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 obviousness-type 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 2-31 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-30 of patent 12156200 (application 18183787).
Claims 2-31 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-24 of patent 11638280 (application 16514878).
Although the conflicting claims are not identical, they are not patentably distinct from each other in light of the following evidences.
For double patenting to exist as between the rejected claims and patent claims, it must be determined that the rejected claims are not patentably distinct from the patent claims. In order to make this determination, it first must be determined whether there are any differences between the rejected claims and the patent claims and, if so, whether those differences render the claims patentably distinct.
The differences between the rejected claims and the patent claims don’t render the claims patentably distinct because the claims of the instant application merely broaden the scope of the claims of the patent. It had been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson,136 USQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd.App.1969); omission of a reference element whose function is not needed would be obvious to one skilled in the art.
Also, according to MPEP 804 under Anticipation Analysis, "The analysis required is different in situations where the claim in the application being examined (1) is directed to a species or sub-genus covered by a generic claim in a potentially conflicting patent or application, or (2) overlaps in scope with a claim in a potentially conflicting patent or application but the potentially conflicting claims cannot be said to anticipate the examined claims. Both of these situations require an obviousness analysis unless one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application. See AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014)"
Clearly, "one of ordinary skill in the art would, on reading the potentially conflicting patent or application, at once envisage the invention claimed in the examined application".
In summary, as discussed in details above, clearly the differences between the rejected claims and the patent claims don’t render the claims patentably distinct.
Allowable Subject Matter
Claims 2-31 would be allowable if a Terminal Disclaimer is filed to overcome the rejection(s) under Double Patenting, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHOA B HUYNH whose telephone number is (571)270-7185. The examiner can normally be reached Monday - Friday 1:00 PM - 9:35 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Yemane Mesfin can be reached at (571) 272-3927. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KHOA HUYNH/Primary Examiner, Art Unit 2462
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