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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6,8-11,15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Farrell et al. (US 2017/0234641 A1) in view of Kendir et al. (US 2007/0190495 A1).
Re claims 1, 15 – 16:
Farrell teaches 1. A firearm training system (Farrell, Abstract), comprising:
a firearm training device (Farrell, Abstract) including:
a device body that takes the form of a simulated firearm (Farrell, Abstract);
a trigger moveably coupled to the device body (Farrell, [0020], “detected trigger pull”);
a trigger sensor mounted to the device body to detect actuation of the trigger (Farrell, [0020]);
a trigger region incursion sensor mounted to the device body to detect an object being present within a trigger region neighboring the trigger (Farrell, [0009]; [0011]);
a emitter mounted to the device body and configured to emit a along a path that simulates a firing trajectory of the simulated firearm (Farrell, [0022], “generate a visible light output via one or more light emitting elements”; [0033]);
an electronic control system mounted to the device body (Farrell, [0020]), wherein the electronic control system is configured to:
responsive to detecting an object within the trigger region via the trigger region incursion sensor, control the emitter to emit a first emission at a first wavelength according to a first emission pattern (Farrell, [0019] – [0022]; [0033]; [0045], “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern); and
responsive to detecting actuation of the trigger via the trigger sensor, control the emitter to emit a second emission at a second wavelength according to a second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045]);
wherein the first wavelength differs from the second wavelength, or the first emission pattern differs from the second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045], “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”).
Farrell teaches 15. A method performed by an electronic control system of a firearm training device that simulates a firearm (Farrell, Abstract), the method comprising:
responsive to detecting an object within a trigger region neighboring a trigger of the firearm training device via a trigger region incursion sensor (Farrell, [0009]; [0011]), controlling a emitter of the firearm training device to emit a first emission at a first wavelength according to a first emission pattern (Farrell, [0022], “generate a visible light output via one or more light emitting elements”; [0033]); and
responsive to detecting actuation of the trigger via a trigger sensor of the firearm training device (Farrell, [0019] – [0022]; [0033]; [0045]), controlling the emitter to emit a second emission at a second wavelength according to a second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045]);
wherein the first wavelength differs from the second wavelength, or the first emission pattern differs from the second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045], “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern).
Farrell teaches 16. A monitoring system for simulated firearm training (Farrell, Abstract), the monitoring system comprising:
an optical sensor subsystem including one or more optical sensors (Farrell, [0010] – [0013]);
a computing system of one or more computing devices including a storage subsystem (Farrell, [0023]; [0032]) having instructions stored thereon executable by the computing system to:
detect, the first emission has a first wavelength and a first emission pattern (Farrell, [0019] – [0022]; [0033]; [0045]);
wherein the first emission is emitted by the simulated firearm responsive to the simulated firearm detecting an object within a trigger region neighboring a trigger of the simulated firearm via a trigger region incursion sensor (Farrell, [0019] – [0022]; [0033]; [0045]);
record a first time-based spatial representation of the first emission in the storage subsystem (Farrell, [0023], “Data storage device 170 may receive and store instances of trigger pull and trigger region incursion in association with a time stamp in a manner that enables these events to be distinguished from each other”);
attribute the first emission to the simulated firearm based on settings data stored in the storage subsystem that associates the first wavelength and/or the first emission pattern with an identifier of the simulated firearm (Farrell, [0019] – [0022]; [0033]; [0045], “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern);
detect, the second emission has a second wavelength and a second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045]);
wherein the second emission is emitted by the simulated firearm responsive to the simulated firearm detecting actuation of the trigger via a trigger sensor (Farrell, [0019] – [0022]; [0033]; [0045]);
wherein the first wavelength differs from the second wavelength, or the first emission pattern differs from the second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern);
record a second time-based spatial representation of the second emission in the storage subsystem (Farrell, [0023], “Data storage device 170 may receive and store instances of trigger pull and trigger region incursion in association with a time stamp in a manner that enables these events to be distinguished from each other”);
attribute the second emission to the simulated firearm based on the settings data stored in the storage subsystem that associates the second wavelength and/or the second emission pattern with the identifier of the simulated firearm (Farrell, [0019] – [0022]; [0033]; [0045]); and
output event data that includes the identifier of the simulated firearm, the first time-based spatial representation, and the second time-based spatial representation (Farrell, [0023], “Data storage device 170 may receive and store instances of trigger pull and trigger region incursion in association with a time stamp in a manner that enables these events to be distinguished from each other”; [0021], “The audio output generated in response to a trigger pull may differ from or may be the same as the audio output generated in response to incursion of an object into or near trigger region 114”; [0043], “integrated electronic module 710 output signals indicative of detected trigger pull and detected incursion of an object into the trigger region”).
