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 .
DETAILED ACTION
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,096,386. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences of claim 1 of instant applicant and claim 1 of the US Patent No. 12,096,386 would have been obvious to one having ordinary skill the that art at the time of invention made without departing from the scope of the issued claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,722,977. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences of claim 1 of instant applicant and claim 1 of the US Patent No. 11,722,977 would have been obvious to one having ordinary skill the that art at the time of invention made without departing from the scope of the issued claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,317,367. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences of claim 1 of instant applicant and claim 1 of the US Patent No. 11,317,367 would have been obvious to one having ordinary skill the that art at the time of invention made without departing from the scope of the issued claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,701,652. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences of claim 1 of instant applicant and claim 1 of the US Patent No. 10,701,652 would have been obvious to one having ordinary skill the that art at the time of invention made without departing from the scope of the issued claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,341,975. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences of claim 1 of instant applicant and claim 1 of the US Patent No. 10,341,975 would have been obvious to one having ordinary skill the that art at the time of invention made without departing the scope of the issued claim.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,980,245. Although the claims at issue are not identical, they are not patentably distinct from each other because the differences of claim 1 of instant applicant and claim 1 of the US Patent No. 9,980,245 would have been obvious to one having ordinary skill the that art at the time of invention made without departing from the scope of the issued claim.
Conclusion
Any response to this action should be mailed to:
The following address mail to be delivered by the United States Postal Service (USPS) only:
Mail Stop _____________
Commissioner for Patents
P. O. Box 1450
Alexandria, VA 22313-1450
or faxed to:
(571) 273-8300, (for formal communications intended for entry)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bob A. Phunkulh whose telephone number is (571) 272-3083. The examiner can normally be reached on Monday-Thursday from 8:00 A.M. to 5:00 P.M. (first week of the bi-week) and Monday-Friday (for second week of the bi-week).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor CHARLES C. JIANG can be reach on (571) 270-7191.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/BOB A PHUNKULH/Primary Examiner, Art Unit 2412
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