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 .
Response to Arguments
Applicant’s arguments amended claims with respect to pending application have been fully considered and are persuasive. The prior art of rejection has been withdrawn.
Regarding the non-statutory double patenting rejection maintained until a proper terminal disclaimer is executed.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
As to claim 1, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 1 of US 12,192,576 B2 respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the current application's claim and patented claim 1 respectively directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 2, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 1 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of the current application's claim and patented claim 1 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 3, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 5-6 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the current application's claim and patented claim 5-6 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 4, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 2 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 4 of the current application's claim and patented claim 2 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 5, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 1 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the current application's claim and patented claim 1 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 6, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 9 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 6 of the current application's claim and patented claim 9 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 7, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 8 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the current application's claim and patented claim 8 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 8, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 7 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the current application's claim and patented claim 7 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 9, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 3 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of the current application's claim and patented claim 3 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 10, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 4 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of the current application's claim and patented claim 4 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 11, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 11 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 11 of the current application's claim and patented claim 11 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 12, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 11 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the current application's claim and patented claim 11 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 13, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 15-16 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the current application's claim and patented claim 15-16 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 14, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 12 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of the current application's claim and patented claim 12 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 15, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 11 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of the current application's claim and patented claim 11 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 16, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 19 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the current application's claim and patented claim 19 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 17, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 18 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of the current application's claim and patented claim 18 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 18, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 17 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of the current application's claim and patented claim 17 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 19, is rejected on the ground of non-statutory double patenting as being unpalatable over claim 13 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 of the current application's claim and patented claim 13 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
As to claim 20, are rejected on the ground of non-statutory double patenting as being unpalatable over claim 14 of US 12,192,576 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 of the current application's claim and patented claim 14 directed to the same invention with a different in scope which is a broader in scope than the patented claim.
Allowable Subject Matter
Claims 1-20 are allowed, if the non-statutory obvious type of double patenting rejection is overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20160246351-A1 to Joseph et al.
US 2015/0346987-A1 to Ren et al.
US 2021/0092494 -A1 to Mao et al.
US 2020/0168176-A1 to CHEN et al.
US 2014/0136727-A1 to Lim et al.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MULUGETA MENGESHA whose telephone number is (469)295-9212. The examiner can normally be reached Monday-Friday 9:00AM-5:30PM ET.
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, Benjamin Bruckart can be reached at 571-272-3982. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MULUGETA MENGESHA
Primary Examiner
Art Unit 2424
/Mulugeta Mengesha/ Primary Examiner, Art Unit 2424
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