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 20-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. US 12,391,314 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim 20 of the instant case and claim 20 of U.S. Patent No. US 12,391,314 B2 claim “An off-road vehicle comprising: a frame comprising: a front frame portion located toward a front end of the off-road vehicle; a rear frame portion located toward a rear end of the off-road vehicle; and a middle frame portion arranged between the front frame portion and the rear frame portion, wherein the middle frame portion comprises: horizontal beams comprising at least a first cross beam and a second cross beam, the first cross beam and the second cross beam defining a plane S; and at least one sloping longitudinal beam running between the horizontal beams, the at least one sloping longitudinal beam comprising a first rod and a second rod, one end of the first rod being connected to the first cross beam, and the other end of the first rod extending upward and toward the second cross beam; one end of the second rod being connected to the second cross beam, and the other end of the second rod extending upward toward the first cross beam and being connected to the first rod; wherein an angle Al between the first rod and the plane S is in the range from 50 to 150; and wherein an angle A2 between the second rod and the plane S is in the range from 50 to 150°”.
Claims 29-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. US 12,391,314 B2 in view of Madler et al (US Patent US 3,917,306 A). Both claim 29 of the instant case and claim 20 of U.S. Patent No. US 12,391,314 B2 claim “An off-road vehicle comprising: a frame comprising: a front frame portion located toward a front end of the off-road vehicle; a rear frame portion located toward a rear end of the off-road vehicle; and a middle frame portion arranged between the front frame portion and the rear frame portion, wherein the middle frame portion comprises: horizontal beams comprising at least a first cross beam and a second cross beam, the first cross beam and the second cross beam defining a plane S; and at least one sloping longitudinal beam running between the horizontal beams, the at least one sloping longitudinal beam comprising a first rod and a second rod, one end of the first rod being connected to the first cross beam, and the other end of the first rod extending upward and toward the second cross beam; one end of the second rod being connected to the second cross beam, and the other end of the second rod extending upward toward the first cross beam and being connected to the first rod; wherein an angle Al between the first rod and the plane S is in the range from 50 to 150; and wherein an angle A2 between the second rod and the plane S is in the range from 50 to 150°”
Claim 20 of U.S. Patent No. US 12,391,314 B2 does not teach a bottom of the middle frame portion protrudes upwards.
Madler teaches a motor vehicle comprising a frame (22) wherein a bottom of the middle frame portion protrudes upwards (seen in Figs 2 and 3).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the off road vehicle claimed in Claim 20 of U.S. Patent No. US 12,391,314 B2 with the bottom of the middle frame portion protruding upwards taught in Madler with a reasonable expectation of success because it would allow for clearance between the vehicle and the ground when traversing across difficult terrain.
Claims 34-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. US 12,391,314 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim 34 of the instant case and claim 20 of U.S. Patent No. US 12,391,314 B2 claim “An off-road vehicle comprising: a frame comprising: a front frame portion located toward a front end of the off-road vehicle; a rear frame portion located toward a rear end of the off-road vehicle; and a middle frame portion arranged between the front frame portion and the rear frame portion, wherein the middle frame portion comprises: horizontal beams comprising at least a first cross beam and a second cross beam, the first cross beam and the second cross beam defining a plane S; and at least one sloping longitudinal beam running between the horizontal beams, the at least one sloping longitudinal beam comprising a first rod and a second rod, one end of the first rod being connected to the first cross beam, and the other end of the first rod extending upward and toward the second cross beam; one end of the second rod being connected to the second cross beam, and the other end of the second rod extending upward toward the first cross beam and being connected to the first rod; wherein an angle Al between the first rod and the plane S is greater than an angle A2 between the second rod and the plane S.”
Conclusion
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/MATTHEW JOSEPH GANCI/Examiner, Art Unit 3614
/PAUL N DICKSON/Supervisory Patent Examiner, Art Unit 3614