Farrell does not explicitly disclose a laser as a light source; instead, Farrell teaches an infrared light source (e.g., IR emitter).
Kendir et al. (US 2007/0190495 A1) teaches a firearm laser training system accommodates various types of targets for facilitating a variety of firearm training activities (Kendir, Abstract). Kendir teaches a laser emitter (Kendir, Abstract). Therefore, in view of Kendir, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system and method described in Farrell, by providing the laser emitter as taught by Kendir, since it was known in the art that laser is a light beam that is highly focused, narrow, and directional.
Farrell does not explicitly disclose a detect, via the optical sensor subsystem, a first laser emission from a simulated firearm within a field of view of the one or more optical sensors in which the first laser emission … detect, via the optical sensor subsystem, a second laser emission from the simulated firearm within the field of view of the one or more optical sensors in which the second laser emission; instead Farrell teaches detect, via the optical sensor subsystem, for trigger pull and trigger incursion (Farrell, [0010] –[0013]).
Kendir teaches
a detect, via the optical sensor subsystem, a first laser emission from a simulated firearm within a field of view of the one or more optical sensors in which the first laser emission … detect, via the optical sensor subsystem, a second laser emission from the simulated firearm within the field of view of the one or more optical sensors in which the second laser emission (Kendir, fig. 1 and fig. 12 and 13 show a field of view of the optical sensors for both “Trace” mode (first laser emission) and “Shot” (second laser emission); [0057], “The signatures may be embedded within the laser beam in any desired fashion (e.g., modulation, pulse widths, etc.), while the signature detector may be implemented by any conventional or other devices to detect patterns or signatures within the transmitted laser signal”).
wherein the first laser emission is emitted by the simulated firearm … (Kendir, figs. 9 – 14, “trace” mode);
record a first time-based spatial representation of the first laser emission in the storage subsystem (Kendir, fig. 12; [0083], “The modes include shot mode to record shot locations on the screen, trace mode to track a laser beam on the target as described below and plot mode to plot a path of laser beam impacts”; [0084], “The trace mode is enabled in response to a user selecting the trace mode in mode selection area 179 and the laser transmitter assembly operating in a "constant on" mode”);
attribute the first laser emission to the simulated firearm based on settings data stored in the storage subsystem that associates the first wavelength and/or the first emission pattern with an identifier of the simulated firearm (Kendir, figs. 9 – 14, “constant on”; [0057], “The signatures may be embedded within the laser beam in any desired fashion (e.g., modulation, pulse widths, etc.), while the signature detector may be implemented by any conventional or other devices to detect patterns or signatures within the transmitted laser signal”);
…
wherein the second laser emission is emitted by the simulated firearm responsive to the simulated firearm detecting actuation of the trigger via a trigger sensor (Kendir, [0096], “the laser module may be configured in the form of ammunition for insertion into a firearm firing or similar chamber and project a laser beam in response to trigger actuation”);
wherein the first wavelength differs from the second wavelength, or the first emission pattern differs from the second emission pattern (Kendir, [0057], “The signatures may be embedded within the laser beam in any desired fashion (e.g., modulation, pulse widths, etc.), while the signature detector may be implemented by any conventional or other devices to detect patterns or signatures within the transmitted laser signal”);
record a second time-based spatial representation of the second laser emission in the storage subsystem (Kendir, [0076]; [0077], “computer system may provide audio (e.g., resembling firearm shots and/or hits) to indicate beam impact. Exemplary graphical user screens indicating the target, beam impact locations, impact time, score and other information is illustrated in FIGS. 9-10”);
attribute the second laser emission to the simulated firearm based on the settings data stored in the storage subsystem that associates the second wavelength and/or the second emission pattern with the identifier of the simulated firearm (Kendir, [0057], “The signature detector further enables detection of beam impacts”; [0043], “The optics package laser is generally enabled for a predetermined time interval sufficient for image sensing device 16 to detect a beam impact. The beam may be modulated, coded or pulsed in any desired fashion”; [0054]); and
output event data that includes the identifier of the simulated firearm, the first time-based spatial representation, and the second time-based spatial representation (Kendir, fig. 12; [0083], “The modes include shot mode to record shot locations on the screen, trace mode to track a laser beam on the target as described below and plot mode to plot a path of laser beam impacts”; [0084], “The trace mode is enabled in response to a user selecting the trace mode in mode selection area 179 and the laser transmitter assembly operating in a "constant on" mode”).
