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 .
Claim Objections
Claim 19 is objected to because of the following informalities:
In claim 19, in the last line, “the door rotation shaft” has no antecedent basis in the claims.
Appropriate correction is required.
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.
Claims 1-18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-18 of prior U.S. Patent No. 12,139,947. This is a statutory double patenting rejection.
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.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,139,947. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent recites all the structure of claim 19 in the instant application as outlined in the below table:
Instant Application
U.S. Patent No. 12,139,947
19. A door connection structure comprising:
a door guide for guiding a door in a longitudinal direction of a vehicle body;
1. A door connection structure comprising: a door guide for guiding a door in a longitudinal direction of a vehicle body;
a door hinge arm mounted on the vehicle body, and
a door hinge arm mounted on the vehicle body, and
including a hinge rotation shaft, wherein the door hinge arm rotates around the hinge rotation shaft when the door is sliding;
including a hinge rotation shaft . . . wherein the door hinge arm rotates around the hinge rotation shaft when the door is sliding;
a first catcher rotatably mounted on the door hinge arm and of which a center striker guide is formed thereto; and
a first catcher rotatably mounted on the door hinge arm and of which a center striker guide is formed thereto; and
a center striker which is inserted into the center striker guide to rotate the first catcher and limits rotation of the first catcher when the door swings so that the door swings around the door rotation shaft.
a center striker which is inserted into the center striker guide to rotate the first catcher and limits rotation of the first catcher when the door swings so that the door swings around the door rotation shaft.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kozak et al. (US 6,386,621).
With respect to claim 20, Kozak et al. disclose a door connection structure comprising:
a door guide 60/52 including a guide striker 52 mounted on a vehicle body 12 (Kozak et al., col. 6, line 14) and a guide body 60 mounted on a door 16 (Kozak et al., col. 4, lines 30-31 and col. 4, lines 48-49)
wherein the guide striker 52 guides the guide body 60 when the door slides and the guide striker is separated from the guide body when the door swings (Kozak et al., col. 6, lines 8-16 and col. 6, lines 23-29);
a door hinge arm 76 rotating around a hinge rotation shaft 80 when the door 16 slides (as shown in Figs. 8-9 of Kozak et al.); and
a door hinge 74 connected to the door 16, and rotating around a door rotation shaft 78 when the door swings.
Allowable Subject Matter
Claim 19 would be allowable if a terminal disclaimer is filed in response to the double patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 19 has been indicated as containing allowable subject matter primarily for the first catcher rotatably mounted on the door hinge arm and of which a center striker guide is formed thereto; and a center striker which is inserted into the center striker guide to rotate the first catcher and limits rotation of the first catcher when the door swings so that the door swings around the door rotation shaft.
The closest prior art is to Heuel et al. However, Heuel et al. fail to disclose a catcher rotatably mounted on the door hinge arm and of which a center striker guide is formed thereto. Heuel et al. disclose a first catcher 36 of which a center striker guide 37 is formed thereto. However, the first catcher 36 is not rotatably mounted on door hinge arm, and the center striker does not limit rotation of the first catcher when the door swings so that the door swings around the door rotation shaft.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL J COLILLA whose telephone number is (571)272-2157. The examiner can normally be reached M-F 7:30 - 4:00.
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/Daniel J Colilla/ Primary Examiner, Art Unit 3612
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