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 .
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. US 12,230,112 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the same inventive scope has been claimed as shown in the table listed below:
Application 19/051,024
1. An article surveillance tag comprising: a housing; a switch including a first contact coupled with the housing and a second contact coupled with an article, the second contact is movable relative to the first contact; and a processing circuit to detect electrical disconnection between the first contact and the second contact, and trigger an alarm upon detecting the electrical disconnection.
US Patent #12,230,112
1.An article surveillance tag comprising: a housing; a switch including a first contact coupled with the housing and a second contact configured to be coupled with an article, the second contact is movable relative to the first contact; and a processing circuit configured to detect an electrical connection when the first contact and the second contact touch, and further configured to detect an electrical disconnection between the first contact and the second contact when the first contact and the second contact do not touch, and trigger an alarm upon detecting the electrical disconnection.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Nagelski et al. (Pub# US 2007/0152836 A1), and further in view of Woods (Pub# US20100006408 A1).
Consider claim 1, Nagelski et al. teaches an article surveillance tag comprising: a housing (14, Fig. 3); a switch (50, Fig. 4) including a first contact (40, Fig. 4) coupled with the housing (14, Fig. 3) and a second contact (42, Fig. 4) coupled with an article (12, Fig. 1) [0019]; and a processing circuit (36, Fig. 4) to detect electrical disconnection between the first contact and the second contact, and trigger an alarm upon detecting the electrical disconnection [0018].
Nagelski et al. does not teach the second contact is movable relative to the first contact.
In the same field of endeavor, Woods teaches the second contact is movable relative to the first contact [0008] for the benefit of providing predictable and reliable detection of tempering by relative movement and resulting electrical disconnection.
Therefore, it would have been obvious to a person or ordinary skill in the art before the effective filing date of the claimed invention to include the second contact is movable relative to the first contact as shown in Woods, in Nagelski et al. device for the benefit of providing predictable and reliable detection of tempering by relative movement and resulting electrical disconnection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK K WANG whose telephone number is (571)272-1938. The examiner can normally be reached M-F 9AM - 5PM.
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/JACK K WANG/Primary Examiner, Art Unit 2686
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