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 4-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 12,256,815. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 4: A jewelry item, the jewelry item comprising:
a first side with a first and second end, said first end having a stem and locking notch;
a second side with a third and fourth end, said second end of said first side being connected to said fourth end of said second side; and
a closure, the closure having a collar that is rotatably connected to a rotatable connection element;
wherein said collar is connected to said third end of said second side, located between said third end and said rotatable connection element;
wherein said first end of said first side is configured to be movable towards said third end of said second side,
wherein said stem with said locking notch is configured to be inserted into a locking cavity of said rotatable connection element on said second side when said jewelry item is in an unlocked configuration, and
wherein said rotatable connection element is configured to rotate to engage said locking notch of said stem, preventing removal of said stem from said rotatable connection element when said jewelry item is in a locked configuration.
Claim 5: The jewelry item as claimed in claim 4, wherein said collar has a recess located approximately in the middle of a hollow cavity, configured to accept that accepts said rotatable connection element during said rotating step.
Patented Claim Claim 1: A jewelry item comprising:
a first side including a first and second end, said first end having a stem and locking notch;
a second side including a third and fourth end, said third end having a mounting stem and ball joint, and said second end of said first side is connected to said fourth end of said second side; and
a closure having a collar rotatably connected to a rotatable connection element; wherein said collar being connected to said third end and located between said third end and said rotatable connection element; and
wherein, in an open configuration, said stem with said locking notch of said first side can be inserted within a locking cavity of said rotatable connection element, and wherein in a closed configuration, said rotatable connection element is configured to be rotated to engage said locking notch of said stem, preventing removal of said stem from said rotatable connection element.
Patented Claim 3: The jewelry item as claimed in claim 1, wherein said collar has a recess located approximately in the middle of a hollow cavity, configured to accept said rotatable connection element.
Although the instant application does not disclose a mounting stem and ball on the third end, the structure of the claimed invention is not patentably distinct from the patented invention.
Claims 4-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 5 of copending Application No. 19/087,442 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other
Claim 4: A jewelry item, the jewelry item comprising:
a first side with a first and second end, said first end having a stem and locking notch;
a second side with a third and fourth end, said second end of said first side being connected to said fourth end of said second side; and
a closure, the closure having a collar that is rotatably connected to a rotatable connection element;
wherein said collar is connected to said third end of said second side, located between said third end and said rotatable connection element;
wherein said first end of said first side is configured to be movable towards said third end of said second side,
wherein said stem with said locking notch is configured to be inserted into a locking cavity of said rotatable connection element on said second side when said jewelry item is in an unlocked configuration, and
wherein said rotatable connection element is configured to rotate to engage said locking notch of said stem, preventing removal of said stem from said rotatable connection element when said jewelry item is in a locked configuration.
Claim 5: The jewelry item as claimed in claim 4, wherein said collar has a recess located approximately in the middle of a hollow cavity, configured to accept that accepts said rotatable connection element during said rotating step.
Copending Claim 1: A jewelry item, the jewelry item comprising:
a first side, having a first and second end, said first end having a stem and locking notch;
a second side including a third and fourth end, said second end of said first side is connected to said fourth end of said second side; and
a rotating closure having a collar rotatably connected to a rotatable connection element;
wherein said collar is connected to said third end of said second side and located between said third end and said rotatable connection element;
wherein said first end of said first side is configured to be movable towards said third end of said second side, such that in an unlocked configuration, said stem with said locking notch is configured to be inserted into said first side within a locking cavity of said rotatable connection element, and in a locking configuration, said rotatable connection element is configured to rotate to engage said locking notch of said stem, preventing removal of said stem from said rotatable connection element.
Copending Claim 5: The jewelry item as claimed in claim 1, wherein said collar has a hollow cavity for accepting said rotatable connection element.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-3 and 6 are allowed.
Claim 4-5 would be allowable if rewritten or amended to overcome the Double Patenting rejection(s) under, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose a stem and locking notch, rotatable connection element, and a collar.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA SALEM RASHID whose telephone number is (703)756-1113. The examiner can normally be reached M-F 10:00 - 6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA S RASHID/Examiner, Art Unit 3677
/JASON W SAN/SPE, Art Unit 3677
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