Therefore, in view of Kendir, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system and method described in Farrell, by providing the optical sensor for FOV for the laser emission as taught by Kendir, in order to provide various information to a user (e.g., user name, user identification, task, task hits, total hits, task score, total score, dispersion, center of mass, qualification, time left, etc.). Shot table area 178 includes a shot table providing the hit number, time, score and task for each detected target hit (Kendir, [0091]) and the system traces the aiming position of the firearm or laser transmitter assembly and reports graphically the horizontal and vertical deviations of the firearm (FIG. 12). In this mode, the laser transmitter assembly is configured to continuously project a laser beam from the firearm ( e.g., "constant on" mode) as described above. The continuous laser beam projection allows the sensing device to trace any movement of the firearm, which in tum, allows the computer system to provide feedback to the user relating to fluctuation in firearm aim. The computer system continuously receives detection information (e.g., target image coordinates indicating beam impact locations) from the sensing device. Since the laser transmitter assembly is in a continuous mode (e.g., continuously projecting a laser beam onto the target), the sensing device traces the aim of the firearm on the target and continuously relays detection information to the computer system (Kendir, [0085]).
Re claims 2 – 4:
2. The firearm training system of claim 1, wherein the first emission pattern differs from the second emission pattern. 3. The firearm training system of claim 2, wherein the first wavelength is the same as the second wavelength (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern).
4. The firearm training system of claim 2, wherein the first emission pattern has a first pulse length for each of a plurality of repeating pulses of the first laser emission; and wherein the second emission pattern has a second pulse length for each of a plurality of repeating pulses of the second laser emission that differs from the first pulse length (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements” same and different flashing frequency and duration – same and different pattern).
Re claims 5 – 6:
5. The firearm training system of claim 2, wherein the first emission pattern is variable responsive to a command received via an interface of the electronic control system (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; a command controls the color, flashing frequency, and duration).
6. The firearm training system of claim 5, wherein the electronic control system has settings data stored thereon that includes one or more laser settings that defines the first emission pattern and the second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; light output setting for the color, flashing frequency, and duration).
Re claims 8 – 9:
8. The firearm training system of claim 1, wherein the first wavelength differs from the second wavelength. 9. The firearm training system of claim 8, wherein the first emission pattern is the same as the second emission pattern (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern).
Re claims 10 – 11:
10. The firearm training system of claim 8, wherein the first wavelength is variable responsive to a command received via an interface of the electronic control system. 11. The firearm training system of claim 10, wherein the electronic control system has settings data stored thereon that includes one or more laser settings that defines the first wavelength and the second wavelength (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”).
Re claims 17 – 18:
Farrell does not explicitly disclose the event data is output via a graphical user interface.
Kendir teaches 17. The monitoring system of claim 16, wherein the event data is output via a graphical user interface. 18. The monitoring system of claim 17, wherein the first time-based spatial representation is depicted via the graphical user interface by a first graphical representation; and wherein the second time-based spatial representation is depicted via the graphical user interface by a second graphical representation that differs from the first graphical representation (Kendir, fig. 12; [0083], “The modes include shot mode to record shot locations on the screen, trace mode to track a laser beam on the target as described below and plot mode to plot a path of laser beam impacts”; [0084], “The trace mode is enabled in response to a user selecting the trace mode in mode selection area 179 and the laser transmitter assembly operating in a "constant on" mode”; [0085]).
Therefore, in view of Kendir, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system and method described in Farrell, by providing the optical sensor for FOV for the laser emission as taught by Kendir, in order to provide various information to a user (e.g., user name, user identification, task, task hits, total hits, task score, total score, dispersion, center of mass, qualification, time left, etc.). Shot table area 178 includes a shot table providing the hit number, time, score and task for each detected target hit (Kendir, [0091]) and the system traces the aiming position of the firearm or laser transmitter assembly and reports graphically the horizontal and vertical deviations of the firearm (FIG. 12). In this mode, the laser transmitter assembly is configured to continuously project a laser beam from the firearm ( e.g., "constant on" mode) as described above. The continuous laser beam projection allows the sensing device to trace any movement of the firearm, which in tum, allows the computer system to provide feedback to the user relating to fluctuation in firearm aim. The computer system continuously receives detection information (e.g., target image coordinates indicating beam impact locations) from the sensing device. Since the laser transmitter assembly is in a continuous mode (e.g., continuously projecting a laser beam onto the target), the sensing device traces the aim of the firearm on the target and continuously relays detection information to the computer system (Kendir, [0085]).
Re claim 19:
19. The monitoring system of claim 18, wherein the first graphical representation includes a first color and the second graphical representation includes a second color that differs from the first color ((Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”).
Re claim 20:
20. The monitoring system of claim 16, wherein the first emission pattern differs from the second emission pattern; and wherein the first wavelength is the same as the second wavelength (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.) generated in response to incursion of an object into or near the trigger region, depending on implementation, and may utilize the same or different light emitting elements”; same and different color – same and different wavelength).
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Farrell et al. (US 2017/0234641 A1) in view of Kendir et al. (US 2007/0190495 A1) as applied to claims 6 and 11 above, and further in view of Houde-Walter et al. (US 2011/0252681 A1).
