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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-18 and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,097,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are anticipated by claims 1-23 of U.S. Patent No. 12,097,103.
All the limitations of claim 1 of the Application can be found in claim 1 of the Patent. The difference lies in the fact that the copending claims are a “species” of the “generic” invention of claim 1 of the Application. It has been held that the “generic” invention is “anticipated” by the “species”. Since claim 1 of the Application is anticipated by claim 1 of the Patent, it is not patentably distinct from claim 1 of the Patent.
The limitations of claims 1-2, 4, 6 and 21 of the instant application can be found in claims 1 and 4 of U.S. Patent No. 12,097,103.
The limitations of claim 3 of the instant application can be found in claim 2 of U.S. Patent No. 12,097,103.
The limitations of claim 5 of the instant application can be found in claim 3 of U.S. Patent No. 12,097,103.
The limitations of claim 7 of the instant application can be found in claim 5 of U.S. Patent No. 12,097,103.
The limitations of claim 8 of the instant application can be found in claim 6 of U.S. Patent No. 12,097,103.
The limitations of claim 9 of the instant application can be found in claim 7 of U.S. Patent No. 12,097,103.
The limitations of claim 10 of the instant application can be found in claim 8 of U.S. Patent No. 12,097,103.
The limitations of claim 11 of the instant application can be found in claim 9 of U.S. Patent No. 12,097,103.
The limitations of claim 12 of the instant application can be found in claim 10 of U.S. Patent No. 12,097,103.
The limitations of claim 13 of the instant application can be found in claim 11 of U.S. Patent No. 12,097,103.
The limitations of claim 14 of the instant application can be found in claim 12 of U.S. Patent No. 12,097,103.
The limitations of claim 15 of the instant application can be found in claim 13 of U.S. Patent No. 12,097,103.
The limitations of claim 16 of the instant application can be found in claim 14 of U.S. Patent No. 12,097,103.
The limitations of claim 17 of the instant application can be found in claim 16 of U.S. Patent No. 12,097,103.
The limitations of claim 18 of the instant application can be found in claim 17 of U.S. Patent No. 12,097,103.
The limitations of claim 19 of the instant application can be found in claim 18 of U.S. Patent No. 12,097,103.
The limitations of claim 20 of the instant application can be found in claim 19 of U.S. Patent No. 12,097,103.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELE M KIDWELL whose telephone number is (571)272-4935. The examiner can normally be reached Monday-Friday, 7AM-4PM EST.
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, Rebecca Eisenberg can be reached on 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELE KIDWELL/ Primary Examiner, Art Unit 3781
