DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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 the Application
2. This application, filed October 31, 2024, is a continuation of U.S. Patent Application No. US 18/214,734, filed June 6, 2023, which issued as U.S. Patent No. US 12,159,762 B2 on December 3, 2024. Claims 1-28 are pending in the application.
Claim Interpretation
3. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
4. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
5. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“control unit” in claims 4, 11, 17, 21, and 28.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
6. 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.
7. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 1 of the current application.
Claims 2-7 are rejected for the same reasons as claim 1 because claims 2-7 depend from claim 1.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 2 of the current application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 3 of the current application.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 of U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,762 disclose, teach, and suggest all the limitations of claim 4 of the current application.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 13, and 20 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 13, and 20 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 4 of the current application.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 19 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12 and 19 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 4 of the current application.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 5 of the current application.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 6 of the current application.
Claim 7 is rejected for the same reasons as claim 6 because claim 7 depends from claim 6.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 of U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,763 disclose, teach, and suggest all the limitations of claim 7 of the current application.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 20 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5 and 20 of US 11,729,107 disclose, teach, and suggest all the limitations of claim 7 of the current application.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 13, 19, and 20 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12, 13, 19, and 20 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 7 of the current application.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 8 of the current application.
Claims 9-13 are rejected for the same reasons as claim 8 because claims 9-13 depend from claim 8.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 11 of U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 10, and 11 of US 12,159,763 disclose, teach, and suggest all the limitations of claim 9 of the current application.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 10, and 11 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, 10, and 11 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 8 of the current application.
Claim 10 is rejected for the same reasons as claim 9 because claim 10 depends from claim 9.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 10 of the current application.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 of U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,763 disclose, teach, and suggest all the limitations of claim 11 of the current application.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 13, and 20 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 13, and 20 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 11 of the current application.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 19 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12 and 19 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 11 of the current application.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of US 12,159,763 discloses, teaches, and suggests all the limitations of claim 12 of the current application.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 12 of the current application.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 13 of the current application.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of US 12,159,763 discloses, teaches, and suggests all the limitations of claim 14 of the current application.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 14 of the current application.
Claims 15-17 are rejected for the same reasons as claim 14 because claims 15-17 depend from claim 14.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of US 12,159,763 discloses, teaches, and suggests all the limitations of claim 15 of the current application.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 9, and 17 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 9, and 17 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 15 of the current application.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of US 12,159,763 discloses, teaches, and suggests all the limitations of claim 16 of the current application.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 16 of the current application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,763 disclose, teach, and suggest all the limitations of claim 17 of the current application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 13, and 19 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 13, and 19 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 16 of the current application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 19 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12 and 19 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 17 of the current application.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 11,728,107 and claims 4 and 11 of US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of US 11,728,107 and claims 4 and 11 of US 12,159,762 disclose, teach, and suggest all the limitations of claim 1 of the current application.
Claims 19-24 are rejected for the same reasons as claim 18 because claims 19-24 depend from claim 18.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 19 of the current application.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 20 of the current application.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 of U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,762 disclose, teach, and suggest all the limitations of claim 21 of the current application.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 13, and 20 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 13, and 20 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 21 of the current application.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 19 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12 and 19 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 21 of the current application.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 22 of the current application.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 23 of the current application.
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 of U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,763 disclose, teach, and suggest all the limitations of claim 24 of the current application.
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 20 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5 and 20 of US 11,729,107 disclose, teach, and suggest all the limitations of claim 24 of the current application.
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12, 13, 19, and 20 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12, 13, 19, and 20 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 24 of the current application.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 U.S. Patent No. US 12,159,762 and claims 4 and 11 of US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of US 12,159,763 and claims 4 and 11 of US 12,159,762 disclose, teach, and suggest all the limitations of claim 25 of the current application.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. US 11,728,107 and claims 4 and 11 of US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of US 11,728,107 and claims 4 and 11 of US 12,159,762 disclose, teach, and suggest all the limitations of claim 14 of the current application.
Claims 26-28 are rejected for the same reasons as claim 25 because claims 26-28 depend from claim 25.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of US 12,159,763 discloses, teaches, and suggests all the limitations of claim 26 of the current application.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 9, and 17 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 9, and 17 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 26 of the current application.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of US 12,159,763 discloses, teaches, and suggests all the limitations of claim 27 of the current application.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of US 11,728,107 discloses, teaches, and suggests all the limitations of claim 27 of the current application.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 13, and 19 U.S. Patent No. US 12,159,762. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8, 13, and 19 of US 12,159,763 disclose, teach, and suggest all the limitations of claim 28 of the current application.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 13, and 19 of U.S. Patent No. US 11,728,107. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 13, and 19 of US 11,728,107 disclose, teach, and suggest all the limitations of claim 28 of the current application.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 19 of U.S. Patent No. US 10,790,103. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 12 and 19 of US 10,790,103 disclose, teach, and suggest all the limitations of claim 28 of the current application.
Allowable Subject Matter
8. Claims 1, 8, 14, 18, and 25 and claims 2-7, 9-13, 15-17, 19-24, and 26-28, which depend from claims 1, 8, 14, 18, and 25, respectively, are objected to as being rejected on the ground of nonstatutory double patenting but would be allowable if terminal disclaimers were filed to avoid the double patenting rejections.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN F MORTELL whose telephone number is (571)270-1873. The examiner can normally be reached Monday - Friday 10-7 ET.
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/JOHN F MORTELL/Primary Examiner, Art Unit 2689