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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 2,128,898 Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
Examiner has provided analysis for claim 1 of the current claim to the claim 1 of the patented claim to show the invention is not patentably distinct from each other.
Claim 1 of the pending application is rejected on the ground of non-statutory obviousness-type double patenting over claim 1 of the patented application because the pending claim does not define a patentably distinct invention. The patented claim already teaches a control method in which a controller receives two engine-related inputs—temperature of an aftertreatment system and engine power output—compares each to a respective threshold, and controls an aftertreatment system heater by engaging it, reducing heater power, or disengaging it based on whether the temperature is below or above the temperature threshold and whether the engine power output is below or above the power output threshold. The pending claim merely substitutes the second measured parameter, replacing engine power output with an exhaust gas characteristic such as engine-out NOx, while retaining the same dual-threshold comparison, the same three conditional control states, and the same outcomes of heater engagement, power reduction, and disengagement. The claimed control architecture, decision logic, and heater-actuation scheme are therefore structurally and operationally identical to those of the patented claim, differing only in the choice of the engine-state indicator used as the secondary input. Because exhaust gas characteristics such as NOx concentration are well-understood alternative proxies for combustion state and engine loading, a person of ordinary skill would have found it obvious to replace or interchange engine power with exhaust gas characteristic in the patented control scheme to achieve the same regulation of heater load. Accordingly, the pending claim represents an obvious variation of the patented claim, lacking a patentable distinction in function or inventive concept, and is therefore properly rejected for non-statutory double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MASUD AHMED whose telephone number is (571)270-1315. The examiner can normally be reached M-F 9:00-8:30 PM PST with IFP.
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MASUD . AHMED
Primary Examiner
Art Unit 3657A
/MASUD AHMED/Primary Examiner, Art Unit 3657