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 .
Drawings
The drawings are objected to because numeral 1833C in Figure 13B should be changed to 1383C.
The drawings are objected to because Figure 24B has “???” in the center of numeral 2420. What are the question marks supposed to signify?
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 2, and 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4-20 of U.S. Patent No. 12,188,547. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘547 discloses all of the claim limitations of current claim 1, but claim 1 of ‘547 discloses “at least one engagement device” whereas claim 1 of ‘547 discloses “a plurality of engagement devices”. The plurality of engagement devices of claim 1 of ‘547 are fully within the genus of “at least one engagement device” of current claim 1.
Claim 2 of ‘547 discloses all of the claim limitations of current claim 2.
Claim 4 of ‘547 discloses all of the claim limitations of current claim 4.
Claim 7 of ‘547 discloses all of the claim limitations of current claim 5.
Claim 6 of ‘547 discloses all of the claim limitations of current claim 6.
Claim 8 of ‘547 discloses all of the claim limitations of current claim 7.
Claim 9 of ‘547 discloses all of the claim limitations of current claim 8.
Claim 10 of ‘547 discloses all of the claim limitations of current claim 9.
Claim 11 of ‘547 discloses all of the claim limitations of current claim 10.
Claim 12 of ‘547 discloses all of the claim limitations of current claim 11.
Claim 13 of ‘547 discloses all of the claim limitations of current claim 12.
Claim 14 of ‘547 discloses all of the claim limitations of current claim 13.
Claim 15 of ‘547 discloses all of the claim limitations of current claim 14.
Claim 4 of ‘547 discloses all of the claim limitations of current claim 15.
Claim 16 of ‘547 discloses all of the claim limitations of current claim 16.
Claim 5 of ‘547 discloses all of the claim limitations of current claim 17.
Claim 17 of ‘547 discloses all of the claim limitations of current claim 18.
Claim 18 of ‘547 discloses all of the claim limitations of current claim 19.
Claim 19 of ‘547 discloses all of the claim limitations of current claim 20.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 3 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12, 188, 547. This is a statutory double patenting rejection.
Claim 1 of ‘547 discloses all of the claim limitations of claim 3 of the current application. Claim 1 of ‘547 includes the limitation of “a plurality of engagement devices” which is a part of claim 3. Claims 1 and 3 of the current application are identical to claim 1 of ‘547.
Claim Objections
Claims 1, 15, and 17 are objected to because of the following informalities:
Claim 1, line 4, recites “a cup gear removable coupled to a flexible laminate” which is grammatically incorrect and should be changed to --a cup gear removably coupled to a flexible laminate--.
Claim 15, line 1, recites “wherein the engagement device” which should be changed to --wherein the at least one engagement device-- to maintain consistent claim terminology.
Claim 17, line 1, recites “wherein the the engagement device” which should be changed to --wherein the at least one engagement device-- to maintain consistent claim terminology and to correct a grammar issue.
Appropriate correction is required.
Allowable Subject Matter
The allowability of the claims will be determined based on the filing of a proper terminal disclaimer or an amendment which overcomes the double patenting rejections and the 35 U.S.C. 101 rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM D ROGERS whose telephone number is (571)272-6561. The examiner can normally be reached Monday through Friday from 6AM-2:00PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at (571)272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM D ROGERS/ Primary Examiner, Art Unit 3617