DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-24, 26, 27, and 30-32 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Miller (USP 2,201,372).
In regards to claim 21, Miller discloses a press fitting for an electrical conduit comprising:
a fitting body (12) having first and second open ends, and an interior surface defining a passage (central bore) adapted to receive a piece of the electrical conduit therein, the fitting body including a press-connection section (16) that is deformable radially inward during a press connection process and a conduit retainer section (15) defining an inner dimension that is smaller than an inner dimension of the press-connection section;
a conduit retainer (26) in the passage at the conduit retainer section of the fitting body, the conduit retainer configured to releasably grip and removably retain the piece of electrical conduit in the fitting body before the press-connection section is deformed radially inward during the press connection process (see at least page 2, right column, lines 24-28 which discloses a temporary connection);
wherein the conduit retainer includes at least one detent (25) adapted to engage the piece of electrical conduit in the fitting body to releasably grip and removably retain the piece of electrical conduit in the fitting body.
In regards to claim 22, Miller further discloses the at least one detent is resiliently deflectable upon engagement with the piece of electrical conduit in the fitting body (shown in fig. 2).
In regards to claim 23, Miller further discloses the at least one detent includes a plurality of detents (shown in fig. 2).
In regards to claim 24, Miller further discloses the conduit retainer has a generally cylindrical shape (shown in fig.2) having opposite first and second open longitudinal ends, a longitudinal socket (central bore) for receiving the piece of electrical conduit, and an axis (central axis) extending through the longitudinal socket between the first and second open longitudinal ends.
In regards to claim 26, Miller further discloses the conduit retainer comprises an annular body (shown in fig. 2).
In regards to claim 27, Miller further discloses the conduit retainer includes a plurality of conduit retainers (each ring 26).
In regards to claim 30, Miller further discloses the conduit retainer comprises two conduit retainers arranged as mirror images about a central transverse plane of the fitting body (shown in fig. 1).
In regards to claim 31, Miller further discloses at least a portion of the conduit retainer section of the fitting body has a cross-sectional diameter that tapers (see at “28”) in a direction away from the press-connection section.
In regards to claim 32, Miller further discloses the conduit retainer section of the fitting body has a uniform section (see flat portion between “12” and “15”) adjacent the press-connection section and having a uniform cross-sectional diameter, said portion of the conduit retainer section comprising a tapering section (15) having a cross-sectional diameter that tapers.
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 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,652,339 (reference patent). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 21-36 are generic to all that is recited in claims 1-15 of the reference patent. In other words, claims 1-15 of the reference patent fully encompasses the subject matter of claims 21-36. Thus, the invention of claims 1-15 of the reference application is in effect a “species” of the “generic” invention of claims 21-36. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 21-36 are anticipated by claims 1-15 of the reference patent, claims 21-36 are not patentably distinct from claims 1-15, regardless of any additional subject matter presented in claims 1-15.
Allowable Subject Matter
Claims 25, 28, 29, and 33-36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and if the double patenting rejection is overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY T DRAGICEVICH whose telephone number is (571)270-0505. The examiner can normally be reached Monday-Friday 8:00 - 4:30 EST.
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/ZACHARY T DRAGICEVICH/Primary Examiner, Art Unit 3679 02/11/2026