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 14-16, 21-26 are presented for examination.
Information Disclosure Statement
The IDS filed on 9/4/2024 are considered.
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 14-16 and 21-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 13-20 of U.S. Patent No. 11,638,326. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipated every limitation of the pending claims.
Pending Claims
Patented Claims
Correspondence
14
13-14
Claim 14 limitations anticipated by patented claims 13-14
15
15
Identical Claim
16
16
Identical Claim
21
1-2
Claim 21 limitations anticipated by patented claims 1-2
22
3
Identical Claim
23
4
Identical Claim
24
17-18
Claim 24 limitations anticipated by patented claims 17-18
25
19
Identical Claim
26
20
Identical Claim
Claims 14-16 and 21-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 13-20 of U.S. Patent No. 12,108,492. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipated every limitation of the pending claims.
Pending Claims
Patented Claims
Correspondence
14
13-14
Claim 14 limitations anticipated by patented claims 13-14
15
15
Identical Claim
16
16
Identical Claim
21
1-2
Claim 21 limitations anticipated by patented claims 1-2
22
3
Identical Claim
23
4
Identical Claim
24
17-18
Claim 24 limitations anticipated by patented claims 17-18
25
19
Identical Claim
26
20
Identical Claim
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang, US 2012/0290728
Peng, US 2019/0342262
A shortened statutory period for reply to this Office action is set to expire Three MONTHS from the mailing date of this action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNY S LIN whose telephone number is (571) 272-3968.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Noel Beharry can be reached on 571-270-5630. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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).
KENNY S. LIN
Examiner
Art Unit 2416
/Kenny S Lin/
Primary Examiner, Art Unit 2416
August 18, 2026
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