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 .
Detailed Action
The amendment filed on 08/07/2026 has been entered. However, no terminal disclaimer has been received.
Claim Rejection – Nonstatutory Double Patenting
1. 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.
2. Claims 1, 4, 6, 7, 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8-10 of U.S. Patent No. 12,151,388. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same invention with the claims of this instant application having a broader scope (e.g., without at least the limitation of a knife housing).
Instant Application Corresponding to Patent ‘388
claim 1 claims 1 and 8
claim 4 claim 9
claim 6 claim 4
claim 7 claim 10
claim 12 claim 2
claim 13 claim 3
Indication of Allowable Subject Matter
1. Claims 2, 3, 5 and 8-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
2. All pending claims 1-13 will be allowed providing a timely filed terminal disclaimer is approved.
3. . The most relevant prior art of record is U.S. Patent No. 6,249,975 to Lin which discloses a utility knife holder (H, see Fig.2 as annotated below) comprising:
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a housing (20);
a blade engaging assembly (50) configured to selectively receive a removable blade (30) in a blade channel (delimited by flanges “F”, see annotated Fig.2) formed within the housing (20) such that the removable blade (30) is supported by the housing (20);
wherein the blade engaging assembly (50) comprises a plurality of notch engaging protrusions (54,55) configured to move to selectively enter the blade channel to engage one or more notches (60,61) of the removable blade (30, see column 2, lines 30-32 and Figs.3-4); and
wherein a blade release actuator (301,303) is configured to move or permit movement of the notch engagement protrusions (54,55) out of the blade channel to permit removal of the removeable blade (30) from the blade engaging assembly (50, see column 2, lines 59-65 and Figs.3 and 7), wherein the plurality of notch engaging protrusions (54,55) comprise a fist notch engaging protrusion (54) and a second notch engaging protrusion (55) substantially as claimed except Lin lacks the claimed first lock (166, see Fig.6 of this instant application) coupled to the first notch engaging protrusion (158), and a second lock actuator (168) coupled to the second notch engaging protrusion (162).
Remarks
The amendment filed on 08/07/2026 has overcome the rejection under 35 U.S.C. 112(b). However, no terminal disclaimer has been received, and Applicant fails to argue the non-statutory double patenting rejection. Thus, claims 1, 4, 6, 7, 12 and 13 stand rejected as set forth.
Action Made Final
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Point of Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HWEI-SIU PAYER whose telephone number is (571)272-4511. The examiner can normally be reached on Monday - Friday from 7:00 AM to 3:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley, can be reached at telephone number 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/HWEI-SIU C PAYER/ Primary Examiner, Art Unit 3724
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