Re claims 7, 12:
Farrell teaches different pulse length and different wavelength (Farrell, [0019] – [0022]; [0033]; [0045] , “The visible light output generated in response to a trigger pull may differ from or may be the same as the visible light output (e.g., color, flashing frequency, duration, etc.); same and different color – same and different wavelength; same and different flashing frequency and duration – same and different pattern). Farrell does not explicitly disclose receive, via the interface, a command to change a laser setting of the one or more laser settings stored on the electronic control system … receive, via the interface, a command to change a laser setting of the one or more laser settings stored on the electronic control system that defines the first wavelength; and
Houde-Walter teaches A laser sighting device for a semi-automatic handgun (Houde-Walter, Abstract). 7. The firearm training system of claim 6, wherein the electronic control system is further configured to: receive, via the interface, a command to change a laser setting of the one or more laser settings stored on the electronic control system that defines a first pulse length for a plurality of repeating pulses of the first laser emission for the first emission pattern (Houde-Walter, [0027]); and update the laser setting stored on the electronic control system based on the command to vary the first pulse length of the first laser emission for the first emission pattern (Houde-Walter, [0031] – [0032]; [0036]; claim 7; claim 10). 12. The firearm training system of claim 11, wherein the electronic control system is further configured to: receive, via the interface, a command to change a laser setting of the one or more laser settings stored on the electronic control system that defines the first wavelength (Houde-Walter, [0027]); and update the laser setting stored on the electronic control system based on the command to vary the first wavelength of the first laser emission (Houde-Walter, [0031] – [0032]; [0036]; claim 7; claim 10). Therefore, in view of Houde-Walter, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system described in Farrell, by providing laser setting as taught by Houde-walter, since the duration of the train of pulses of the
modulated laser light can be adjusted for any duration of time. Further, a different pulse "train" can be developed for each shooter (Houde-Walter, [0031]). When multiple shooters are targeting the same object, a different color laser may be used for each different firearm, enabling the trainer to determine how each individual shooter is performing, and light receptors on the target system could be programmed to recognize the different colors (Houde-Walter, [0036]).
Claims 13 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Farrell et al. (US 2017/0234641 A1) in view of Kendir et al. (US 2007/0190495 A1) as applied to claims 6 and 11 above, and further in view of Farrell et al. (US 2008/0032268 A1, Know herein as Farrell’268).
Re claims 13 - 14:
Farrell teaches 13. The firearm training system of claim 1, wherein the electronic control system is configured to: control the laser emitter to emit the first laser emission at the first wavelength according to the first emission pattern while the object remains present within the trigger region prior to actuation of the trigger (Farrell, [0022]). 14. The firearm training system of claim 1, wherein the electronic control system is configured to: control the laser emitter to emit the first laser emission at the first wavelength according to the first emission pattern while the object remains present within the trigger region (Farrell, [0022]).
Farrell does not explicitly disclose discontinue emitting the first laser emission at the first wavelength according to the first emission pattern responsive to detecting actuation of the trigger; nor disclose discontinue emitting the first laser emission at the first wavelength according to the first emission pattern responsive to the object no longer being present within the trigger region. Farrell’268 teaches a firearm monitoring system according to the present invention senses the position of a user hand or trigger finger on a weapon and generates a warning, notification, status or control signal when the user finger position is proximate the trigger. Farrell’268 further teaches discontinue emitting the first laser emission at the first wavelength according to the first emission pattern responsive to detecting actuation of the trigger and discontinue emitting the first laser emission at the first wavelength according to the first emission pattern responsive to the object no longer being present within the trigger region (Farrell’268, [0025], “The firearm monitoring system senses the position of a user hand or trigger finger and produces an alarm in response to detecting the trigger finger in the proximity of the trigger”; [0038], “If internal area 13 of trigger guard 11 between light source 12 and light detector 17 is unobstructed, the light detector output voltage is sufficient to bias inverting transistor 33 to conduct current from resistor 35 coupled to supply voltage 73 (Vcc) and reduce the voltage at the base of transistor switch 34 to approximately zero volts. This causes the transistor switch to enter an off state and produce a detector high output signal at collector 37 of transistor switch 34. … This causes transistor switch 34 to saturate and supply power to output load or resistor 36, thereby producing a detector active low output signal at collector 37. Resistor 36 may include any suitable characteristics (e.g., resistance, etc.) … indicator (e.g., buzzer, annunciator light, laser sighting system 90, radio unit 94, etc.)”). Therefore, in view of Farrell’268, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system described in Farrell, by providing the off state as taught by Farrell’268, in order to reserve power when it is not used.
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 19 of copending Application No. 18/221299 (‘299). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter claimed in the instant application is fully disclosed in the more specific claims of ‘299.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JACK YIP/Primary Examiner, Art Unit 3715
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