DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/599,153, filed on March 7, 2024.
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 12,139,366 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414.
The failure to file an IDS is not seen to render the ‘366 patent wholly or partly inoperative or invalid, and is therefore not seen as a suitable error for the filing of a reissue. Patent owner can either file a supplemental examination (SE, see MPEP 2800), or amend the claims or specification to overcome an error pertaining to the breadth of the claims or specification (and file a new reissue declaration stating the new suitable error that is being corrected).
The April 9, 2025 reissue declaration has further issues that make it unacceptable. On the first page the box stating the specification “is attached hereto” should have been checked. For a new reissue declaration that will need to be filed, the “was filed on…” box that is currently checked should be checked, but the date needs to be changed to April 9, 2025 and the reissue application number needs to be changed to 19/173,838 (not the parent application number). All of the inventors need to named in the declaration signed by each inventor. The April 9, 2025 declaration has multiple page 2s with different inventor names and signatures. This is not seen as evidence that each inventor acknowledges the others an co-inventors. The corrected reissue declaration should check the box at the bottom of page 2 that “Additional joint inventors are named…” and list all of the inventors who are not named on page 2. The inventors need not sign the same copy of the declaration, but all should sign different copies of the same declaration if they do not sign the same copy.
Claims 1-21 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Allowable Subject Matter
There is no rejection of claims 1-21 under 35 USC 112, 102 or 103.
The following is a statement of reasons for the indication of allowable subject matter: The claims remain allowable over prior art for the reasons given during the original prosecution.
The prior art of record, when taken as a whole, does not disclose or suggest the combination including the rotary shaft of the three-dimensional printing filament spool holder according to claim 1, comprising at least two elastic supporting arms separately elastically mounted at an outer edge of the sleeve assembly through an elastic arm, wherein when the elastic arm is in a natural state, the elastic supporting arm forms a preset included angle relative to an axial direction of the sleeve assembly, so that a distance between first ends of the at least two elastic supporting arms is closer relative to the distance between second ends of the at least two elastic supporting arms, and the at least two of the elastic supporting arms extend along the axial direction of the sleeve assembly, and are evenly distributed at the outer edge of the sleeve assembly along a circumferential direction of the sleeve assembly, wherein the sleeve assembly is sleeved outside a first end of the fixed tube, and a second end is the other end of the first end in conjunction with the rest of the limitations of claims 1 and 20.
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 1-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-13 of copending Application No. 19/537,579 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both claim a 3-D printing spool holder comprising a fixed tube and a sleeve assembly with the sleeve assembly sleeved on the outside of the fixed tube an elastically connected to the fixed tube through an elastic member, the relative motion between the sleeve assembly and the fixed tube causes the elastic member to generate elastic deformation and also at least two elastic supporting arms separately elastically mounted to the outer edge of the sleeve assembly through an elastic arm, wherein when the elastic arm is in its natural state, the elastic supporting arm forms a preset included angle relative to the axial direction of the sleeve assembly, the elastic supporting arm is inclined toward the side near the fixed tube connected to the outside. While the ‘579 application relies on the same Chinese priority document as the ’366 patent and will therefore not extend past the expiration of the ‘366 patent, the ‘579 application currently contains claims that are broader than the claims of the ‘366 patent and therefore may dominate the claims of the ‘366 patent without a terminal disclaimer to link the two applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2026/0158744 is the pre-grant publication of the ‘579 application from the double patenting rejection above. The reference cited during the original prosecution have been added to the 892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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, Eileen Lillis can be reached at (571) 272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees:
/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
Prosecution Insights