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 1-13 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 19-20 of U.S. Patent No. 12,342,987. Although the claims at issue are not identical, they are not patentably distinct from each other because:
For claim 1, the patent claims the tubular body (claim 1), an aperture (claim 1), a plurality of reinforcing ribs (claim 1), and wherein none of the ribs extends along the slit axis (claim 5). The claims are not identical in scope, for example, the application just claims an aperture and the patent claims an elongated aperture, but these distinctions are not substantial or are such that the patent anticipates the application.
Claims 2-4 and 6-13 are the same for both the patent and the application.
Claim 5 of the application requires symmetry, and the Examiner considers this obvious as symmetry provides a certain amount of uniformity to the structure and is well-known in the art.
Claims 19 and 20 of the application is substantially similar to claim 19 of the patent with the patent anticipating the application.
Claims 14-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-18 of U.S. Patent No. 12,342,987 in view of Ryan et al. (US 5,312,363). The patent anticipates the majority of the claim in that claim 14 requires the tubular body, an aperture, and ribs with at least some angle relative to the aperture. The patent does not claim the reinforcing ridge, at least not in claim 14. Ryan teaches a similar device for tool insertion using a ring 163a (see Fig. 2e) for reducing resistance when a tool is inserted or removed. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the patent to include Ryan’s ridge. Such a modification reduces resistance upon insertion and removal of tools from the device.
Claims 15-18 are the same in the patent and the application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
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