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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 5-9 and 11-20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 and 5-20 of prior U.S. Patent No. 12,273,052. This is a statutory double patenting rejection.
Instant claim 1 and patent claim 1 both recite: A substrate carrier assembly, comprising: a carrier configured to support a substrate; and a first mover coupled to the carrier, the first mover comprising: a first set of poles extending in a first direction; and a second mover coupled to the carrier, the second mover comprising: a second set of poles extending in the first direction, wherein: each pole of the first set and the second set comprise a ferromagnetic material; the first set is spaced apart in a second direction from the second set; and the first direction and the second direction are at a first angle to each other.
Both the instant Application and the patent recite in claim 13: A substrate carrier assembly, comprising: a carrier configured to support a substrate; and a first elongated bar coupled to the carrier, comprising: a first set of poles extending in a first direction; and a second elongated bar coupled to the carrier, comprising: a second set of poles extending in a second direction, wherein: each pole of the first set and the second set comprise a ferromagnetic material; and the first direction and the second direction are at a first angle to each other.
Both the instant Application and the patent recite in claim 18: A substrate carrier assembly, comprising: a carrier configured to support a substrate; and3a mover coupled to the carrier, the mover comprising: a first set of poles extending in a first direction; a second set of poles extending in a second direction; and a third set of poles extending in the first direction or the second direction, wherein: each pole of the first set, the second set, and the third set comprise ferromagnetic material; and the first direction and the second direction are at a first angle to each other.
Dependent claims 5-9,11,12, 14-17,19 and 20 are identical in both this instant Application and the patent.
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 2-4 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-4 and 10 of U.S. Patent No. 12,273,052. Although the claims at issue are not identical, they are not patentably distinct from each other because differences between the two sets of claims are only minor variations in recited scope or variations in the distribution of features between the independent and dependent claims that are not seen to involve any inventive step when the abilities of persons of ordinary skill are taken into full consideration.
Instant dependent claim 2 recites: The substrate carrier assembly of claim 1, further comprising a first elongated bar that comprises the first set of poles and a second elongated bar that comprises the second set of poles.
Dependent claim 2 of the patent recites: The substrate carrier assembly of claim 1, wherein the first mover further comprises a first elongated bar that comprises the first set of poles, wherein the second mover further comprises a second elongated bar that comprises the second set of poles, and wherein the first elongated bar and the second elongated bar each comprise a single material.
Instant claim 10 recites: The substrate carrier assembly of claim 1, wherein the carrier further comprises a first edge and a second edge, which is opposite to the first edge, the first set of poles are positioned adjacent to the first edge, and the second set of poles are positioned adjacent to the second edge.
Claim 10 of the patent recites: The substrate carrier assembly of claim 1, wherein the carrier further comprises a first edge and a second edge, which is the second edge being opposite to the first edge, the first set of poles are positioned adjacent to the first edge, and the second set of poles are positioned adjacent to the second edge.
Note the “is the second edge being” in line 2 of the patent claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN W JACKSON whose telephone number is (571)272-2051. The examiner can normally be reached M-F 6:30-3:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Monica Lewis can be reached at 571-272-1838. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SWJackson
August 21, 2026
/STEPHEN W JACKSON/Primary Examiner, Art Unit 2838
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