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.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1 and 3-12 of U.S. Patent No. 12,061,169. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims disclose similar subject matter. See comparison on claims below.
Claim 1 of Pending Application ‘913
Claim 1 of U.S. Patent 12061169
An apparatus comprising: a sensor cartridge having a shaft; (note: In Application and U.S. Patent ‘169 the apparatus is the sensor cartridge, thus the sensor cartridge has a shaft as claimed in U.S. Patent ‘169; further disclosed in Clm 2 below)
An apparatus comprising: a sensor cartridge
an expansion element co-axial with the shaft, having a helical portion, a first location and a distal end,
an expansion element co-axial with the shaft, having a helical portion, a first location and a distal end,
wherein the expansion element is operably fixed to a distal end of the shaft at the distal end of the expansion element;
wherein the expansion element is
and a sensor having a sensing array portion,
and a sensor having a sensing array portion,
the sensing array portion attached to the helical portion of the expansion element.
the sensing array portion attached to the helical portion of the expansion element.
Clm 2
Clm 1 (note: strikethrough limitations above)
Clm 3
Clm 4
Clm 4
Clm 5
Clm 5
Clm 6
Clm 6
Clm 7
Clm 7
Clm 8
Clm 8
Clm 9
Clm 9
Clm 10
Clm 10
Clm 11
Clm 11
Clm 12
Clm 12
Clm 3
Allowable Subject Matter
Claims 21-28 are allowed.
The following is an examiner’s statement of reasons for allowance: Regarding Claim 21, the closest prior art fails to disclose nor would it be obvious to combine “an expansion element co-axial with the shaft and having a helical portion, wherein the expansion element is operably fixed to the distal end of the shaft; and a sensor having a sensing array portion, the sensing array portion attached to the helical portion of the expansion element; and a scanner configured to removably receive the sensor cartridge, the scanner comprising a circumferential actuator configured to rotate a proximal end of the expansion element relative to the shaft to change a radius of the helical portion” in combination with all other limitations of the claim renders the claim allowable over the prior art. All subsequent claims are also allowable due to dependency.
Regarding Claim 25, the closest prior art fails to disclose nor would it be obvious to combine “an expansion element co-axial with the shaft and having a helical portion, wherein the key engages a distal end of the expansion element to transfer torque between the shaft and the expansion element; and a sensor having a sensing array portion, the sensing array portion attached to the helical portion of the expansion element” in combination with all other limitations of the claim renders the claim allowable over the prior art. All subsequent claims are also allowable due to dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nakanishi et al (US 20250027768) discloses sensors embedded in a boundary of a thread of shafts.
Mueller (US 20160368781) discloses a sensor coupled to a helical shaft.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALESA ALLGOOD whose telephone number is (571)270-5811. The examiner can normally be reached M-F 7:30 AM-3:30 PM.
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, Eman Alkafawi can be reached at (571) 272-4448. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALESA ALLGOOD/ Primary Examiner, Art Unit 2858
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