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 .
This action is in response to the amendment filed 1/29/2026. Claims 2-21 are pending while claim 1 is canceled.
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 2-5, 7-12 and 14-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,228,323 (‘323). Although the claims at issue are not identical, they are not patentably distinct from each other because the claim the same invention namely a method for controlling a refrigerator, the method comprising a water supply step of supplying water to an ice chamber formed in a tray; an ice making step of generating ice in the ice chamber using cold air; a first ice removal step of moving the tray to an ice removal position when the ice making has been completed, thereby removing the ice from the ice chamber; a first ice-full state determination step of determining whether an ice bin storing therein the ice removed from the ice chamber is full of ices when the first ice removal step has been completed; and a second ice removal step of moving the tray to the ice removal position in response to that the ice bin is not yet full of ices based on a determination result in the first ice-full state determination step (claim 1).
In reference to claim 3, ‘323 claims the method as explained in the rejection of claim 1 above, and ‘323 additionally claims in response to that the ice bin is full of ices based on a determination result in the first ice-full state determination step, a first waiting step of maintaining the tray at a waiting position without moving the tray to the ice removal position (claim 3).
In reference to claim 4, ‘323 claims the method as explained in the rejection of claim 3 above, and ‘323 additionally claims, after the first ice removal step has been performed, a second waiting step of moving the tray to the waiting position and maintaining the tray at the waiting position for a set time duration, wherein the first ice-full state determination step is performed after the second waiting step has been performed (claim 7).
In reference to claim 5, ‘323 claims the method as explained in the rejection of claim 2 above, and ‘323 additionally claims wherein after the second ice removal step has been performed, the water supply step is performed again (claim 5).
In reference to claim 7, ‘323 claims the method as explained in the rejection of claim 2 above, and ‘323 additionally claims when the ice making has been completed, and before performing the first ice removal step, a second ice-full state determination step of determining whether the ice bin is full of ices, wherein in response to that the ice bin is not yet full of ices based on a determination result in the second ice-full state determination step, the first ice removal step is performed (claim 1).
In reference to claim 8, ‘323 claims the method as explained in the rejection of claim 2 above, and ‘323 additionally claims wherein the first ice-full state determination step is performed while the tray is moving to the ice removal position (claim 1).
In reference to claim 9, ‘323 claims the method as explained in the rejection of claim 8 above, and ‘323 additionally claims wherein the first ice-full state determination step includes rotating an ice-full state detection lever in a same direction as a rotation direction of the tray (claim 14).
In reference to claims 10-12 and 14-21, they claim the limitations similar to claims 1-5 and 7-9; thus, said claims are rejected in the same manner, as described in detail above.
Claims 6 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of ‘323.
In reference to claim 6, ‘323 claims the method as explained in the rejection of claim 2 above, but does not claim wherein the first ice removal step includes operating a heater to heat the tray before moving the tray to the ice removal position.
However, the Examiner takes the Official Notice of facts not in the record by relying on “common knowledge” of various ice storing and dispensing systems having a heater to heat the tray prior to ejecting ice from said tray to be obvious in order to prevent ice from sticking to the walls of the tray.
In reference to claim 13, ‘323 claims the refrigerator as explained in the rejection of claim 10 above, and ‘323 does not claim wherein the ice maker further includes a heater configured to heat the tray, and wherein the controller is further configured to operate the heater before moving the tray to the ice removal position.
However, the Examiner takes the Official Notice of facts not in the record by relying on “common knowledge” of various ice storing and dispensing systems having a heater to heat the tray prior to ejecting ice from said tray to be obvious in order to prevent ice from sticking to the walls of the tray.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See attached PTO-892 for relevant prior art.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JD Fletcher can be reached at 5712705054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FILIP ZEC/Primary Examiner, Art Unit 3763
9/30/2026
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