DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-3 and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206. in view of Suk (US 6,152,342 A).
Claims 1 and 4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 teach the limitations except for the third side and the fourth side each comprise a curved or tapered shape.
Suk demonstrates (shown below in Annotated Fig. 5) a similar device including a connector having a first side and the second side define an inner length (I); the connector plate defines an outer length (O) measured parallel to the inner length; the outer length is greater than the inner length.
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It would have been obvious to one having ordinary skill in the art before the invention was made to take device of claims 1 and 4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 and have a first side and the second side define an inner length, the connector plate defines an outer length measured parallel to the inner length; the outer length is greater than the inner length because such a change would require a mere change in shape of a component. There is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Claims 4-5 and 14-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 11-12 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4 and 11-12 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A) teach all of the claims of claims 4-5 and 14-15 of the application.
Claims 6-7 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 6-7 of U.S. Patent No. 12,185,821 and 11,771,206, claims 1, 4-6 of 11,957,233, claims 1, 4 and 8-9 of 11,871,834 view of Suk (US 6,152,342 A). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4 and 6-7 of U.S. Patent No. 12,185,821 and 11,771,206, claims 1, 4-6 of 11,957,233, claims 1, 4 and 8-9 of 11,871,834 in view of Suk (US 6,152,342 A) teach all of the claims of claims 6-7 and 16-17 of the application.
Claims 7 and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 and 11-12 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4 and 11-12 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A) teach all of the claims of claims 7 and 17 of the application.
Claims 8 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, and 8-10 of U.S. Patent No. 12,185,821 and 11,771,206, claims 1-4, 5, and 7-9 of 11,957,233, claims 1-4, 8, and 10-12 of 11,871,834 in view of Suk (US 6,152,342 A). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A) teach all of the claims of claims 8 and 18 of the application.
Claims 9 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5 of U.S. Patent No. 12,185,821, 11,871,834, 11,771,206, claims 1, 4 and 10 of 11,957,233 in view of Suk (US 6,152,342 A). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4-5 of U.S. Patent No. 12,185,821, 11,871,834, 11,771,206, claims 1, 4 and 10 of 11,957,233 in view of Suk (US 6,152,342 A) teach all of the claims of claims 9 and 19 of the application.
Claims 10 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A) as noted above, and further in view of Suk (US 6,152,342 A).
Claims 1 and 4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A) teach the limitations except for the third side and the fourth side each comprise a curved or tapered shape.
Suk further demonstrates a similar device including a connector having curved sides (Fig. 5).
It would have been obvious to one having ordinary skill in the art before the invention was made to take device of claims 1 and 4 of U.S. Patent No. 12,185,821, 11,957,233, 11,871,834 and 11,771,206 in view of Suk (US 6,152,342 A) and have the third side and fourth side comprise a curved shape because such a change would require a mere change in shape of a component. There is no invention in merely changing the shape or form of an article without changing its function except in a design patent. Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T THEIS whose telephone number is 571-270-5700. The examiner can normally be reached 7:00 am - 5:00 pm Monday - Thursday.
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/M.T.T./ Examiner, Art Unit 3734
/NATHAN J NEWHOUSE/ Supervisory Patent Examiner, Art Unit 3734
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