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 claims 1-13 in the reply filed on 8/26/2026 is acknowledged. The traversal is on the ground(s) that the claims share a common technical feature, and therefore recite the same or corresponding technical special technical feature. This argument has been fully considered but is not persuasive. While the claims 1 and 14 do recite a common feature (the power unit, the support unit and the key), a common feature only qualifies as a “special technical feature” under PCT Rule 13.2 if it makes a contribution over the prior art. As indicated in the restriction requirement, Ericson’s apparatus meets the common feature, and is therefore not a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim objections
Claim 1, line 11, “the clockwise direction and counterclockwise direction” lacks antecedent basis.
Claim 3, line 5, “the inner surface” lacks antecedent basis.
Claim 5, line 5, “the outside” and in line 7 “the bar hollow” lacks antecedent basis.
Claim 8, line 3, “the magnitude” lacks antecedent basis.
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 1-3 and 6-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/844,555 in view of Miller (US. Pat. 6,951,990). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to substantially the same draw-in and out apparatus and recite largely the same support-unit architecture, with only minor differences such as the addition of motor-driven key. However, Miller teaches a similar apparatus for racking circuit breakers, the apparatus comprises a motor 105, to provide a motorized draw-in and out apparatus. In view of Miller’s teaching, the claims are not patentably distinct from each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ericson (US. Pat. 4,020,301) A in view of Miller (US. Pat. 6,951,990).
Regarding claim 1, Ericson teaches a draw in and out apparatus, the apparatus comprising:a first support unit 60 detachably coupled to an external distribution board (the mounting pan 60 affixed to the compartment sidewalls “board”, removable via rails/pins, see col. 6, lines 50-65); a second support unit 64 movably coupled to the first support unit (the intermediate rail 64 movably coupled to the mounting pan 60, see Figs. 3-5, 13, 14 and col. 5, lines 25-35); a third support unit 70 movably coupled to the second support unit (the inner rail 70 movably coupled to the intermediate rail 64, see Figs. 13-14 and col. 5, lines 40-55); and a power unit (carriage 24 with the circuit breaker) detachably coupled to the third support unit, and configured to be coupled to or detachable from an external circuit breaker (the carriage 24 with the circuit breaker detachably mounted on the inner rail and racked into the breaking position, see Figs. 9-10 and col. 11, lines 30-40), wherein the power unit comprises: a key 27 withdrawably accommodated in an insertion space provided in the circuit breaker (the primary disconnect contacts/stabs 27 act as a key-like insertion into the breaker spaces, see Figs. 24-26 and col. 4, lines 20-45). Ericson does not teach a motor member coupled to the key and configured to rotate the inserted key in any one direction of the clockwise direction and counterclockwise direction. However, Miller teaches a similar apparatus for racking circuit breakers, the apparatus comprises a motor 105, drive shaft 145/215 that acts as a key, the motor rotates the drive shaft clockwise or counterclockwise “on-off the control 110 and the remote actuator 130”, see Figs. 1-4 and col. 2, lines 45-67). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the Miller motor in the apparatus of Ericson to provide a motorized draw-in and out apparatus that’s easily and remotely operatable.
Allowable Subject Matter
Claims 2-13 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.
Regarding claim 2, the prior art fails to teach or show, alone or in combination, the claimed apparatus wherein the third support unit comprises: a bar member that is movably coupled to the second support unit and formed to extend along one direction; and an adjustment member movably coupled to the bar member and to which the power unit is fixedly coupled, and wherein the power unit is coupled to the bar member to be movable along the one direction together with the adjustment member.
Regarding claim 6, the prior art fails to teach or show, alone or in combination, the claimed apparatus wherein the first support unit comprises: a column member surrounding a portion of the circuit breaker accommodated in the distribution board; a plate member coupled to the column member and surrounding another portion of the circuit breaker; and a magnet member that is coupled to the plate member and forms a magnetic force so as to be detachably coupled to the distribution board.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M SAEED whose telephone number is (571)270-7976. The examiner can normally be reached 10-8pm.
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/AHMED M SAEED/Primary Examiner, Art Unit 2831
Prosecution Insights