CTNF 19/211,045 CTNF 88985 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-30 AIA 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. 08-32 AIA Claim s 1-8 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 1-6 of co-pending Application No. 19/210,894 . This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. 08-32 AIA Claim s 1-8 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 1-8 of co-pending Application No. 19/210,850 . This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. 08-32 AIA Claim s 1-8 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim s 1-8 of co-pending Application No. 19/210,711 . This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. 08-33 AIA The non-statutory 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 non-statutory obviousness-type 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); InreGoodman, 11 F.3d 1046,29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225USPQ645 (Fed. Cir. 1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In reVogel, 422F.2d 438,164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) maybe used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b). 08-34 AIA Claim s 1-8 rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claim s 1-14 of US Patent No. 12,363,278 although the conflicting claims are not identical, they are not patentably distinct from each other because they claim the same scope of the invention, but using different variations of the claim language . It would have been obvious to a person having ordinary skill in the art, at the time the invention was made, to combine the teachings of current Application 19/211,045 although the conflicting claims are not identical, they are not patentably distinct from each other, because they are obvious variations of each other. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to TSION B OWENS whose telephone number is (571)272-3934. The examiner can normally be reached Monday-Friday 8:00-4:00. 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, David Czekaj can be reached at 571-272-7327. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /TSION B OWENS/Primary Examiner, Art Unit 2487 Application/Control Number: 19/211,045 Page 2 Art Unit: 2487 Application/Control Number: 19/211,045 Page 3 Art Unit: 2487 Application/Control Number: 19/211,045 Page 4 Art Unit: 2487 Application/Control Number: 19/211,045 Page 5 Art Unit: 2487
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