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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 54-73 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8, 10-18, and 20 of prior U.S. Patent No. 12,127,867 B2. This is a statutory double patenting rejection.
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 54-60 and 64-70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 11, and 14 of U.S. Patent No. 10,849,586 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of the patent claims all of the elements claimed in independent claim 54 of the instant application, in addition to the detector comprising a housing in which is contained a converter, a collector, and a transmitter. Also, the patent recites “a photocathode layer” whereas the application recites “photosensitive areas”. The claims of the instant application are broader and therefore anticipated by the claims of the patent.
Claims 61-63 and 71-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 11, and 14 of U.S. Patent No. 10,849,586 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because rotating the emitter, the detector, or both, around the examination area using a rotational support and motor is well known to those of ordinary skill in the art. Although the claims at issue are not identical, they are not patentably distinct from each other because having the emitter, the detector, or both, mounted to a wall or ceiling by appropriate supports is well known to those of ordinary skill in the art. Although the claims at issue are not identical, they are not patentably distinct from each other because a handheld and portable emitter, detector, or both, are well known to those of ordinary skill in the art.
Claims 54-60 and 64-70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 10, 12, and 14 of U.S. Patent No. 11,559,268 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim 1 of the patent claims all of the elements claimed in independent claim 54 of the instant application, in addition to the detector comprising a housing in which is contained a converter, a collector, and a transmitter. Also, the patent recites “a photocathode layer” whereas the application recites “photosensitive areas”. The claims of the instant application are broader and therefore anticipated by the claims of the patent.
Claims 61-63 and 71-73 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 10, 12, and 14 of U.S. Patent No. 11,559,268 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because rotating the emitter, the detector, or both, around the examination area using a rotational support and motor is well known to those of ordinary skill in the art. Although the claims at issue are not identical, they are not patentably distinct from each other because having the emitter, the detector, or both, mounted to a wall or ceiling by appropriate supports is well known to those of ordinary skill in the art. Although the claims at issue are not identical, they are not patentably distinct from each other because a handheld and portable emitter, detector, or both, are well known to those of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JURIE YUN whose telephone number is (571)272-2497. The examiner can normally be reached 10:30 am - 7:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J Makiya can be reached at 571 272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JURIE YUN/Primary Examiner, Art Unit 2884
June 3, 2026
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