DETAILED ACTION
This office action is in response to the application filed on 08/28/2024. Claims 1-14 are pending and are examined.
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 .
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Claim Objections
Claims 13-14 are objected to because of the following informalities:
In Claim 13, line 11 recites, “the first flag” (i.e., lacking clear antecedent basis). For purposes of examination, the first occurrence will be reasonably interpreted as - - a first flag - - .
In Claim 14, line 12 recites, “the first flag” (i.e., lacking clear antecedent basis). For purposes of examination, the first occurrence will be reasonably interpreted as - - a first flag - - .
Examiner respectfully requests from Applicant verification and requires appropriate correction regarding these matters.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-14 of U.S. Patent No. 12,096,041 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because not only the scope of the novel features of the claims is the same, but also, for instance, the independent claims of the instant application are broader in scope than the corresponding independent claims of U.S. Patent No. 12,096,041 B2.
Examiner notes that the broader “apparatus” of Claim 1 in the instant application is anticipated by using the “method” in Claim 1 of U.S. Patent No.: 12,096,041 B2 as an obvious variant.
Examiner notes that the broader “apparatus” of Claim 13 in the instant application is anticipated by using the “method” in Claim 13 of U.S. Patent No.: 12,096,041 B2 as an obvious variant.
Examiner notes that the broader “apparatus” of Claim 14 in the instant application is anticipated by using the “method” in Claim 14 of U.S. Patent No.: 12,096,041 B2 as an obvious variant.
Examiner further notes that any minor differences to the wording of the claims are merely a matter of semantics and do not carry significant patentable weight.
Allowable Subject Matter
Although Claims 1-14 contain allowable subject matter, Claims 1-14 are currently rejected under nonstatutory double patenting, as outlined above. The rejection may be overcome by Applicant filing a Terminal Disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record (Lai, US 2022/0303587 A1) fails to anticipate or fairly suggest independent Claims 1 and 13-14 for the same reasons as previously articulated in the Notice of Allowance, mailed on 05/15/2024, in Application No.: 17/766,954.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN M WALSH whose telephone number is (571)270-0423. The examiner can normally be reached M-F 8:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Kelley can be reached at (571) 272-7331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHLEEN M WALSH/Primary Examiner, Art Unit 2482
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