DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
2. 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.
The following claims of the instant application are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 8-15, and 18-22 of U.S. Patent No. 12,197,233:
Claims 1-3 of the instant application are not patently distinct from claim 1 of the patent.
Claim 4 of the instant application is not patently distinct from claims 1-4 of the patent.
Claim 6 of the instant application is not patently distinct from claim 5 of the patent.
Claim 7 of the instant application is not patently distinct from claim 8 of the patent.
Claim 8 of the instant application is not patently distinct from claims 9 and 10 of the patent.
Claim 9 of the instant application is not patently distinct from claims 11 and 12 of the patent.
Claim 10 of the instant application is not patently distinct from claim 13 of the patent.
Claim 11 of the instant application is not patently distinct from claim 14 of the patent.
Claims 12-14 of the instant application are not patently distinct from claim 15 of the patent.
Claim 15 of the instant application is not patently distinct from claim 18 of the patent.
Claim 16 of the instant application is not patently distinct from claims 19 and 20 of the patent.
Claim 17 of the instant application is not patently distinct from claims 21 and 22 of the patent.
Prior Art
3. None of the prior art cited could anticipate, or be combined to render obvious the claimed invention of claims 1-17. Upon resolution of the above cited issues, the claims will be in condition for allowance.
Claims Allowable - Reasons for Allowance
This statement is not intended to necessarily state all the reasons for allowance or all the details why the claims are allowed and has not been written to specifically or impliedly state that all the reasons for allowance are set forth (MPEP 1302.14).
4. The following is an examiner’s statement of reasons for allowance:
Independent claim 18 is allowed. None of the prior art cited could anticipate, or be combined to render obvious determining based on the received trace gas data whether a gas leak is present in the received survey site and a rate of the gas leak if present in the survey site, wherein the continuous surface is at least one of a fully closed surface and a semi-closed surface.
Subsequently, claims 19 and 20 are also now allowable due to dependence on independent claim 18.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Citation of Relevant Prior Art
5. The prior art made of record considered most pertinent to applicant's disclosure.
Dittberner (US 2018/0292374)
Kasten (US 10,753,864)
Campbell (US 2020/0135036)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M DAGER whose telephone number is (571)270-1332. The examiner can normally be reached on M-F 0830-1730.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Ortiz can be reached on 571-272-1206. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JONATHAN M DAGER/Primary Examiner, Art Unit 3663
Prosecution Insights