DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The disclosure is objected to because of the following informalities: On page 1, in paragraph 1001, line 2: The phrase --(now U.S. Patent No. 12,161,596)-- should be inserted after the date “August 18, 2023”.
Appropriate correction is required.
Claim Objections
Claims 7-10 and 13 are objected to because of the following informalities:
1) In claim 7, line 2: The term “arm” should be changed to --portion--.
2) In claim 8, line 10 and in claim 9, line 2: The term --body-- should be inserted before the last instance of the term “support”.
3) In claim 10, line 3: The term --body-- should be inserted before the term “support”.
4) In claim 13, line 1: The number “8” should be changed to --11-- (in order to provide proper antecedent basis for the limitation of “the body element” as recited in line 2).
Appropriate correction is required.
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); 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 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 8 and 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,022,285. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8 and 9 are generic to all that is recited in claim 1 of U.S. Patent No. 10,022,285. In other words, claim 1 of U.S.
Patent No. 10,022,285 fully encompasses the subject matter of claims 8 and 9 and therefore anticipates claims 8 and 9. Since claims 8 and 9 are anticipated by claim 1 of the patent, they are not patentably distinct from claim 1. Thus the invention of claim 1 of the patent is in effect a “species” of the “generic” invention of claims 8 and 9. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 8 and 9 are anticipated (fully encompassed) by claim 1 of the patent, claims 8 and 9 are not patentably distinct from claim 1, regardless of any additional subject matter present in claim 1.
Claims 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20 of U.S. Patent No. 11,234,877. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 8-11 are generic to all that is recited in claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20 of U.S. Patent No. 11,234,877. In other words, claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20 of U.S. Patent No. 11,234,877 fully encompass the subject matter of claims 8-11 and therefore anticipate claims 8-11. Since claims 8-11 are anticipated by claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20 of the patent, they are not patentably distinct from claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20. Thus the invention of claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20 of the patent is in effect a “species” of the “generic” invention of claims 8-11. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 8-11 are anticipated (fully encompassed) by claims 1, 2, 5, 8-10, 13, 15-17, 19 and
20 of the patent, claims 8-11 are not patentably distinct from claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20, regardless of any additional subject matter present in claims 1, 2, 5, 8-10, 13, 15-17, 19 and 20.
Claims 2-5, 7-12, 14-18, 20 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23 of U.S. Patent No. 11,357,684. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2-5, 7-12, 14-18, 20 and 21 are generic to all that is recited in claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23 of U.S. Patent No. 11,357,684. In other words, claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23 of U.S. Patent No. 11,357,684 fully encompass the subject matter of claims 2-5, 7-12, 14-18, 20 and 21 and therefore anticipate claims 2-5, 7-12, 14-18, 20 and 21. Since claims 2-5, 7-12, 14-18, 20 and 21 are anticipated by claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23 of the patent, they are not patentably distinct from claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23. Thus the invention of claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23 of the patent is in effect a “species” of the “generic” invention of claims 2-5, 7-12, 14-18, 20 and 21. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 2-5, 7-12, 14-18, 20 and 21 are anticipated (fully encompassed) by claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23 of the patent, claims 2-5, 7-12, 14-18, 20 and 21 are not patentably distinct from claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23, regardless of any additional subject matter present in claims 1-4, 7, 9, 13, 15-17, 19, 20 and 23.
Claims 2, 6, 8-13 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8, 10-12 and 14-19 of U.S. Patent No. 11,786,429. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 6, 8-13 and 20 are generic to all that is recited in claims 1-5, 8, 10-12 and 14-19 of U.S. Patent No. 11,786,429. In other words, claims 1-5, 8, 10-12 and 14-19 of U.S. Patent No. 11,786,429 fully encompass the subject matter of claims 2, 6, 8-13 and 20 and therefore anticipate claims 2, 6, 8-13 and 20. Since claims 2, 6, 8-13 and 20 are anticipated by claims 1-5, 8, 10-12 and 14-19 of the patent, they are not patentably distinct from claims 1-5, 8, 10-12 and 14-19. Thus the invention of claims 1-5, 8, 10-12 and 14-19 of the patent is in effect a “species” of the “generic” invention of claims 2, 6, 8-13 and 20. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 2, 6, 8-13 and 20 are anticipated (fully encompassed) by claims 1-5, 8, 10-12 and 14-19 of the patent, claims 2, 6, 8-13 and 20 are not patentably distinct from claims 1-5, 8, 10-12 and 14-19, regardless of any additional subject matter present in claims 1-5, 8, 10-12 and 14-19.
Claims 2, 8-12, 14, 18, 20 and 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 8-11, 16-18 and 21 of U.S. Patent No. 11,801,185. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2, 8-12, 14, 18, 20 and 21 are generic to all that is recited in claims 1, 2, 4, 8-11, 16-18 and 21 of U.S. Patent No. 11,801,185. In other words, claims 1, 2, 4, 8-11, 16-
18 and 21 of U.S. Patent No. 11,801,185 fully encompass the subject matter of claims 2, 8-12, 14, 18, 20 and 21 and therefore anticipate claims 2, 8-12, 14, 18, 20 and 21. Since claims 2, 8-12, 14, 18, 20 and 21 are anticipated by claims 1, 2, 4, 8-11, 16-18 and 21 of the patent, they are not patentably distinct from claims 1, 2, 4, 8-11, 16-18 and 21. Thus the invention of claims 1, 2, 4, 8-11, 16-18 and 21 of the patent is in effect a “species” of the “generic” invention of claims 2, 8-12, 14, 18, 20 and 21. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 2, 8-12, 14, 18, 20 and 21 are anticipated (fully encompassed) by claims 1, 2, 4, 8-11, 16-18 and 21 of the patent, claims 2, 8-12, 14, 18, 20 and 21 are not patentably distinct from claims 1, 2, 4, 8-11, 16-18 and 21, regardless of any additional subject matter present in claims 1, 2, 4, 8-11, 16-18 and 21.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-19 and 21 of U.S. Patent No. 12,161,596. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2-21 are generic to all that is recited in claims 1-8, 10-19 and 21 of U.S. Patent No. 12,161,596. In other words, claims 1-8, 10-19 and 21 of U.S. Patent No. 12,161,596 fully encompass the subject matter of claims 2-21 and therefore anticipate claims 2-21. Since claims 2-21 are anticipated by claims 1-8, 10-19 and 21 of the patent, they are not patentably distinct from claims 1-8, 10-19 and 21. Thus the invention of claims 1-8, 10-19 and 21 of the patent is in effect a “species” of the “generic” invention of claims 2-21. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Since claims 2-21 are anticipated (fully encompassed) by claims 1-8, 10-19 and 21 of the patent, claims 2-21 are not patentably distinct from claims 1-8, 10-19 and 21, regardless of any additional subject matter present in claims 1-8, 10-19 and 21.
Allowable Subject Matter
The examiner respectfully asserts that none of the limitations of the apparatus as currently recited in claims 2-21 can be rejected under 35 U.S.C. §§§ 102, 103 and 112; accordingly, claims 2-21 are considered as being allowable if the objections to the specification and claims as well as the double patenting rejections indicated above were fully overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Melcher et al. ‘005, Melcher et al. ‘779 and Melcher et al. ‘946.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G SANTOS whose telephone number is (571)272-7048. The examiner can normally be reached Monday-Friday 9am-11:30am and 2pm-7:30pm.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673
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