DETAILED ACTION
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 .
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 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 30 of U.S. Patent No. 10339434. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants.
Claim 1 of the instant application recites “A method… first thermoplastic layer… plurality of inlay layers… inlay layout… flexibly coupling… edge… cantilevered inlays… dispensing a crosslinkable polymer… “ wherein claim 15 (1,15) of the ‘434 Patent recites “A method… first thermoplastic layer… inlay layout… cantilever inlay… edge… dispensing a crosslinkable polymer… cantilevered inlay… plurality of holes therein… each inlay layer is disposed inside a respective one of the plurality of holes…” and wherein claim 14 of the instant application recites “A core layer… thermoplastic layer… inlay layout… plurality of inlays.. edge… plurality of openings… cantilevered… crosslinked polymer…” and claim 30 (21,30) of the ’434 Patent recites “… A core layer… thermoplastic layer… inlay… disposed… edge… cantilevered… hole… crosslinked polymer… oscillate… plurality of holes… inlay layers… a respective holes…”
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12340266. Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants.
Claim 1 of the instant application recites “A method… first thermoplastic layer… plurality of inlay layers… inlay layout… flexibly coupling… edge… cantilevered inlays… dispensing a crosslinkable polymer… “ wherein claim 1 of the ‘266 Patent recites “A method… first thermoplastic layer… plurality of holes… plurality of inlay layers…inlay layout… cantilevering… within one respective hole… edge… crosslinkable polymer composition…”
and wherein claim 14 of the instant application recites “A core layer… thermoplastic layer… plurality of holes… inlay layout… plurality of inlay layers.. cantilevered with a respective hole… crosslinked polymer…”. The Examiner notes that as there are a plurality of respective holes and the inlays are cantilevered to provide a cantilever inlay with a respective hole, it would have been obvious to have each opening with a cantilevered inlay as recited in the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL I WALSH whose telephone number is (571)272-2409. The examiner can normally be reached 7-9pm.
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/DANIEL I WALSH/Primary Examiner, Art Unit 2876