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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Arguments
Applicant's arguments filed 26 June 2026 have been fully considered but they are not persuasive.
Applicant argues the non-statutory double patenting is not proper as the current application claims are drawn to “a synthetic resin seat plate for surface mounting” whereas the claims of U.S. Patent No. 12,512,261 are drawn to “a surface-mount capacitor”. The examiner finds applicants arguments to be unpersuasive. 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). All claims stand rejected under non-statutory double patenting.
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.
Claim(s) 1-3 & 6-7 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1-5 of U.S. Patent No. 12,512,261. Although the claims at issue are not identical, they are not patentably distinct from each other because
In regards to claim 1, U.S. Patent No. 12,512,261 claims
A synthetic resin seat plate for surface mounting, the seat plate being mounted on a sealing part side of a capacitor main body from which a pair of lead terminals are led out in a same direction from a sealing part of a bottomed cylindrical outer case having a capacitor element built therein, and forming the capacitor main body as a surface-mountable chip type capacitor, wherein
the seat plate has a pair of lead terminal insertion holes through each of which the lead terminals are inserted, lead terminal housing grooves extending from each of the lead terminal insertion holes to opposite side edges of the seat plate in opposite directions away from each other are formed on a bottom surface, and auxiliary terminals that are integrated with the lead terminals at the time of soldering are embedded along each of the lead terminal housing grooves,
each of the lead terminals is inserted into one of the lead terminal insertion holes, a distal portion of each of the lead terminals is housed within one of the lead terminal housing grooves by being bent, and the auxiliary terminals are each soldered to a prescribed position of a circuit board together with one of the lead terminals, and
a gas release groove for releasing flux gas generated at the time of the soldering is formed on each of the auxiliary terminals (claim 1).
In regards to claim 2, U.S. Patent No. 12,512,261 claims
The seat plate for surface mounting according to claim 1, wherein the auxiliary terminals each comprise a main plate part as a soldering part to the circuit board, the main plate part being attached to the bottom surface of the seat plate by leaving a surface portion at the time of resin molding of the seat plate, and a branch plate part connected to the main plate part and attached to a side edge of the seat plate (claim 2).
In regards to claim 3, U.S. Patent No. 12,512,261 claims
The seat plate for surface mounting according to claim 2, wherein the gas release grooves are each formed from a central portion of the main plate part to a side edge of the seat plate (claim 3).
In regards to claim 6, U.S. Patent No. 12,512,261 claims
The seat plate for surface mounting according to claim 2, wherein an area occupied by each of the gas release grooves in the main plate part is 10% to 65% of an area of the main plate part before the gas release groove has been formed (claim 4).
In regards to claim 7, U.S. Patent No. 12,512,261 claims
The seat plate for surface mounting according to claim 1, wherein a retaining part having a height exceeding a lateral throttle groove for sealing formed on the outer case is formed on a component mounting surface side of the seat plate (claim 5).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M SINCLAIR whose telephone number is (571)270-5068. The examiner can normally be reached M-TH from 8AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TIMOTHY J DOLE can be reached at (571)272-2229. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/David M Sinclair/Primary Examiner, Art Unit 2847
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