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
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, 2, 3, 5, 8, 9, 12, 13, 14, 15, 16, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 10, 13, 15, 20, 21, 22, and 24 of U.S. Patent No. 12083069. Although the claims at issue are not identical, they are not patentably distinct from each other because they effectively cover the same overlapping scope.
Claim 1 of ‘184 (current application 18828184) is a broader version of claim 1 of ‘069
‘069 does not recite a distal end, but the third portion has the same features including rest position and electrical connection.
Regarding claim 13 see claim 20 of ‘069.
With regard to claim 2 ‘184 claim 1 of ‘069 has the limitation second portion extending through an opening in the PCB.Regarding claim 14 ‘184 claim 20 of ‘069 has the same corresponding limitation akin to the previous discussion of claim 2 ‘184.With regard to claims 1 and 3 of ‘184 see claim 24 of ‘069. ‘069 has the limitations switching member is biased toward the rest position. The scope of ‘184 falls within the scope of ‘069.
Regarding claims 5 & 8 of ‘184 (current application) see claim 2 of ‘069.
Regarding claim 9 of ‘184 see claims 3, 22 of ‘069.
Regarding claim 12 of ‘184 see claim 10 of ‘069.
Regarding claim 16 of ‘184 see claim 21 of ‘069.
Regarding claim 19 of ‘184 see claim 13 of ‘069. While the claims are not identical the currently pending claim 19 describes the same method step using a more generic switch component and less specific geometry than the issued patent claim 13.
Regarding claim 20 of ‘184 see claim 15 of ‘069.
Allowable Subject Matter
Claims 4, 6, 7, 10, 11, 17, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN KAYES whose telephone number is (571)272-8931. The examiner can normally be reached 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached at 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN KAYES/Patent Examiner, Art Unit 2831
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