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
Claims 1-16 are objected to because of the following informalities: The claim(s) are narrative in form and replete with vague language. The structure which goes to make up the device must be clear and positively define the functional relationship of a limitation or specify conditions. The structure must be organized and correlated in such a manner as to present a complete operative device. For example, the phrases: “sufficiently” (claim 1), “dynamically” (claim 1), “about” (claim 7), “are positioned” (claim 2). Additionally, the phrase: "to be" (claim 9) and “can be” are interpreted as vague. The inclusion of such subjective expressions introduces ambiguity by suggesting that the claimed element(s) to which they relate, are optional. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited. Since claims 3-6, 8 and 10-16 are in the chain of dependency to claims 1 and 9, they too are subjected to the same objection. Appropriate correction is required.
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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2,4-9,12-15 of U.S. Patent No.12,222,736. Although the claims at issue are not identical, they are not patentably distinct from each other because although the claims at issue are not identical, they are not patentably distinct from each other because when an applicant has received a patent for a species or a more specific embodiment, he/she is not entitled to a patent for the generic or broader invention without maintaining common ownership and ensuring that the term of the latter issued patent will expire at the end of the original term of the earlier issued patent. A more specific claim “anticipates” the broader claim. In an obviousness-type double patenting analysis where the claim being examined is merely broader than the claim patented before. The patented claim “anticipates” the application claim. Thus, the two claims are not patentably distinct. Furthermore:
i. the subject matter of claim 9 is further disclosed by claim 1 of the ‘736 patent.
ii. The subject matter of claim 10 is further disclosed by claim 2 of the ‘736 patent.
iii. The subject matter of claim 11 is further disclosed by claim 4 of the ‘736 patent.
iv. The subject matter of claim 12 is further disclosed by claim 5 of the ‘736 patent.
v. The subject matter of claim 13 is further disclosed by claim 6 of the ‘736 patent.
vi. The subject matter of claim 14 is further disclosed by claim 7 of the ‘736 patent.
vii. The subject matter of claim 15 is further disclosed by claim 8 of the ‘736 patent.
viii. The subject matter of claim 16 is further disclosed by claim 9 of the ‘736 patent.
Allowable Subject Matter
Claims 1-8 are allowed.
Conclusion
The prior art made of record (see USPTO Form 892) and not relied upon is considered pertinent to applicant's disclosure. More specifically, US 12, 241, 240 B2 to Subramanian et al is directed to the state of the art as a teaching of a touchless faucet having a solenoid valve assembly 140, an inlet 167, a fluid channel 169 aligned with fluid passage 162 in a faucet housing 112 (fig 3A).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORI BAKER whose telephone number is (571)272-4971. The examiner can normally be reached Monday thru Friday: 9 am - 6 pm CST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached 571-270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LORI L BAKER/Primary Examiner, Art Unit 3754
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