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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,082,465 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
The following is to compare claims 1-14 of instant application with claims 1-12 of Patent No.: 12,082,465 B2.
Instant Application
Patent No.: 12,082,465 B2 (hereinafter ‘465)
Claims 1-2 and 14
Claim 1
Claim 3
Claim 2
Claim 4
Claim 3
Claim 5
Claim 4
Claim 6
Claim 5
Claim 7
Claim 6
Claim 8
Claim 7
Claim 9
Claim 8
Claim 10
Claim 9
Claim 11
Claim 10
Claim 12
Claim 11
Claim 13
Claim 12
As shown in the comparison chart above, although independent claim 1 of instant application and claim 1 of ‘465 are not identical, they are not patentably distinct from each other. Claim 1 of '465 recites all the limitations of claim 1 of instant application, and more limitations. It appears that they are not the same invention because narrower vs. broader claimed limitations; thus they are not patentably distinct.
Conclusion
The following prior art made of record, not relied upon for rejection, but is considered pertinent to applicant's disclosure:
US PG-Pub No.: 2018/0040682 A1;
US PG-Pub No.: 2017/0193876 A1;
US PG-Pub No.: 2018/0024392 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIA L. CROSS whose telephone number is (571)270-3273. The examiner can normally be reached 9 am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, N. Drew Richards can be reached at 571-272-1736. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIA L CROSS/Primary Examiner, Art Unit 2892
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