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 2, 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,137,291.
Regarding claim 2, claim 1 of ‘291 teaches all the limitations of instant claim 2.
Regarding claim 4, claim 1 of ‘291 teaches all the limitations of instant claim 4.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,137,291.
Regarding claim 3, claim 4 of ‘291 teaches all the limitations of instant claim 3.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,137,291.
Regarding claim 5, claim 2 of ‘291 teaches all the limitations of instant claim 5.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,137,291.
Regarding claim 6, claim 3 of ‘291 teaches all the limitations of instant claim 6.
Claims 7, 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,137,291.
Regarding claim 7, claim 5 of ‘291 teaches all the limitations of instant claim 7.
Regarding claim 8, claim 5 of ‘291 teaches all the limitations of instant claim 8.
Claims 9, 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,137,291.
Regarding claim 9, claim 6 of ‘291 teaches all the limitations of instant claim 9.
Regarding claim 10, claim 6 of ‘291 teaches all the limitations of instant claim 10.
Claims 11, 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,137,291.
Regarding claim 11, claim 7 of ‘291 teaches all the limitations of instant claim 11.
Regarding claim 12, claim 7 of ‘291 teaches all the limitations of instant claim 12.
Claims 13, 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,137,291.
Regarding claim 13, claim 8 of ‘291 teaches all the limitations of instant claim 13.
Regarding claim 14, claim 8 of ‘291 teaches all the limitations of instant claim 14.
Claims 15, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,137,291.
Regarding claim 15, claim 9 of ‘291 teaches all the limitations of instant claim 15.
Regarding claim 16, claim 9 of ‘291 teaches all the limitations of instant claim 16.
Claims 17, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,137,291.
Regarding claim 17, claim 10 of ‘291 teaches all the limitations of instant claim 17.
Regarding claim 18, claim 10 of ‘291 teaches all the limitations of instant claim 18.
Claims 19, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,137,291.
Regarding claim 19, claim 11 of ‘291 teaches all the limitations of instant claim 19.
Regarding claim 20, claim 11 of ‘291 teaches all the limitations of instant claim 20.
Claims 21, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,137,291.
Regarding claim 21, claim 12 of ‘291 teaches all the limitations of instant claim 21.
Regarding claim 22, claim 12 of ‘291 teaches all the limitations of instant claim 22.
Claims 23, 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,137,291.
Regarding claim 23, claim 13 of ‘291 teaches all the limitations of instant claim 23.
Regarding claim 24, claim 13 of ‘291 teaches all the limitations of instant claim 24.
Claims 25, 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,137,291.
Regarding claim 25, claim 14 of ‘291 teaches all the limitations of instant claim 25.
Regarding claim 26, claim 14 of ‘291 teaches all the limitations of instant claim 26.
Claims 27, 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,137,291.
Regarding claim 27, claim 15 of ‘291 teaches all the limitations of instant claim 27.
Regarding claim 28, claim 15 of ‘291 teaches all the limitations of instant claim 28.
Claims 29, 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,137,291.
Regarding claim 29, claim 16 of ‘291 teaches all the limitations of instant claim 29.
Regarding claim 30, claim 16 of ‘291 teaches all the limitations of instant claim 30.
Claims 31, 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19, 30 of U.S. Patent No. 12,137,291.
Regarding claim 31, claims 19, 30 of ‘291 teach all the limitations of instant claim 31.
Regarding claim 32, claims 19, 30 of ‘291 teach all the limitations of instant claim 32.
Claims 33, 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,137,291.
Regarding claim 33, claim 17 of ‘291 teaches all the limitations of instant claim 33.
Regarding claim 35, claim 17 of ‘291 teaches all the limitations of instant claim 35.
Claims 34, 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,137,291.
Regarding claim 34, claim 18 of ‘291 teaches all the limitations of instant claim 34.
Regarding claim 36, claim 18 of ‘291 teaches all the limitations of instant claim 36.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M BERARDESCA whose telephone number is (571)270-3579. The examiner can normally be reached Mon-Thurs 10-8, Fri 10-2.
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PAUL M. BERARDESCA
Examiner
Art Unit 2637
/PAUL M BERARDESCA/Primary Examiner, Art Unit 2637 1/7/2026