DETAILED ACTION
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 20-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,662,098 B2 (hereinafter the “reference patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of the reference patent discloses all of the limitations of claim 20 of the subject application.
Claim 2 of the reference patent discloses all of the limitations of claim 21 of the subject application.
Claim 3 of the reference patent discloses all of the limitations of claim 22 of the subject application.
Claim 4 of the reference patent discloses all of the limitations of claim 23 of the subject application.
Claim 5 of the reference patent discloses all of the limitations of claim 24 of the subject application.
Claim 6 of the reference patent discloses all of the limitations of claim 25 of the subject application.
Claim 7 of the reference patent discloses all of the limitations of claim 26 of the subject application.
Claim 8 of the reference patent discloses all of the limitations of claim 27 of the subject application.
Claim 9 of the reference patent discloses all of the limitations of claim 28 of the subject application.
Claim 10 of the reference patent discloses all of the limitations of claim 29 of the subject application.
Claim 11 of the reference patent discloses all of the limitations of claim 30 of the subject application.
Claims 31-36 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16-21 and 23 of U.S. Patent No. 12,111,060 B2 (hereinafter the “reference patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 16 of the reference patent discloses all of the limitations of claim 31 of the subject application.
Claim 17 of the reference patent discloses all of the limitations of claim 32 of the subject application.
Claim 18 of the reference patent discloses all of the limitations of claim 33 of the subject application.
Claim 19 of the reference patent discloses all of the limitations of claim 34 of the subject application.
Claim 20 of the reference patent discloses all of the limitations of claim 35 of the subject application.
Claim 21 of the reference patent discloses all of the limitations of claim 36 of the subject application.
Claim 23 of the reference patent discloses all of the limitations of claim 38 of the subject application.
Claim 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 22 of U.S. Patent No. 12,111,060 in view of Ho et. al (US 4,968,245).
With respect to claim 37 the reference patent (claim 22) discloses that the control circuit comprises a power supply circuit (see claim 22 lines 1-2).
Claim 22 of the reference patent does not disclose that the power supply circuit is connected to a transformer and a battery.
Ho discloses a burner including a control circuit [see Fig. 6] where an AC power supply [reference character 9] is connected to a battery [reference character 92] through a transformer [reference character 90] and a bridge rectifier [reference character 90] in order to provide the burner with power during an AC power failure [column 4 lines 53-56].
It would have been obvious to one of ordinary skill in the art at the time of the filing date of the invention to modify the system taught by claim 22 of the reference patent by providing a backup power circuit including a battery and transformer, as taught by Ho, in order to provide the burner with power during an AC power failure [column 4 lines 53-56 of Ho].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIVEK K SHIRSAT whose telephone number is (571)272-3722. The examiner can normally be reached M-F 9:00AM-5:20AM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven B McAllister can be reached at 571-272-6785. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VIVEK K SHIRSAT/ Primary Examiner, Art Unit 3762
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