DETAILED ACTION
This office action is in response to the applicant's amendment submitted on 09/08/2026. In virtue of this amendment:
Claim 4 is canceled;
Claims 1, 3, 5, 7 and 9 are currently amended; and thus,
Claims 1-3 and 5-9 are pending;
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 .
Terminal Disclaimer
The terminal disclaimer filed on 09/03/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of co-pending application 19/109,286 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The rejection to claim 3 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph is withdrawn in view of the amendment made to the claim.
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.
Claim 9 is 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..
Regarding claim 9, the claim deleted the dependency to claim 4, thus, the claim is rendered indefinite, as there is currently no dependency, and thus treated as independent, and all term presents improper antecedent basis.
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 1-8 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-8 of copending Application No. 19/109,286 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The rejection to claim 9 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No.19/109,286 in view of Machine Translation of JP2012-49353A hereinafter Tamura withdrawn in view of the terminal disclaimer filed.
Allowable Subject Matter
Claims 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claims 9, the claim would be allowable when independent claim from which the claims depend on is rewritten to overcome the Statutory Double Patenting Rejection.
Response to Arguments
Applicant's arguments filed 09/08/2026 have been fully considered but they are not persuasive.
Regarding claims 1-8, although the applicant filed a Terminal Disclaimer, he filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
For the at least foregoing reason, the Statutory Double Patenting Rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAYMOND R CHAI whose telephone number is (571)270-0576. The examiner can normally be reached M-F 9:30AM-5:00PM.
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, Alexander Taningco can be reached at 571-242-8048. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Raymond R Chai/Primary Examiner, Art Unit 2845
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