DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to invent provisions. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
The amendments filed on 4/2/2026 have been entered.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,243,671 B2 (“US ‘671”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claim 6 of US ‘671. That is, claim 1 falls entirely within the scope of claim 6 of US ‘671 and is thereby anticipated by claim 6 of US ‘671.
Claims 2-3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,243,671 B2 (“US ‘671”) in view of Liu (U.S. P.G. Publication No. 2012/0170991 A1; “Liu”). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the limitations in claim 2-3 in the instant application are generic or equivalent to the scope of limitations in claim 6 in U.S. ‘671 except for the recitation regarding a shaft for engaging the RVDT wherein the shaft extends in a direction parallel to the bore. Liu teaches a shaft (500) for engaging the RVDT (intended use statement e.g. makes optional but does not require an RVDT; see MPEP § 2111.04) wherein the shaft extends in a direction parallel to the bore (FIG. 4 depicts e.g. an outer surface portion of the shaft extending vertically i.e. in a direction parallel wo the bore 1311) for transmitting rotational motion (¶ 4). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claim invention to modify claim 6 of US ‘671, with a reasonable expectation of success, to include a shaft for engaging the RVDT wherein the shaft extends in a direction parallel to the bore, as taught by Liu, for transmitting rotational motion.
Claims 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,243,671 B2 (“US ‘671”) in view of Liu and Applicant’s Admitted Prior art (see at least paragraph [0032] in the instant specification; “AAPA”). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the limitations in claim 4 in the instant application are generic or equivalent to the scope of limitations in claim 6 in U.S. ‘671 in view of Liu, see above, except for the recitation regarding the shaft is mounted eccentrically. AAPA teaches a shaft mounted eccentrically to help generate torque necessary to rotate an input of a particular application (¶ [0032], “As is known, connecting the RVDT to the reductor shaft 5 eccentrically helps to generate the torque necessary to rotate the RVDT input”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, Liu such that the shaft is mounted eccentrically, as taught by AAPA, to help generate torque necessary to rotate an input of a particular application.
Claims 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,243,671 B2 (“US ‘671”) in view of Liu and Kelley (U.S. Patent No. 3,023,035 A; “Kelley”). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the limitations in claim 5 in the instant application are generic or equivalent to the scope of limitations in claim 6 in U.S. ‘671 in view of Liu, see above, except for the recitation regarding that the inner wall is non-threaded. Kelley teaches an inner wall (17 in FIG. 2; 37 in FIG. 3) that is non-threaded (FIG. 1-3 depict inner wall 17 as having no threads; col. 2, ll. 21-30, “It will be 15 apparent that the screw heads 24 are accessible for manipulation and that, when said screw heads are rotated in a direction to cause the screw shanks 23 to penetrate more deeply into their sockets 21, the collar 16 will be drawn toward the shoulder 14, whereby the frusto-conical surface 18 will eccentrically engage the frusto-conical surface 15 and, as the screws are tightened, the surfaces 15 and 18 will cooperate to press a portion of the internal wall of the bore 12 forcibly into frictional engagement with the shaft 10 and to press a diametrically-opposite portion 25 of the internal wall of the bore 17 forcibly into frictional engagement with the shaft 10.” the term “frictional engagement” indicating engagement via friction only i.e. no threads) as an effective means to secure the body to the shaft (col. 2, ll. 30-36) without the use of special attachments (col. 1, ll. 9-18). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, Liu such that the inner wall is non-threaded, as taught by Kelley, as an effective means to secure the body to the shaft without the use of special attachments.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,243,671 B2 (“US ‘671”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 is generic to all that is recited in claim 7 of US ‘671. That is, claim 8 falls entirely within the scope of claim 7 of US ‘671 and is thereby anticipated by claim 7 of US ‘671.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,243,671 B2 (“US ‘671”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 is generic to all that is recited in claim 8 of US ‘671. That is, claim 9 falls entirely within the scope of claim 8 of US ‘671 and is thereby anticipated by claim 8 of US ‘671.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,243,671 B2 (“US ‘671”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 is generic to all that is recited in claim 9 of US ‘671. That is, claim 10 falls entirely within the scope of claim 9 of US ‘671 and is thereby anticipated by claim 9 of US ‘671.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,243,671 B2 (“US ‘671”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 is generic to all that is recited in claim 10 of US ‘671. That is, claim 11 falls entirely within the scope of claim 10 of US ‘671 and is thereby anticipated by claim 10 of US ‘671.
Response to Arguments
Applicant’s amendments to the claims filed 4/2/2026 have been fully considered and have required a new grounds of rejection is made in view of US ‘671, as described supra.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL D YABUT whose telephone number is (571)270-5526. The examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor John Olszewski can be reached on (571) 272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL D YABUT/Primary Examiner, Art Unit 3656
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