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 1, 2, and 8-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,174,555. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim language is merely a rewording of the claim language from the Patent.
Regarding claim 1, the only difference to claim 1 of the U.S. Patent is the limitation of the last paragraph:
“wherein, when an axis extending in the first direction is defined as a first axis, a welding trace of the plate-like member welded to the support plate extends in the first direction, and a coordinate of the first axis of a part of the welding trace is the same as the coordinate of the first axis of a position of the screw when the plate-like member is fastened to the developing frame with the screw.”
The Patent instead requires “wherein a welding trace of the plate-like member welded to the support plate extends in the first direction, and when the plate-like member is viewed from a third direction intersecting the first direction and intersecting the second direction, the welding trace overlaps a position where the plate-like member is fastened to the developing frame with the screw in the first direction.”
These limitations appear to both be directed toward the screw and the welding trace having a part that overlaps in the third direction. The limitations does not appear to be patentably distinct.
Regarding claim 2, the application requires “The color developing device according to claim 1, wherein the coordinate of the first axis of a part of the welding trace is the same as the coordinate of the first axis of a position where a hole formed on the surface of the plate-like member through which the screw passes.”
Similar to claim 1, this does not appear to add any additional structural limitation to the color developing device. In order for a screw to be used to fix the support plate to be fixed to the developing frame, there must be a hole for the screw to penetrate. Further, the hole would be in line with the screw and therefore, share coordinates. The limitation does not appear to be further define claim one or render it patentably distinct from claim 1 of the Patent.
Claims 8-10 are identical to claims 2-4 of the Patent and therefore, not patently distinct.
Allowable Subject Matter
Claims 3-7 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW V DO whose telephone number is (571)270-3420. The examiner can normally be reached Monday-Friday 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Walter L Lindsay can be reached at 571-272-1674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WALTER L LINDSAY JR/Supervisory Patent Examiner, Art Unit 2852
/A.V.D/Examiner, Art Unit 2852
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