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 1-5 of an instant application 18/896,088 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of U.S. Patent No. 11,251,497. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 1-4 of the instant application, claim 1 of the U.S. Patent 11,251,497 comprising all of the limitations that encompass the limitations of claims 1-4 of the instant application.
Regarding claim 5 of the instant application, claim 2 of the U.S. Patent 11,251,497 comprising all of the limitations that encompass the limitations of claim 5 of the instant application.
Regarding claim 1 of the instant application, claim 3 of the U.S. Patent 11,251,497 comprising all of the limitations that encompass the limitations of claim 5 of the instant application.
Regarding claims 8-10 of the instant application, claim 5 of the U.S. Patent 11,251,497 comprising all of the limitations that encompass the limitations of claims 8-10 of the instant application.
Regarding claims 11-15 of the instant application, claims 6-10 of the U.S. Patent 11,251,497 comprising all of the limitations that encompass the limitations of claims 8-10 of the instant application.
Allowable Subject Matter
Claims 6-7 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.
Claims 16-20 are allowed.
The following is an examiner’s statement of reasons for allowance:
Neither references cited nor the cited references teach, suggest, or in combination of a system having a conductive region coupled to the electronic component, wherein the electrical signal is provided from the electronic component to the conductive region; and an electrically conductive contact component having a front portion and a rear portion, wherein the front portion includes an outward facing surface and a perimeter region surrounding the outward facing surface, wherein the outward facing surface is accessible from outside of the interior cavity of the housing and the rear portion has an inward facing surface, wherein the electrically conductive contact component is connected to the conductive region, wherein the front portion is partially encased by a first material that forms a sidewall of the housing and the rear portion is partially encased by a second material, and wherein the first material has a lower durometer than the second material (claim 16).
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/TUAN T DINH/Primary Examiner, Art Unit 2847
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