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 .
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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 4, 5, 6, 7, 8, 9, 10, 11, 12, and 13, respectively, of U.S. Patent No. 12,198,959. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously claimed and patented subject matter of the corresponding claims.
Claims 13 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 8 of U.S. Patent No. 12,198,959. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed subject matter may be obviously derived from the combination of the previously claimed and patented structure of claims 6 and 8.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 8 of U.S. Patent No. 12,198,959 and further in view of claim 4. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed subject matter may be obviously derived from the combination of the previously claimed and patented structure of claims 6, 8 and 4.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 8 of U.S. Patent No. 12,198,959 and further in view of claim 7. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed subject matter may be obviously derived from the combination of the previously claimed and patented structure of claims 6, 8 and 7.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 9 (by its dependency from claim 8) of U.S. Patent No. 12,198,959. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed subject matter may be obviously derived from the combination of the previously claimed structure of claims 6, 8 and 9.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 10 (by its dependency from claim 8) of U.S. Patent No. 12,198,959. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed subject matter may be obviously derived from the combination of the previously claimed structure of claims 6, 8 and 10.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,198,959. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously claimed and patented subject matter of the corresponding claims.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,198,959 and further in view of claim 13. Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed subject matter may be obviously derived from the combination of the previously claimed and patented structure of claims 12 and 13.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Orlando Aviles, can be reached on (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG