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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
Figures 1A-11 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
1) On page 1, in paragraph 0001, line 2: The phrase --now U.S. Patent No. 12,114,783,-- should be inserted after the phrase “filed 10 December 2021,”.
2) On page 20, in paragraph 0077, line 13: The term “shaped” should be changed to --shape--.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-8, 11-14, 18-20 and 22-24 of U.S. Patent No. 12,114,783. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21-40 are generic to all that is recited in claims 1, 2, 4-8, 11-14, 18-20 and 22-24 of U.S. Patent No. 12,114,783. In other words, claims 1, 2, 4-8, 11-14, 18-20 and 22-24 of U.S. Patent No. 12,114,783 fully encompass the subject matter of claims 21-40 and therefore anticipate claims 21-40. Since claims 21-40 are anticipated by claims 1, 2, 4-8, 11-14, 18-20 and 22-24 of the patent, they are not patentably distinct from claims 1, 2, 4-8, 11-14, 18-20 and 22-24. Thus the invention of claims 1, 2, 4-8, 11-14, 18-20 and 22-24 of the patent is in effect a “species” of the “generic” invention of claims 21-40. 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 21-40 are anticipated (fully encompassed) by claims 1, 2, 4-8, 11-14, 18-20 and 22-24 of the patent, claims 21-40 are not patentably distinct from claims 1, 2, 4-8, 11-14, 18-20 and 22-24, regardless of any additional subject matter present in claims 1, 2, 4-8, 11-14, 18-20 and 22-24.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Ocegueda Gallaga et al. ‘040, Ocegueda Gallaga et al. ‘700, Leung ‘863, Ocegueda Gallaga et al. ‘116, Leung ‘993, Ocegueda Gallaga et al. ‘914, Ocegueda Gallaga et al. ‘213, Ocegueda Gallaga et al. ‘668, Ocegueda Gallaga et al. ‘949, Ocegueda Gallaga et al. ‘617, Ocegueda Gallaga et al. ‘563, Ocegueda Gallaga et al. ‘572, Ocegueda Gallaga et al. ‘149,
Ocegueda Gallaga et al. ‘148, Wang ‘306, Chaffee ‘726, Ocegueda Gallaga et al. ‘868, Ocegueda Gallaga et al. ‘301, Ocegueda Gallaga et al. ‘976 C, Ocegueda Gallaga et al. ‘485 C, Leung ‘327, Ocegueda Gallaga et al. ‘711, Ocegueda Gallaga et al. ‘929, Ocegueda Gallaga et al. ‘924, Ocegueda Gallaga et al. ‘976 A1, Ocegueda Gallaga et al. ‘485 A1, Chaffee ‘576 B1, Chaffee ‘576 A2, Chaffee ‘152 B1, Chaffee ‘624, Chaffee ‘152 A2 and Chaffee ‘684.
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.
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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.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673