DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-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 (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.
Priority
The Office notes that the effective filing date of the current claims is 10/30/2020, the filing date of 63/108154. This is because the parent applications 13/746276, 14/852539, 16253110 fail to disclose a button extending through the top cover (claims 1-7) and a pusher with arms extending in a first direction (claims 1-7).
Claim Objections
Claim 1 is objected to because of the following informalities: line 16 recites (has and two arms). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites the limitation "the pusher" in line 11. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, the limitation will be interpreted as “a pusher”. Appropriate correction is required.
Claim 6 recites “the pushing assembly moving from the first position to the second position” in line 16. The antecedent basis for the first position and the second position comes from “pusher has arms…the arms engaging a first slot…in a first position and a second slot…in a second position. The pusher and pushing assembly are claimed as separate elements rendering the scope of “the pushing assembly moving from the first position to the second position”. For examination purposes, the limitation will be interpreted as “the pusher moving from the first position to the second position”. Appropriate correction is required.
Claim 7 recites “the pushing assembly comprises a pushing rod, a pusher fixedly attached to the pushing rod and the button”. Since a pusher is already recited in claim 6, it is unclear if this is the same pusher or a different pusher. For examination purposes, the limitation will be interpreted as “the pushing assembly comprises a pushing rod, the pusher fixedly attached to the pushing rod and the button”. 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 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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9, and 10 of U.S. Patent No. 12,239,302 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims of the instant application are claimed by the claims of 12,239,302 as outlined below:
Claims of 19/068516
Claims of 12,239,302
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1
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2
3
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5
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10
Allowable Subject Matter
Claims 1-7 would be allowable if rewritten or amended to overcome the claim objections, rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and a terminal disclaimer is filed to overcome the double patenting rejections set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, alone or in combination, fails to teach or render obvious: the pusher has and two arms, the arms engaging a first slot in the top cover at a proximal end of the opening in the top cover in a first status and a second slot in the top cover at a distal end of the opening in the top cover in a second status (claim 1); a pusher with arms extending in a first direction, the arms engaging a first slot in the top cover at a proximal end of the opening in the top cover in a first position and a second slot in the top cover at a distal end of the opening in the top cover in a second position (claims 5 and 6). The closest prior art includes Jenson et al. (US 20100217311 A1) and Galligan et al. (US 20150265271 A1). Jenson teaches a pusher (arms of 30) that are each in a slot (first and second), but fails to teach both of the arms in the same first slot at the proximal end and the same second slot at the distal end. Galligan teaches a pusher with 2 arms (462A,B and 2461A,B), but fails to teach a first slot in the top cover at a proximal end of the opening in the top cover in a first position and a second slot in the top cover at a distal end of the opening in the top cover in a second position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H MENDEZ whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 am-4:00 pm.
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/KATHERINE H MENDEZ/Primary Examiner, Art Unit 3771
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