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 .
Statutory 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.
Claim 18 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 18 of prior U.S. Patent No. 12,169,369. Claim 18 of the application inherits the claimed subject matter of base claim 17. Accordingly, claim 18 of the application is identical to claim 18 of the patent. This is a statutory double patenting rejection.
Nonstatutory 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 1-17, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.12,169,369. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the application are broader than and anticipated by the claims of the patent.
Allowable Subject Matter
Claims 1-17, 19, and 20 would be allowable when the nonstatutory double patenting rejection set forth in this Office action is overcome by a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d).
The following is a statement of reasons for the indication of allowable subject matter:
Clark et al. [US 2020/0083080] teaches and lithographic process that utilizes a photomask (see Figs. 1 and 2 and [0095]), controller (1040) is configured to control at least one condition of components (see [0192]) of the system; a processing circuitry (see Fig. 11) operatively connected to the controller, the processing circuitry configured to recognize data patterns of the at least one condition of components of the system (see [0208] and [00209]).
Rebstock [US 2018/0286726] teaches controlling humidity in a reticle stocker to reduce contamination levels associated with humidity (see [0035]), and an automated machinery configured to transfer the storage pod into and out of the stocker (transfer systems, see Figs. 13A-14B).
Teunissen et al. [US 2004/0105080] teaches detecting a hydrocarbon concentration within the storage device; in response to the detected hydrocarbon concentration within the storage device being higher than a threshold concentration, increasing the supply of the first gas into the storage device, (see [0085]).
Bonecutter et al. [US 2018/0130685] teaches during maintenance, oxygen is introduced into the EFEM to allow personnel to safely enter (see [0013]).
The previously cited prior art fails to teach in combination with the cited subject matter, without the use of impermissible hindsight reasoning, “a safety interlock assembly operatively coupled to the controller, the safety interlock assembly including: an operator equipment scanning assembly configured to determine whether equipment for operators entering into the stocker system is functionally operating; and an operator identifier scanning assembly configured to scan an identification of operators entering the stocker system” as recited in claim 1 and similarly recited in claim 12, and “determining whether equipment for operators entering into the storage device is functionally operating; and scanning an identification of operators entering the storage device,” as recited in claim 17. Claims 2-11, 13-16, 19, and 20 depend therefrom.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Steven H Whitesell whose telephone number is (571)270-3942. The examiner can normally be reached Mon - Fri 9:00 AM - 5:30 PM (MST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Steven H Whitesell/Primary Examiner, Art Unit 1759
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