DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 8,991,904 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
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 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-37 of U.S. Patent No. RE50,127. Although the claims at issue are not identical, they are not patentably distinct from each other because both mix and match claims features found in the other set of claims. The current claim 18 claims a ride enhancement system for a vehicle having a counterweight platform for the operator to stand on, a resilient member and a damper member connected to the platform and a guide including a channel and a roller, with the roller received in the channel so the platform can move vertically relative to the frame. The ‘127 reissue’s claim 18 claims a vehicle comprising a frame and a counterweight platform supported by the frame to allow vertical movement with a resilient member and a dampener to control the vertical movement of the platform, with the resilient member having a preload of approximately 1025 Newtons and a spring rate of approximately 3300 Newtons per centimeter. Dependent claim 24 of the ‘127 reissue claims the guide including a channel and roller. The current claim 31 claims the same preload and spring rate as the ‘127 reissue. As the two sets of claims are seen to claim the same limitations in different combinations, they are not seen as patentably distinct. As such a terminal disclaimer is seen as necessary.
Claims 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-40 of U.S. Patent No. RE48,991. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a vehicle with a frame, a counterweight platform supported by the frame, with the counterweight platform configured for translational movement relative to the frame along a vertical axis and further having a resilient member and a dampener connected to the counterweight platform. The ‘991 reissue claims that the counterweight platform has a mass between 45 and 160 kilograms. The current claim 31 claims a preload of approximately 1025 Newtons and a spring rate of approximately 3300 Newtons per centimeter. The preload is seen as being accomplished by the weight of the ‘991 platform. The spring rate is seen as a factor that would be routinely experimented by an ordinary practitioner. The dependent claims are seen to mix and match the same features in both sets of claims.
Claims 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-65 of U.S. Patent No. RE47,899. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a vehicle with a frame, a counterweight platform supported by the frame, with the counterweight platform configured for translational movement relative to the frame along a vertical axis and further having a resilient member between the frame and the platform. The ‘899 reissue claims that the counterweight platform has a mass between 45 and 160 kilograms and claims a control member that inhibits movement of the platform. The current claim 31 claims a dampener which is claimed to inhibit movement of the platform along the vertical axis, so the earlier claimed control member is seen as the same as the dampener. The current claim 31 also claims a preload of approximately 1025 Newtons and a spring rate of approximately 3300 Newtons per centimeter. The preload is seen as being accomplished by the claimed weight of the ‘899 platform. The spring rate is seen as a factor that would be routinely experimented by an ordinary practitioner. The dependent claims are seen to combine various common (to both sets of claims) features in both sets of claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached on 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees:
/CATHERINE S WILLIAMS/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993