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 .
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 24-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12134451. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are encompassed by the patented claims, simply broadened.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 24-27, 30-32, and 34-40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al (US 2017/0015397; cited by Applicant) in view of Wood, Jr. (US 4406630; cited by Applicant). With respect to claims 24-26, 36, 41, 43, Mitchell et al disclose the basic claimed structure including a marine vessel 14 with a hull 12, a deck (paragraph 0058), a first and second power sources 18 (Figure 1A), one aft and one mid-hull. Not disclosed by Mitchell et al is the aft power source being centered in the hull. However, Wood, Jr. teaches centered batteries 14, 15 (figure 2) with a removable hatch. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to locate the aft battery of Mitchell et al to be centered and to have the batteries in a removable hatch as taught by Wood, Jr. for improved stability and wake generation and ease of maintenance. The combination combines known features to achieve predictable results. Further a person of ordinary skill in the art before the effective filing date of the claimed invention would have years of experience and advanced degrees. Such a person would have been familiar with various battery locations and would have found the combination to have been obvious. With respect to claims 27, 30, note Mitchell et al, Figure 1A. With respect to claims 31-32, 35, the particular claimed battery size and power would have been an obvious choice of engineering design to a person of ordinary skill in the art before the effective filing date of the clamed invention for improved power delivery. With respect to claims 34, 38, note Mitchell et al, 10. With respect to claim 37, note Mitchell et al, Figures 14, 15. With respect to claims 39-40, note Mitchell et al, paragraph 0077. The method steps in the method claims directly follow from the apparatus of the combination.
Claim(s) 33 and 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitchell et al (US 2017/0015397; cited by Applicant) in view of Wood, Jr. (US 4406630; cited by Applicant), as applied to claims 24, 41, and further in view of Alston (US 2009/0269994). With respect to claims 33, 42, Mitchell et al do not disclose ballast. However, Alston teaches ballast (paragraph 0019. It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the device of Mitchell et al with ballast as taught by Alston for improved stability and wake generation and ease of maintenance. The combination combines known features to achieve predictable results. Further a person of ordinary skill in the art before the effective filing date of the claimed invention would have years of experience and advanced degrees. Such a person would have been familiar with various ballast systems and would have found the combination to have been obvious.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN AVILA whose telephone number is (571)272-6678. The examiner can normally be reached Mon-Thu 6-4.
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, Marc Q. Jimenez can be reached at 571-272-4530. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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STEPHEN AVILA
Primary Examiner
Art Unit 3617
/STEPHEN P AVILA/Primary Examiner, Art Unit 3615
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