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
Claims 1-20 are presented for examination.
This is a Non-Final 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 4-11 and 14-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-15 of Patent No. US 11,698,727. Although the conflicting claims are not identical, they are not patentably distinct from each other because
Instant Application
US Patent: US 11,698,727
1 and 11
1, 9, 15
4 and 14
2 and 10
5 and 15
3 and 11
6 and 16
4
7 and 17
5 and 12
9 and 19
7 and 13
10 and 20
8 and 14
This is an obviousness-type double patenting rejection because the conflicting claims have in fact been patented.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-20 of prior U.S. Patent No. 12,067,242. This is a statutory double patenting rejection.
Instant Application
US Patent: US 12,067,242
2 and 12
1 and 11
5 and 15
4 and 14
6 and 16
5 and 15
7 and 17
6 and 16
8 and 18
7 and 17
10 and 20
9 and 19
11 and 21
10 and 20
Allowable Subject Matter
Claims 2-21 are allowed over the prior art of record and will be allowed onces a eTD is submitted in view of ODP and the statutory DP obviated.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMRESH SINGH whose telephone number is (571)270-3560. The examiner can normally be reached on Monday-Friday 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mariela D. Reyes can be reached on (571) 272-9767. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Amresh Singh/
Primary Examiner, Art Unit 2159