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.
1. Claims 21-24, 32-34, and 41-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-11 and 21-22 of U.S. Patent No. 11,641,084.
In reference to claim 21, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 21 are to be found in claim 9 (as it encompasses claim 1) or claim 10 (as it encompasses claims 3 & 1). The different between claim 21 of the application and either claim 9 or claim 10 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of either claim 9 or claim 10 of the patent is in effect a species of the generic invention of claim 21. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 21 is anticipated by either claim 9 or claim 10 of the patent, it is not patentably distinct from either claim 9 or claim 10.
In reference to claim 22, the claimed subject matter of claim 22 can be found in claim 10 (as it encompasses claims 3 and 1) of the patent.
In reference to claim 23, all of the claimed subject matter of claim 23 can be found in claim 10 (as it encompasses claims 3 and 1) of the patent.
In reference to claim 24, all the of claimed subject matter of claim 24 can be found in claim 11 (as it encompasses claims 10, 3, and 1) of the patent.
In reference to claim 32, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 32 are to be found in claim 21 of the patent. The different between claim 32 of the application and claim 21 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 21 of the patent is in effect a species of the generic invention of claim 32. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 32 is anticipated by claim 21 of the patent, it is not patentably distinct from claim 21.
In reference to claim 33, all the claimed subject matter of claim 33 can be found in claim 21 of the patent.
In reference to claim 34, all the claimed subject matter of claim 34 can be found in claim 22 of the patent.
In reference to claim 41, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 41 are to be found in claim 21 of the patent. The different between claim 41 of the application and claim 21 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 21 of the patent is in effect a species of the generic invention of claim 41. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 41 is anticipated by claim 21 of the patent, it is not patentably distinct from claim 21.
In reference to claim 42, all the claimed subject matter of claim 42 can be found in claim 21 of the patent.
In reference to claim 43, all of the claimed subject matter of claim 43 can be found in claim 22 of the patent.
2. Claims 21-23, 25, 31-33, 35, 41-42 and 44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-3 and 12-13 of U.S. Patent No. 12,062,880.
In reference to claim 21, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 21 are to be found in claim 2 (as it encompasses claim 1) of the patent. The different between claim 21 of the application and claim 2 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 2 of the patent is in effect a species of the generic invention of claim 21. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 21 is anticipated by claim 2 of the patent, it is not patentably distinct from claim 2.
In reference to claim 22, all of the claimed subject matter of claim 22 can be found in claim 2 of the patent.
In reference to claim 23, all of the claimed subject matter of claim 23 can be found in claim 3 of the patent.
In reference to claim 25, all of the claimed subject matter of claim 25 can be found in claim 2 of the patent.
In reference to claim 31, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 31 are to be found in claim 12 (as it encompasses claim 11) of the patent. The different between claim 31 of the application and claim 12 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 12 of the patent is in effect a species of the generic invention of claim 31. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 31 is anticipated by claim 12 of the patent, it is not patentably distinct from claim 12.
In reference to claim 32, all of the claimed subject matter of claim 32 can be found in claim 12 of the patent.
In reference to claim 33, all of the claimed subject matter of claim 33 can be found in claim 13 of the patent.
In reference to claim 35, all of the claimed subject matter of claim 35 can be found un claim 12 of the patent.
In reference to claim 41, although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 41 are to be found in claim 12 (as it encompasses claim 11) of the patent. The different between claim 41 of the application and claim 12 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 12 of the patent is in effect a species of the generic invention of claim 41. It has been held that the generic invention is anticipated by the species [see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993)]. Since claim 41 is anticipated by claim 12 of the patent, it is not patentably distinct from claim 12.
In reference to claim 42, all of the claimed subject matter of claim 42 can be found in claim 13 of the patent.
In reference to claim 44, all of the claimed subject matter of claim 44 can be found in claim 12 of the patent.
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.
Claim(s) 21-24 and 26-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Couto (US 4,009,514).
In reference to claim 21, Couto discloses a working head assembly for a hydraulic crimping tool (it is noted that this is an intended function and not required structure) operating on a work object, the working head assembly comprising
a first jaw member (64) including a nest (116, 124) having an opening and an asymmetric shape surface adapted to receive the work object [see figure 7], and
a second jaw member (68) pivotably attached to the first jaw member (64) so that the first jaw member and second jaw member are angularly movable between a home position and a seated position [see col. 4 lines 7-14], the second jaw member including an indentor (128) having an impacting surface protruding toward the nest and adapted to impact the work object received in the nest [see figure 7; col. 5 lines 54-61].
In reference to claim 22, the asymmetric shape surface of the nest (116, 124) is defined by a plurality of surfaces, as seen in figure 7.
In reference to claim 23, the plurality of surfaces comprises a first surface being a concave surface relative to a center of the nest, a second surface being a convex surface relative to the center of the nest, and a third surface being a concave surface relative to the center of the nest [see figure below].
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In reference to claim 24, the third surface joins the first surface to the second surface nad has a radius of curvature that is less than a radius of curvature of the first surface [see figure above].
In reference to claim 26, a surface of the indentor configured to contact the work object is an arcuate shaped surface, as seen in figure 7.
In reference to claim 27, a surface of the indentor configured to contact the work object is a rounded shaped surface, as seen in figure 7.
In reference to claim 28, the first jaw member includes a hinge region (118) positioned adjacent the nest.
In reference to claim 29, wherein the hinge region comprises an opening in the first jaw member, as seen in figure 7.
In reference to claim 30, the hinge region comprises an annealed region in the first jaw member [it is noted that the term annealed is being treated as a product-by-process limitation].
Allowable Subject Matter
Claims 36-40 and 45-49 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Debra Sullivan whose telephone number is (571)272-1904. The examiner can normally be reached Monday-Friday 8am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Templeton can be reached on (571) 270-1477. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Debra M Sullivan/
Primary Examiner, Art Unit 3725
Prosecution Insights