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 .
Claim Objections
Claim 29 is objected to because of the following informalities: it is suggested to amend the limitation “the power tool further a body” to read as: the power tool further comprising a body. Appropriate correction is required.
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 16-30 and 33-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 16-19 of U.S. Patent No. 12,083,576.
In reference to claim 16, 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 16 are to be found in claim 1 or claim 10. The difference between claim 16 of the application and claim 1 or claim 10 of the patent lies in the fact that the patent claims include many more elements and is thus much more specific. Thus the invention of claim 1 or claim 10 of the patent are in effect a species of the generic invention of claim 16. 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 16 is anticipated by claim 1 or claim 10 of the patent, it is not patentably distinct from claim 1 or claim 10.
In reference to claim 17, all the claimed subject matter of claim 17 of the application can be found in claim 1 or claim 11 of the patent.
In reference to claim 18, all the claimed subject matter of claim 18 of the application can be found in claim 2 or claim 12 of the patent.
In reference to claim 19, all the claimed subject matter of claim 19 of the application can be found in claim 2 or claim 12 of the patent.
In reference to claim 20, all the claimed subject matter of claim 20 of the application can be found in claim 1 or claim 10 of the patent.
In reference to claim 21, all the claimed subject matter of claim 21 of the application can be found in claim 3 or claim 13 of the patent.
In reference to claim 22, all the claimed subject matter of claim 22 of the application can be found in claim 4 or claim 14 of the patent.
In reference to claim 23, all the claimed subject matter of claim 23 of the application can be found in claim 5 of the patent.
In reference to claim 24, all the claimed subject matter of claim 24 of the application can be found in claim 6 of the patent.
In reference to claim 25, all the claimed subject matter of claim 25 of the application can be found in claim 7 of the patent.
In reference to claim 26, all the claimed subject matter of claim 26 of the application can be found in claim 8 of the patent.
In reference to claim 27, all the claimed subject matter of claim 27 of the application can be found in claim 9 of the patent.
In reference to claim 28, all the claimed subject matter of claim 28 of the application can be found in claim 10 of the patent.
In reference to claim 29, 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 29 are to be found in claim 16. The difference between claim 29 of the application and claim 16 of the patent lies in the fact that the patent claims include many more elements and is thus much more specific. Thus the invention of claim 16 of the patent are in effect a species of the generic invention of claim 29. 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 29 is anticipated by claim 16 of the patent, it is not patentably distinct from claim 16.
In reference to claim 30, all the claimed subject matter of claim 30 of the application can be found in claim 17 of the patent.
In reference to claim 32, all the claimed subject matter of claim 32 of the application can be found in claim 16 of the patent.
In reference to claim 33, all the claimed subject matter of claim 33 of the application can be found in claim 3 of the patent.
In reference to claim 34, 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 34 are to be found in claim 18. The difference between claim 34 of the application and claim 18 of the patent lies in the fact that the patent claims include many more elements and is thus much more specific. Thus the invention of claim 18 of the patent are in effect a species of the generic invention of claim 34. 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 34 is anticipated by claim 18 of the patent, it is not patentably distinct from claim 18.
In reference to claim 35, all the claimed subject matter of claim 35 of the application can be found in claim 19 of the patent.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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) 16 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grumm (US 2017/0312803).
In reference to claim 16, Grumm discloses a can seaming apparatus comprising of
a frame (12)
an upper chuck (48) fixed to an axle (92) that is rotatably mounted to the frame (12), the axle having an end configured to be received by a chuck of a power tool [see paragraphs 0059-0060; axle 92 is referenced as a chuck axle therefore it is configured to connect to a chuck of a power tool],
a lower chuck (44) having an axle (54) extending therefrom, the lower chuck being rotatably mounted to the frame (12 with at least one of the upper chuck (48) and the lower chuck (44) being movable toward and away from each other so as to releasably retain a can therebetween [see paragraphs 0053, 0056-0060], and
a first roller (108) rotatably movable about an axis and a second roller (208) rotatably movable about an axis, the first nad second rollers being translatable relative to the frame toward and away from the upper chuck sufficient to engage the can retained by the upper chuck and the lower chuck [see paragraphs 0064-0066].
In reference to claim 20, the first roller (108) and the second roller (208) are rotatably coupled to a roller frame which is pivotably coupled to the frame (12) [see figure 11], and having a handle (136, 238) extending outwardly from the roller frame, whereupon pivoting of the handle selectively moves each the first roller and the second roller toward and away from the upper chuck [see paragraph 0064-0066].
Allowable Subject Matter
Claim 31 is 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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/Debra M Sullivan/
Primary Examiner, Art Unit 3725