DETAILED ACTION
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 based on an application filed in SA on 5/1/2024. It is noted, however, that applicant has not filed a certified copy of the SA 1020242299 application as required by 37 CFR 1.55. Parent application, 18760650, did not have a certified copy as well.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/9/2024 was filed in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18829472 (hereafter known as the Ouis reference) in view of Engel US 20050072216. Claim 1 of Ouis reference fully encompasses the scope of claim 1 of the instant application except for the teachings “wherein the first caliper connector has a first rubber surface configured to grip the cylindrical structure” and “wherein the second caliper connector has a second rubber surface configured to grip the cylindrical structure”. The Ouis reference does an H-shaped caliper with a first and second caliper connector. The difference between claim 1 of the instant application and claim 1 of the Ouis reference is that the material of the surface of the caliper connector is now defined in the instant application. Engel teaches that the alignment sheet, 202, which wraps around the cylindrical object can be made of metal, polymer or plastic. Rubber is a polymer. It would have been obvious to one of ordinary skill in the art to arrive at the claimed invention based on the teachings of the Ouis reference and the Engel reference because having a rubber surface prevents surface damage on the cylindrical object. Rubber material also aids in a better securement for the caliper.
Claims 2-6 of the instant application depend on claim 1. Claims 2-7 of the Ouis reference fully encompass claims 2-6 of the instant application.
This is a provisional nonstatutory double patenting rejection.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12140566 (hereafter known as the Ouis reference) in view of Engel US 20050072216. Claim 1 of the Ouis reference fully encompasses the scope of claim 1 of the instant application except for the teachings “wherein the first caliper connector has a first rubber surface configured to grip the cylindrical structure” and “wherein the second caliper connector has a second rubber surface configured to grip the cylindrical structure”. The Ouis reference does an H-shaped caliper with a first and second caliper connector. The difference between claim 1 of the instant application and claim 1 of the Ouis reference is that the material of the surface of the caliper connector is now defined in the instant application. Engel teaches that the alignment sheet, 202, which wraps around the cylindrical object can be made of metal, polymer or a plastic. Rubber is a polymer. It would have been obvious to one of ordinary skill in the art to arrive at the claimed invention based on the teachings of the Ouis reference and the Engel reference because having a rubber surface prevents surface damage on the cylindrical object. A rubber material also aids in a better securement for the caliper.
Claims 2-6 of the instant application depend on claim 1. Claims 2-6 of the Ouis reference fully encompass claims 2-6 of the instant application.
This is a provisional nonstatutory double patenting rejection.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12140566 (hereafter known as the Ouis reference) in view of Engel US 20050072216. Claim 7 of the Ouis reference fully encompasses the scope of claim 7 of the instant application except for the teachings “wherein the first caliper connector has a first rubber surface configured to grip the cylindrical structure” and “wherein the second caliper connector has a second rubber surface configured to grip the cylindrical structure”. The Ouis reference does an H-shaped caliper with a first and second caliper connector. The difference between claim 1 of the instant application and claim 1 of the Ouis reference is that the material of the surface of the caliper connector is now defined in the instant application. Engel teaches that the alignment sheet, 202, which wraps around the cylindrical object can be made of metal, polymer or a plastic. Rubber is a polymer. It would have been obvious to one of ordinary skill in the art to arrive at the claimed invention based on the teachings of the Ouis reference and the Engel reference because having a rubber surface prevents surface damage on the cylindrical object. A rubber material also aids in a better securement for the caliper.
Claims 8-14 depend on claim 7, in the instant application. Claims 8-14 of the Ouis reference fully encompass the scope of the claims 8-14 of the instant application.
This is a provisional nonstatutory double patenting rejection.
Conclusion
No prior art rejections are being made instant claims 1-14. Prior art citations were cited in the parent applications and distinguishing features between the prior arts and instant application were presented in those office actions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TARUN SINHA whose telephone number is (571)270-3993. The examiner can normally be reached Monday-Friday, 10AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Laura Martin can be reached at (571) 272-2160. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TARUN SINHA/Primary Examiner, Art Unit 2855
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