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.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12218416, according to the listing of claims filed 9/17/2024 in application 18/387168. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘416 recites all limitations of claim 2 but the second, third, and fourth sides and that the plurality of apertures are arranged on the third side. However, claim 7 of ‘416 depends upon claim 6 of ‘416, which depends upon claim 1 of ‘416, and claim 7 recites that the housing has a rectangular or square shape and claim 6 recites that the apertures are on an orthogonal surface of the housing.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of U.S. Patent No. 11811135, according to the listing of claims filed 4/24/2025 in application 17/098626. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of ‘135 recites all limitations of claim 2 but the second, third, and fourth sides and that the plurality of apertures are arranged on the third side. However, claim 25 of ‘416 depends upon claim 24 of ‘416, which depends upon claim 21 of ‘416, and claim 25 recites that the housing is rectangular or square and claim 24 recites that the apertures are on a side of the housing.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10840589, according to the listing of claims filed 10/05/2020 in application 15/689349. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘589 recites all limitations of claim 2 but the second, third, and fourth sides and that the plurality of apertures are arranged on the third side. However, claim 5, which depends upon claim 1 of ‘589 recites that the housing has a rectangular or square shape. In addition, claim 4 of ‘589 recites that the apertures are on a single side of the housing. Thus, it would have been obvious to modify the device of claim 5 to locate the apertures on a single side of the rectangular or square housing. To do so would have been nothing more than the simple substitution of one known mounting surface for another, to produce predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRAHAM P SMITH whose telephone number is (571)270-1568. The examiner can normally be reached M-F 10am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dameon Levi can be reached at 571-272-2105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRAHAM P SMITH/Primary Examiner, Art Unit 2845
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