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
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.
Claims 1-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of prior U.S. Patent No. 10879838. This is a statutory double patenting rejection.
Claims 1-20 of instant application are substantially the same as claims 1-20 of U.S. Patent No. 10879838, see list below.
Instant claim 1 == '838 claim 1
Instant claim 2 == '838 claim 2
Instant claim 3 == '838 claim 3
Instant claim 4 == '838 claim 4
Instant claim 5 == '838 claim 5
Instant claim 6 == '838 claim 6
Instant claim 7 == '838 claim 7
Instant claim 8 == '838 claim 8
Instant claim 9 == '838 claim 9
Instant claim 10 == '838 claim 10
Instant claim 11 == '838 claim 11
Instant claim 12 == '838 claim 12
Instant claim 13 == '838 claim 13
Instant claim 14 == '838 claim 14
Instant claim 15 == '838 claim 15
Instant claim 16 == '838 claim 16
Instant claim 17 == '838 claim 17
Instant claim 18 == '838 claim 18
Instant claim 19 == '838 claim 19
Instant claim 20 == '838 claim 20
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9923514. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of instant application are anticipated by claims of U.S. Patent No. 9923514, see list below.
Instant claim 1 <= '514 claims 1, 6, 7
Instant claim 2 <= '514 claims 1, 2, 6, 7
Instant claim 3 <= '514 claims 1, 3, 6, 7
Instant claim 4 <= '514 claims 1, 3, 6, 7
Instant claim 5 <= '514 claims 1, 3, 4, 6, 7
Instant claim 6 <= '514 claims 1, 3, 5, 6, 7
Instant claim 7 <= '514 claims 1, 3, 5, 6, 7
Instant claim 8 <= '514 claims 1, 6, 7, 8
Instant claim 9 <= '514 claims 1, 6, 7, 8, 9
Instant claim 10 <= '514 claims 1, 6, 7, 10
Instant claim 11 <= '514 claims 1, 6, 7, 10, 11
Instant claim 12 <= '514 claims 1, 6, 7, 10, 11, 12
Instant claim 13 <= '514 claims 1, 6, 7, 10, 11, 12, 13
Instant claim 14 <= '514 claims 1, 6, 7, 14
Instant claim 15 <= '514 claims 1, 6, 7, 14, 15
Instant claim 16 <= '514 claims 1, 6, 7, 14, 15, 16
Instant claim 17 <= '514 claims 1, 6, 7, 14, 15, 16, 17
Instant claim 18 <= '514 claims 1, 6, 7, 14, 15, 16, 17, 18
Instant claim 19 <= '514 claims 1, 6, 7, 19
Instant claim 20 <= '514 claims 1, 6, 7, 20
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10110163. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of instant application are anticipated by claims of U.S. Patent No. 10110163, see list below.
Instant claim 1 <= '163 claims 1, 6, 7
Instant claim 2 <= '163 claims 1, 2, 6, 7
Instant claim 3 <= '163 claims 1, 3, 6, 7
Instant claim 4 <= '163 claims 1, 3, 6, 7
Instant claim 5 <= '163 claims 1, 3, 4, 6, 7
Instant claim 6 <= '163 claims 1, 3, 5, 6, 7
Instant claim 7 <= '163 claims 1, 3, 5, 6, 7
Instant claim 8 <= '163 claims 1, 6, 7, 8
Instant claim 9 <= '163 claims 1, 6, 7, 8, 9
Instant claim 10 <= '163 claims 1, 6, 7, 10
Instant claim 11 <= '163 claims 1, 6, 7, 10, 11
Instant claim 12 <= '163 claims 1, 6, 7, 10, 11, 12
Instant claim 13 <= '163 claims 1, 6, 7, 10, 11, 12, 13
Instant claim 14 <= '163 claims 1, 6, 7, 14
Instant claim 15 <= '163 claims 1, 6, 7, 14, 15
Instant claim 16 <= '163 claims 1, 6, 7, 14, 15, 16
Instant claim 17 <= '163 claims 1, 6, 7, 14, 15, 16, 17
Instant claim 18 <= '163 claims 1, 6, 7, 14, 15, 16, 17, 18
Instant claim 19 <= '163 claims 1, 6, 7, 19
Instant claim 20 <= '163 claims 1, 6, 7, 20
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12072512. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of instant application are anticipated by claims of U.S. Patent No. 12072512, see list below.
Instant claim 1 <= '512 claims 1, 8
Instant claim 2 <= '512 claims 1, 2
Instant claim 3 <= '512 claims 1, 3
Instant claim 4 <= '512 claims 1, 3, 4
Instant claim 5 <= '512 claims 1, 3, 5
Instant claim 6 <= '512 claims 1, 3, 6
Instant claim 7 <= '512 claims 1, 3, 6, 7
Instant claim 8 <= '512 claims 1, 8
Instant claim 9 <= '512 claims 1, 8, 9
Instant claim 10 <= '512 claims 1, 10
Instant claim 11 <= '512 claims 1, 10, 11
Instant claim 12 <= '512 claims 1, 10, 11, 12
Instant claim 13 <= '512 claims 1, 10, 11, 12, 13
Instant claim 14 <= '512 claims 1, 14
Instant claim 15 <= '512 claims 1, 14, 15
Instant claim 16 <= '512 claims 1, 14, 15, 16
Instant claim 17 <= '512 claims 1, 14, 15, 16, 17
Instant claim 18 <= '512 claims 1, 14, 15, 16, 17, 18
Instant claim 19 <= '512 claims 1, 19
Instant claim 20 <= '512 claims 1, 20
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PING Y HSIEH whose telephone number is (571)270-3011. The examiner can normally be reached Monday-Friday, 9am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Mehmood can be reached at (571) 272-2976. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PING Y HSIEH/Primary Examiner, Art Unit 2664
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