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.
Claims 1-8, 10-18, 20-22 0f application 19/074,771 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12249258. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of 19/074,771 is the same as claim 1 of U.S. Patent 12249258 except for word variation. For example, see the table below:
Application 19/074,771
U.S. Patent 12249258
1. A jewelry form factor, comprising- a body having a main region and a base material comprising having an area for adornment formed of a metal or metal alloy for at least one surface thereof, wherein the area for adornment is located in a front surface, back surface, or one or more sides of the body, and the area for adornment defines a reinforced region having a second thickness thicker than a first thickness of the main region, wherein the second thickness is sufficient to set gemstones in an exterior surface thereof; the body encompassing a cavity suited to enclose electronic components; a processor having wireless communication architecture is disposed in the cavity and is configured to execute a computer instruction; a memory disposed in the cavity and coupled to the processor, the memory having computer executable instructions to be executed by the processor; a power source in the cavity electrically connected to the processor and memory.
1. A jewelry form factor, comprising: a body having a first panel and a second panel mated together to define a cavity suited to enclose electronic components, wherein the first panel has a main body layer having a first thickness and defining an exterior surface thereof and the first panel comprises an area for adornment formed of a metal or metal alloy; wherein the area for adornment protrudes into the cavity and has an additional thickness additive to the first thickness sufficient to set jeweled embellishments therein and has one or more jeweled embellishments set in the area for adornment, the body further comprising a thickness of about 2.0 mm to about 4.0 mm; a processor disposed in the cavity and configured to execute computer instructions; a memory disposed in the cavity and coupled to the processor, the memory having computer executable instructions to be executed by the processor; a display disposed on the exterior of the second panel and coupled to the processor, the display configured to display visual indications on the display in response to the execution of the computer instructions; and a communication module disposed in the cavity and configured to receive and send messages to one or more remote devices in response to the execution of the computer instructions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJIBOLA A AKINYEMI whose telephone number is (571)270-1846. The examiner can normally be reached Monday-Friday 8:00am-5:00pm, EST.
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/AJIBOLA A AKINYEMI/Primary Examiner, Art Unit 2649
