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 .
Priority
Acknowledgment is made of Applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/643,859 (now U.S. Patent No. 11,672,717), filed on March 3, 2020.
Claim Objections
Claims 111, 120, 121 and 124 are objected to because of the following informalities:
1) In claim 111, line 3: The third instance of the term “the” should be changed to
--an--.
2) In the last line of claim 111: The last instance of the term “the” should be changed to --a--.
3) In claim 120, line 1: The number “118” should be changed to --111-- or --112-- in order to provide proper antecedent basis for the limitation of “the second end”, and the term --lower-- should be inserted before the term “second”.
4) In claim 121, line 2: The first instance of the term “the” should be changed to
--an--, and the term --first-- should be inserted before the term “actuator”.
5) In claim 124, line 1: The term --first-- should be inserted before the term “actuator”.
6) In the last line of claim 124: The first instance of the term “the” should be changed to --an--.
Appropriate correction is required.
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); and 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 106-125 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6-21, 24, 25 and 30-32 of U.S. Patent No. 11,672,717. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 106-125 are generic to all that is recited in claims 1, 2, 6-21, 24, 25 and 30-32 of U.S. Patent No. 11,672,717. In other words, claims 1, 2, 6-21, 24, 25 and 30-32 of U.S. Patent No. 11,672,717 fully encompass the subject matter of claims 106-125 and therefore anticipate claims 106-125. Since claims 106-125 are anticipated by claims 1, 2, 6-21, 24, 25 and 30-32 of the patent, they are not patentably distinct from claims 1, 2, 6-21, 24, 25 and 30-32. Thus the invention of claims 1, 2, 6-21, 24, 25 and 30-32 of the patent is in effect a “species” of the “generic” invention of claims 106-125. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 106-125 are anticipated (fully encompassed) by claims 1, 2, 6-21, 24, 25 and 30-32 of the patent, claims 106-125 are not patentably distinct from claims 1, 2, 6-21, 24, 25 and 30-32, regardless of any additional subject matter present in claims 1, 2, 6-21, 24, 25 and 30-32.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Clayton et al. ‘140, Clayton et al. ‘982, Clayton et al. ‘477, Campbell et al. ‘753 and Clayton et al. ‘624.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G SANTOS whose telephone number is (571)272-7048. The examiner can normally be reached Monday-Friday 9am-11:30am and 2pm-7:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin C Mikowski can be reached at 571-272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT G SANTOS/Primary Examiner, Art Unit 3673