DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Species 20 (Fig. 20) in the reply filed on 03/13/2026 is acknowledged, the applicant asserting that Species 20 (Fig. 20) reads on claims 1-20, and that claims 8-9, and 11-14 are generic to all species. The traversal is on the ground(s) that, the “Applicant respectfully notes that each of the indicated species relates to initiator for a perforating gun. Thus, Applicant believes that all species can be searched within the same class and subclass. The Examiner has not provided any explanation or evidence of why any of these species would require a different field of search, and instead merely presents a conclusory statement without any factual findings in support of such a conclusion. Accordingly, it is believed that there is no undue or serious burden and, on this basis, Applicant respectfully requests the Examiner to withdraw the restriction requirement”. This is not found persuasive because the search for the species as claimed is not limited to an initiator head configured for a perforating gun in E21B 43/1185 but extends to explosive initiator heads with printed circuit boards, F42B 3/10, 3/195, 3/198, and potentially in other technology areas such as blasting and safety systems in automotives, in sealed electronic housings for shock/vibration environments, molded or potted electronics using silicone/epoxy encapsulation, and a myriad of other potential technology areas. Searching for all the Species would require the formulation of species-specific search queries and/or the prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species (Species 22, Fig. 22), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/13/2026.
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 3-5 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.
In claim 3, in line 2, it is unclear whether the “hole therethrough” refers to the “hole therethrough” previously recited in claim 2, line 2, or to a different hole?
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EITSCHBERGER et al. (US 2022/0307330 A1).
Regarding claim 1, EITSCHBERGER et al. disclose an initiator head (Figs. 1, 14 and 16) comprising a housing 201 including: a first housing piece 240 defining an interior chamber; and a second housing piece 230 covering the interior chamber; a circuit board 210 supported in the interior chamber; an insulating material 606, 706 (Figs. 14, 16) provided in the interior chamber and covering the circuit board 210; and a line-in terminal 212 coupled to the circuit board.
Regarding claim 2, EITSCHBERGER et al. disclose that the housing defines a hole therethrough (Figs. 1, 14 and 16) in fluid communication with the interior chamber; and the hole is defined in the second housing piece 230 (in the center of the second housing for accessing the line-in terminal 212; Figs. 1, 14 and 16).
Regarding claim 3, EITSCHBERGER et al. disclose that the housing defines a hole therethrough in fluid communication with the interior chamber; and the second housing piece 230 includes a plate 232, the plate defining the hole therethrough (Figs. 1, 14 and 16).
Regarding claim 4, EITSCHBERGER et al. disclose that the first housing piece 240 includes: a base 242; and a wall extending upwardly from an outer periphery of the base 242, the plate 232 of the second housing piece 230 being engaged with the wall of the first housing piece 240 (Figs. 1, 14 and 16).
Regarding claim 5, EITSCHBERGER et al. disclose that the plate 232 of the second housing piece 230 is parallel with and axially spaced from the base 242 of the first housing piece 240.
Regarding claim 7, EITSCHBERGER et al. disclose that the housing 201, 230 defines a hole therethrough in fluid communication with the interior chamber; and the hole defines a central axis therethrough, the central axis being perpendicular to a plane defined by the circuit board (Figs. 1, 14 and 16).
Regarding claim 8, EITSCHBERGER et al. disclose an initiator head 200 comprising: a first housing piece 240; a circuit board 210 supported on the first housing piece; a line-in terminal 212 coupled to the circuit board 210; and a second housing piece 230 in contact with and covering a top surface of the circuit board; wherein the circuit board 210 is positioned between the first housing piece 240 and the second housing piece 230 (Fig. 1).
Regarding claim 9, EITSCHBERGER et al. disclose that the first housing piece 240 includes: a base 242; and a wall extending away from an outer periphery of the base 242 (Fig. 1).
Regarding claim 10, EITSCHBERGER et al. disclose that the circuit board 210 is supported by a ledge of the first housing piece 240 in spaced relation from the base 242 (Fig. 14).
Regarding claim 11, EITSCHBERGER et al. disclose that the line-in terminal 212 is exposed through an opening in the second housing piece 230 (Fig. 1).
Regarding claim 12, EITSCHBERGER et al. disclose that the second housing piece 230 is engaged with and conforms to the wall of the first housing piece 240 and the circuit board 210.
Regarding claim 14, EITSCHBERGER et al. disclose the second housing piece 230 may comprise an insulating material (see paragraph [0039] – the housing 201 may be formed of an insulating material).
Claim Rejections - 35 USC § 103
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.
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over EITSCHBERGER et al. (US 2022/0307330 A1).
EITSCHBERGER et al. disclose an initiator head (Figs. 1, 14 and 16) comprising a housing 201 including: a first housing piece 240 defining an interior chamber; and a second housing piece 230 covering the interior chamber; a circuit board 210 supported in the interior chamber; an insulating material 606, 706 (Figs. 14, 16) provided in the interior chamber and covering the circuit board 210; and a line-in terminal 212 coupled to the circuit board.
Regarding claim 6, EITSCHBERGER et al. do not disclose that the insulating material 606, 706 (Figs. 14, 16) comprises silicone or epoxy. To form the EITSCHBERGER et al. insulating material of silicone or epoxy would have been an obvious material for a POSITA to try before the effective filing date of the invention, the motivation being to avail of the workability of silicone or epoxy prior to curing.
Regarding claim 13, EITSCHBERGER et al. disclose that the housing 201 (pieces 240 and 230) may be formed of an insulating material (see paragraph [0039]), but does not specifically disclose that the second housing piece 230 is fabricated from a softer material than the first housing piece. To form the second housing piece from a softer material than the first housing piece would have been obvious to a POSITA before the effective filing date of the invention, the motivation being to ease the press-fit securement of second piece 230 within the first piece 240.
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 15-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 12,287,182 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 15-18 of the instant application are anticipated by or obvious in view of claims 1-3 of the ‘182 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. see the attached PTO-FORM 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES S BERGIN whose telephone number is (571)272-6872. The examiner can normally be reached M-F 9am - 5am.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES S BERGIN/Primary Examiner, Art Unit 3641
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