DETAILED ACTION
Claims 1 – 7 are pending in the present application.
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 .
Examiner Note on Rejoinder in Parent Application 17/444,363
In a restriction requirement in the parent of this application (of record on 12/13/2023 in application number 17/444,363; which has granted US patent 12,104,965) on p.2, final partial paragraph and continuing to p.3, the examiner of that application states regarding claim 19 that if it is added to claim 14 and found allowable such claim will be rejoined. Specifically, regarding the subject matter of claim 19:
“The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.”
(emphasis added; application number 17/444,363, restriction requirement of record on 12/13/2023, p.2, final partial paragraph continuing to p.3)
Patented claim 6 of US 12,104,965 is the combination of the formerly restricted claim 14 amended with formerly restricted claim 19.
Additionally, see MPEP 804.01 regarding at least:
The following are situations where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply:
…
(F) The claims of the second application are drawn to the “same invention” as the first application or patent. Studiengesellschaft Kohle mbH v. Northern Petrochemical Co., 784 F.2d 351, 228 USPQ 837 (Fed. Cir. 1986). A statutory double patenting rejection under 35 U.S.C. 101 should be made, thus it is not necessary to determine whether the 35 U.S.C. 121 prohibition against making double patenting rejections is applicable. “Same invention” means identical subject matter. See, e.g., Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). The 35 U.S.C. 121 prohibition against certain nonstatutory double patenting rejections does not apply to statutory double patenting rejections under 35 U.S.C. 101 of claims to the “same invention.”
AS SUCH, the claims presented in this instant divisional application are subject to provisional statutory and/or nonstatutory double patenting rejections over the rejoined and patented claims (specifically now patented independent claim 6 and dependent claims 7-11 of US patent 12,104,965).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 6 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 6 of prior U.S. Patent No. 12,104,965. This is a statutory double patenting rejection.
Patented claim 6 (emphasis added):
A dry well temperature calibration system comprising: a dry well assembly comprising a heat chamber; and a cooling system configured to cool the heat chamber, the cooling system comprising:
a blower;
a venturi pump unit positioned downstream of the blower, the venturi pump unit in fluid communication with an opening in the heat chamber; and
a shutter door positioned downstream of the venturi pump unit, the shutter door configured to move between an open position and a closed position;
the cooling system configured such that, during operation of the blower:
when the shutter door is in the open position, the cooling system pulls air out of the opening in the heat chamber; and
when the shutter door is in the closed position, the cooling system pushes air into the opening in the heat chamber.
Instant claim 6 (emphasis added):
A dry well temperature calibration system comprising a dry well assembly and the cooling system of claim 1, wherein the dry well assembly comprises the heat chamber.
Instant claim 6 has four limitations all recited in the first two lines of patented claim 6 as follows:
1) A dry well temperature calibration system (see preamble of patented claim 6)
2) comprising a dry well assembly, (see line 1 of patented claim 6)
3) wherein the dry well assembly comprises the heat chamber (see lines 1 and 2 of patented claim 6) AND
4) the cooling system of claim 1. (see instant claim 1 below reciting the exact language of patented claim 6 starting in line 2).
Instant claim 1:
A cooling system configured to cool a heat chamber, the cooling system comprising:
a blower;
a venturi pump unit positioned downstream of the blower, the venturi pump unit in fluid communication with an opening in the heat chamber; and
a shutter door positioned downstream of the venturi pump unit, the shutter door configured to move between an open position and a closed position;
the cooling system configured such that, during operation of the blower:
when the shutter door is in the open position, the cooling system pulls air out of the opening in the heat chamber; and
when the shutter door is in the closed position, the cooling system pushes air into the opening in the heat chamber.
As seen directly above, instant claim 6, which incorporates/depends from instant claim 1, contains the precise limitations (nether adding nor removing any limitations) of patented claim 6 and is drawn to identical subject matter of the patented claim.
As such, a second patent on the same invention cannot be granted.
Further:
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-11 of U.S. Patent No. 12,104,965. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the patented claims.
Regarding claim 1:
A cooling system configured to cool a heat chamber, the cooling system comprising:
a blower;
a venturi pump unit positioned downstream of the blower, the venturi pump unit in fluid communication with an opening in the heat chamber; and
a shutter door positioned downstream of the venturi pump unit, the shutter door configured to move between an open position and a closed position;
the cooling system configured such that, during operation of the blower:
when the shutter door is in the open position, the cooling system pulls air out of the opening in the heat chamber; and
when the shutter door is in the closed position, the cooling system pushes air into the opening in the heat chamber. (see patented claim 6 starting in line 3 reciting these limitations verbatim)
Regarding claim 2: see patented claim 7
Regarding claim 3: see patented claim 8
Regarding claim 4: see patented claim 9
Regarding claim 5: see patented claim 10
Regarding claim 6: see patented claim 6 (see also statutory double patenting rejection above as instant claim 6 is anticipated by patented claim 6 because all limitations are identical and the same invention is claimed)
Regarding claim 7: see patented claims 6 and 11
Allowable Subject Matter
Claims 1-7 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 101 (statutory double patenting) and nonstatutory double patenting (NSDP) (please note that a terminal disclaimer can overcome the NSDP rejections but NOT the statutory double patenting rejection), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The best prior art of record Gao et al. (US 20210063253; teaching regarding flow guiding and heat dissipating type dry block temperature calibrator with a plurality of fans/blowers for cooling a furnace; see abstract, [0031], figs. 1 3 and 4), Staffin (US 3350915; teaching regarding a temperature calibration apparatus with cooling via furnace passages including in the furnace chamber), Moore (US 3406953; teaching regarding a venturi-tube pump/scrubber; see abstract and figs. 1-4) and Zhao et al. (US 11733108; teaching regarding a dry body temperature calibrator with temperature sensors specifically disclosed), fail to specifically teach the invention as claimed.
The limitations regarding a cooling system having a blower, a venturi pump, a shutter door configured as claimed with respect to a heat chamber and each other in independent claim 1 when combined with the specific limitations regarding the relative connectivity, placement and functionally claimed configuration of the shutter door as well as all additional limitation also in independent claim 1 distinguish the present invention from the combined prior art.
Hence the prior art of record fails to teach the invention as set forth in claims 1-7. The examiner cannot find specific teaching of the invention, nor reasons within the cited art to combine the elements of these references other than applicant’s own reasoning to fully encompass the current pending claims.
Though not dispositive on this prosecution, see also generally the reasons for allowance given in the notice of allowability in US application 17/444,363.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP COTEY whose telephone number is (571)270-1029. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura Martin can be reached at 571-272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP L COTEY/ Examiner, Art Unit 2855
/LAURA MARTIN SWEENEY/ Supervisory Patent Examiner, Art Unit 2855
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