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.
Claim-1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent Application- 18/893,902. Although the claims at issue are not identical, they are not patentably distinct from each other because;
Regarding Claim-1, US U.S. Patent Application- 18/893,902 discloses- A routing structure comprising: a first fixed portion that is fixed to a vehicle body of a vehicle (Position at Item-10); a second fixed portion that is fixed to a sliding body that moves in a vehicle front-rear direction with respect to an opening provided in a roof of the vehicle body; an exterior member that has a first end portion held by the first fixed portion, and a second end portion held by the second fixed portion; an electric wire that is inserted into the exterior member; a plate-shaped biasing member that is inserted into the exterior member, and forms a curved portion curved in the vehicle front-rear direction between the first end portion and the second end portion of the exterior member; and a suppressing portion that is provided on the biasing member, and increases rigidity of a portion forming the curved portion to suppress the biasing member from having a narrowing shape at the curved portion [Claim-1].
Patent Application- 18/893,902 does not specifically disclose the suppressing portion made of formed curved portion, whereas reference claim is disclosing to use rod-shaped first member (which also has formed curved portion) to perform the exact same functionality.
Allowable Subject Matter
Claims- 2, 3, 4, 5, 6 – 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 OBAIDUL GANI whose telephone number is (571)272-8665. The examiner can normally be reached Mon-Fri: 7:30 - 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Timothy Thompson can be reached at (571) 272-2342. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OBAIDUL GANI/Examiner, Art Unit 2847
/TIMOTHY J THOMPSON/Supervisory Patent Examiner, Art Unit 2847
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