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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 4, 8, 10-12, 14, 15 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, 14-16, 18 and 19 of U.S. Patent No. 11,423,987. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 10, 11, 14-16, 18 and 19 of U.S. Patent No. 11,423,987 are clearly anticipated or similar in scope to the rejected claims 1, 2, 4, 8, 10-12, 14, 15 and 17 of the U. S. Pat. App (No. 18/913,322) with only obvious wording variations. For example below:
Instant application
Claim Number
U.S. Patent No. 11,423,987
Claim Number
1
10, 11, 14, 18
2
11
4
15
8
10, 11, 14, 18
10
16
11
16
12
16
14
10, 11, 14, 18
15
11
17
19
As shown in table above, the limitations in claims 1, 2, 4, 8, 10-12, 14, 15 and 17 of pending Application can be found the limitations in claims 10, 11, 14-16, 18 and 19 as indicated above of U.S. Patent No. 11,423,987. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that they are not patentably distinct from each other. Accordingly, claims 1, 2, 4, 8, 10-12, 14, 15 and 17 of pending Application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10, 11, 14-16, 18 and 19 of Patent No. 11,423,987 for the reasons as stated above.
Claims 1, 4, 5, 8, 10, 11, 12, 14 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 8, 10-13 and 19 of U.S. Patent No. 12,142,322. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 3, 4, 8, 10-13 and 19 of U.S. Patent No. 12,142,322 are clearly anticipated or similar in scope to the rejected claims 1, 4, 5, 8, 10, 11, 12, 14 and 17 of the U. S. Pat. App (No. 18/913,322) with only obvious wording variations. For example below:
Instant application
Claim Number
U.S. Patent No. 12,142,322
Claim Number
1
1, 10, 12
Fig. 8, spec. col. 7 lines 19-67 and col. 8 lines 1-2.
4
3
5
4
8
8, 10, 12
spec. col. 7 lines 19-67 and col. 8 lines 1-2.
10
10, 11
11
11
12
12
14
13
spec. col. 7 lines 19-67 and col. 8 lines 1-2.
17
19
As shown in table above, the limitations in claims 1, 4, 5, 8, 10, 11, 12, 14 and 17 of pending Application can be found the limitations in claims 1, 3, 4, 8, 10-13 and 19 as indicated above of U.S. Patent No. 12,142,322. Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that they are not patentably distinct from each other. Accordingly, claims 1, 4, 5, 8, 10, 11, 12, 14 and 17 of pending Application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 8, 10-13 and 19 of Patent No. 12,142,322 for the reasons as stated above.
Allowable Subject Matter
Claims 1-20 are allowed if they overcome the nonstatutory double patenting rejections above.
Conclusion
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/TUAN D NGUYEN/Primary Examiner, Art Unit 2699
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