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 .
Status of Claims
This is the First Office Action on the merits.
Claims 1-20 are currently pending and addressed below.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 01/21/2025 has been considered. An initialed copy of the IDS is enclosed herewith.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim recites “in response to user input” should read as “in response to a user input”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4, 9, and 12-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 4, the claim recites “wherein the end of the range of motion is configured”. It is unclear to Examiner by what is meant by “where in the end of the range of motion is configured”. For example, the “end of the range of motion is configured” particular how? It appears to the Examiner the claim may be incomplete.
As to claim 9, the claim is rejected for the same reasons as mentioned in the rejection of claim 4.
As to claim 12, the claim recites “wherein the button is on a graphical user interface of the trim-tab-input device.” There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 13-14 inherit the defect of the claim from which they depend.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claims 1 and 17 render obvious the rejected claim of the instant application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 2 renders obvious the rejected claim of the instant application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 15 renders obvious the rejected claim of the instant application.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claims 1 and 17 render obvious the rejected claim of the instant application.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 15 renders obvious the rejected claim of the instant application.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 10 renders obvious the rejected claim of the instant application.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 9 renders obvious the rejected claim of the instant application.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 2 renders obvious the rejected claim of the instant application.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 12 renders obvious the rejected claim of the instant application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 13 renders obvious the rejected claim of the instant application.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 14 renders obvious the rejected claim of the instant application.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 18 renders obvious the rejected claim of the instant application.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of U.S. Patent No. 12124276 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because reference claim 19 renders obvious the rejected claim of the instant application.
Allowable Subject Matter
Claims 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Andrasko et al. (US 9278740 B1) teaches a system for controlling an attitude of a marine vessel having first and second trim tabs.
Gaynor et al. (US 6354237 B1) teaches a trim tab control system that will automatically position the trim tabs of the marine vessel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MISA HUYNH NGUYEN whose telephone number is (571)270-5604. The examiner can normally be reached Monday-Friday.
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/MISA H NGUYEN/Examiner, Art Unit 3666
/ANNE MARIE ANTONUCCI/Supervisory Patent Examiner, Art Unit 3666