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 .
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-3) in the reply filed on 03/31/2026 is acknowledged. Claims 4-12 are withdrawn. The traversal is on the ground(s) that the overall features of alleged Invention I of claims 1-3 are the same as that of alleged Invention II of claims 4-6 and invention III (method) of claims 7-12. This is not found persuasive because at least in Group II (claims 4-10), there are still some limitations (for example, in claim 4, line 7, ‘a bead holder’) that needs to be searched separately.
Further the examination on the merits of apparatus claims differs from that of method claims. Therefor the extra search and/or examination burden for addressing multiple inventions poses a serious burden to the examiner which makes the restriction requirement proper.
The requirement is still deemed proper and is therefore made FINAL.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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 Terminal Disclaimer may be filled out completely online using web-screens. A Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about Terminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of US patent 12,122,112 (US 2025/0001715).
Claim 1 in the instant application has most claimed elements disclosed in claim 14 (i.e., claim 14 depends on claim 12 which depends on claim 1) in US patent 12,122,112.
However, claim 14 in US patent 12,122,112 does not disclose the first set (stitching member) and the second set (stitching member) are rotatable together.
Further in US 12,122,112, claim 13 discloses that, the first set (stitching member) and the second set (stitching member) are rotatable together (col. 13, lines 25-26).
It would have been obvious to use the apparatus of US patent 12,122,112 to have the bead-apex stitching device as US patent 12,122,112 further teaches that it is known to have the first set (stitching member) and the second set (stitching member) are rotatable together in claim 13. It has been held that the combination of known technique to improve similar device is likely to be obvious when it does not more than yield predictable results to one of ordinary skill in the art. KSR Int’l Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007) (See MPEP 2143- exemplary rationales).
Claims 2-3 in the instant application are identical with claim 15 in US patent 12,122,112.
Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions using the same bead-apex stitching device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIBIN LIANG whose telephone number is (571)272-8811. The examiner can normally be reached on M-F 8:30 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison L Hindenlang can be reached on 571 270 7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIBIN LIANG/Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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