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 .
Claim Objections
Claim 19 recites “first and second lateral arms coupled to first and second proximal arms.” The dependent claims later refer to distal and proximal arms. It is best understood that claim 19 should recite --first and second distal arms coupled to first and second proximal arms-- in order to maintain consistency in claim terminology.
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 19-38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,195,975. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same subject matter in broader terms. All of the limitations of pending claims 19-38 are recited all the in patented claims 1-20.
Claims 19, 22-24, 26, 30, 32, 34-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5 of U.S. Patent No. 11,428,011. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same subject matter in broader terms.
Pending claim 19 corresponds to patented claim 1+4+5, as indicated below.
A lateral arm awning assembly comprising (“A lateral arm awning assembly comprising”):
first and second articulating arms having first and second ends (“first and second articulating arms having first and second ends”),
said first ends of said articulating arms being mounted to a support surface (“said first ends of said articulating arms being mounted upon assembly to a support surface”),
the first ends each comprising separate mounting structures for forming a first connection with said first and second articulating arms (“the first ends each comprising separate pivoting mounting structures for forming a pivotal connection with said first and second articulating arms”),
said first and second articulating arms having first and second lateral arms coupled to first and second proximal arms by first and second elbows, respectively (“said first and second articulating arms comprise first and second proximal arms coupled to first and second distal arms, respectively via first and second arm elbows”; the lateral arms are equivalent to the distal arms of patented claim 4);
a roller tube having spaced lateral ends that provide a second connection to said first and second articulating arms at said second ends (“a roller tube coupled to a second pivotal connection to said second ends of said first and second articulating arms”; claim 1 previously requires the arms mounted at “separate lateral locations” thus are laterally spaced and with the roller tube connected to the second ends of the arms, the roller tube thus has lateral ends),
said first and second articulating arms extending by moving said first and second elbows away from each other (“an actuator extends the first and second articulating arms away from the mounting surface by pivoting the first and second proximal arms away from the first and second distal arms about the first and second arm elbows to move the roller tube from the furled to the unfurled position”),
wherein the first and second articulating arms are solely providing support for the roller tube in the extended position (said lateral arm awning assembly being supporting solely by said first and second articulating arms); and
said roller tube supporting a canopy coupled to a roller shaft (“said roller tube…a canopy”; it is understood that a roller tube is a roller shaft).
Pending claims 22-24, 26 correspond to language of patented claim 1. In a similar manner as pending claim 19, pending claims 30, 32, 34-37 correspond to claims 1+4+5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Johnnie A. Shablack whose telephone number is (571)270-5344. The examiner can normally be reached Mon-Thu 6am-3pm EST, alternate Friday.
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/Johnnie A. Shablack/Primary Examiner, Art Unit 3634
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