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 .
Response to Arguments
Applicant contends that applicant will submit a terminal disclaimer however no terminal disclaimer has been received in the file.
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.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,130,117. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claims 1-20 of US. Patent No. 12,130,117. In other words, claims 1-20 of the patent fully encompasses the subject matter of the current application and therefore anticipates the claims of the current application. Since the current claims are anticipated by the patent claims, it is not patentably distinct from the patent claims. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the current claims are anticipated (fully encompassed) by the patent claims, the current claims are not patentably distinct from the patent claims, regardless of any additional subject matter present in the patent claims.
Claims 1-20 are allowable over the prior art except for the above double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to disclose or fairly suggest the claimed alignment mechanism comprising: a base having a front right quadrant, a front left quadrant, a rear right quadrant, and a rear left quadrant, wherein the base further defines a yaw axis and a pitch axis; and a ball and socket linkage on the base at one of the front right quadrant and front left quadrant, the ball and socket linkage at the intersection of the yaw axis and the pitch axis; a spring in contact with one of the rear right quadrant and the rear left quadrant; a yaw alignment surface at the other of the one of the rear right quadrant and the rear left quadrant; and a pitch alignment surface on one of the rear right quadrant and the rear left quadrant. Furthermore, the prior art of record fails to disclose or fairly suggest the claimed rangefinder comprising: a housing; a rangefinder chassis contained within the housing; and an alignment mechanism contained within the housing, wherein the alignment mechanism comprises a base having a front right quadrant, a front left quadrant, a rear right quadrant, and a rear left quadrant, wherein the base further defines a yaw axis and a pitch axis; and a ball and socket linkage on the base at one of the front right quadrant and front left quadrant, the ball and socket linkage at the intersection of the yaw axis and the pitch axis; a spring secured between the housing and a spring-contacting surface on one of the rear right quadrant and the rear left quadrant; a yaw alignment surface on the other of the one of the rear right quadrant and the rear left quadrant; and a pitch alignment surface on one of the rear right quadrant and the rear left quadrant.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE CLEMENT whose telephone number is (571)272-6884. The examiner can normally be reached M-F 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571.272.6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE CLEMENT/Primary Examiner, Art Unit 3641
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