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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim (1 and 4) of U.S. Patent No. (12169989). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter and limitations are similar; thus, it is a variation in wordings [i.e.:
application S/N 18979049:
claim 1: A job site security system comprising: a device including a first controller operatively connected to a first wireless transceiver; a wireless communication node including a second controller and a second wireless transceiver, the wireless communication node corresponding to an operable location; and a database configured to: receive a first input registering the device with the database, receive a second input registering the wireless communication node with the database, and receive a third input assigning the device to the wireless communication node.
patent # 12169989:
claim 1: A job site security system comprising: a device including a first controller operatively connected to a first wireless transceiver, the device assigned to an operable location; and a wireless communication node including a second controller and a second wireless transceiver, the wireless communication node corresponding to the operable location, the second controller configured to: transmit an unlocking signal to the device in response to the device being in wireless communication with the wireless communication node.
Claim 4: The job site security system of claim 1, further comprising: a second device including a third controller operatively connected to a third wireless transceiver, the second device assigned to the operable location, wherein the second controller is configured to: transmit the unlocking signal to the device in response to both the device and the second device being in wireless communication with the wireless communication node.] therefore, it is a variation of wording.
Although some limitations are omitted/added in the claims. It would been obvious to do; since, it has been held that an omission/addition of an element and its function in a combination where the remaining elements perform the same functions as previous involves only ordinary routine skill of the artisan in the art. In re Karlson, 136 USPQ 184 (CCPA 1963). Hence, an Official notice is taken that it would have been obvious to an artisan in art at the time of the invention was made to add/omit an element and its function or modifies the element and its function (availability of parts) in a combination where the remaining elements perform the same functions as previously.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. Wong whose telephone number is (571) 272-7566.
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/K. WONG/Primary Examiner, Art Unit 2689