (46, 48; ¶ [0029]).
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 6-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-9 of U.S. Patent No. 10,760,358. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent.
Claims 1 and 7-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-10 of U.S. Patent No. 10,975,636. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims at issue are fully encompassed by the claims of the issued patent.
Conclusion
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/KRISTYN A HALL/Primary Examiner, Art Unit 3672
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