DETAILED ACTION
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 1-3, 6-10 and 12-18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-17 of prior U.S. Patent No. 12,287,183. This is a statutory double patenting rejection.
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, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 4 and 5 of U.S. Patent No. 12,287,183. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4 and 5 anticipates claims 4-5, and 19-20 of the instant application.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 7-9, 12-18 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by AECIs PowerBoost (NPL: AECIs PowerBoost, Quarrying Africa Online Article. Earliest Publication Date: 06/02/22. Retrieved from Internet URL; see applicants cited prior art).
Regarding claims 1-3, 7-9, 12-18, AECIs PowerBoost discloses an explosive initiator and thus causing detonation of a bulk explosive (Applicant should note that the AECIs PowerBoost article disclosed by Quarrying Africa Online article details the applicant’s actual invention and qualifies as prior art because the disclosure was made (6/22/22) more than one year before the effective filing date (8/28/23) of the claimed invention),
the booster comprising: a hollow body comprising a base member and a sidewall projecting from the base member, the body defining an interior space between the base member and the sidewall for containing a detonable booster formulation in use (see figure below); and
a hollow elongate initiator locating formation that projects longitudinally into the interior
space at least from the base member and that defines an initiator channel that is open through the
base member, for locating an explosive initiator therein and thus in initiating proximity relative to a detonable booster formulation that is contained in the interior space in use, wherein the initiator channel extends longitudinally along a central longitudinal axis thereof that is radially spaced from and parallel to a central longitudinal axis along which the interior space longitudinally extends (See Fig. below),
wherein the body defines a mouth at which the interior space terminates and through which a detonable booster formulation may be loaded into the interior space in use, the mouth thus providing a distal end of the interior space, the booster further including a removable closure member that is of a material different to the material of the body and is configured such that the closure member is mountable to the body to close the mouth (See Fig. below), and
wherein the closure member and the body have complementary thread formations
that are threadable to screw the closure member onto the body, thus mounting the closure member on the body and closing the mouth, the complementary thread formations being configured for effecting liquid tight mounting of the closure member to the body by threading engagement of the complementary thread formations about a screw axis that co- extends with the central longitudinal axis of the interior space; and
the closure member comprises a channel formation within which a part of the body that defines the mouth is seated when the closure member is screwed onto the body (See Fig. Below. .
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Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4-6, 10, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over (NPL: AECIs PowerBoost, Quarrying Africa Online Article. Earliest Publication Date: 06/02/22. Retrieved from Internet URL; see applicants cited prior art).
Regarding claims 4-6, 10, 19 and 20, AECIs PowerBoost does not expressly disclose the relative dimensions claimed.
It would have been an obvious matter of design choice to use the relative dimension claimed since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA E FREEMAN whose telephone number is (303)297-4269. The examiner can normally be reached 9AM - 5PM MST M-F.
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/JOSHUA E FREEMAN/Primary Examiner, Art Unit 3641