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 1-16 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,361,824. 3. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 12,361,824 recites all the limitations in claim 1 of the present invention.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 12,361,824 recites all the limitations in claim 2 of the present invention.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of U.S. Patent No. 12,361,824 recites all the limitations in claim 3 of the present invention.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 12,361,824 recites all the limitations in claim 4 of the present invention.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 12,361,824 recites all the limitations in claim 5 of the present invention.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 12,361,824 recites all the limitations in claim 6 of the present invention.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 12,361,824 recites all the limitations in claim 7 of the present invention.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of U.S. Patent No. 12,361,824 recites all the limitations in claim 8 of the present invention.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 12,361,824 recites all the limitations in claim 9 of the present invention.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 12,361,824 recites all the limitations in claim 10 of the present invention.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 12,361,824 recites all the limitations in claim 11 of the present invention.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of U.S. Patent No. 12,361,824 recites all the limitations in claim 12 of the present invention.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of U.S. Patent No. 12,361,824 recites all the limitations in claim 13 of the present invention.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of U.S. Patent No. 12,361,824 recites all the limitations in claim 14 of the present invention.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of U.S. Patent No. 12,361,824 recites all the limitations in claim 15 of the present invention.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of U.S. Patent No. 12,361,824 recites all the limitations in claim 16 of the present invention.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of U.S. Patent No. 12,361,824 recites all the limitations in claim 19 of the present invention.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12,361,824. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 of U.S. Patent No. 12,361,824 recites all the limitations in claim 20 of the present invention.
Claims 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,361,824 in view of Chen (US 2016/0286627).
Regarding claims 17-18, claim 17 of U.S. Patent No. 12,361,824 recites all the limitations in claims 17-18 of the present invention, but does not recite at least one of an intensity or a color the street light being different (claim 17) and the street light changing color, flashing, or both changing color and flashing (claim 18). Chen teaches the use of at least one of an intensity or a color a street light being different (paragraph 74) and the street light changing color, flashing, or both changing color and flashing (p. 74, p. 205). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include at least one of an intensity or a color the street light being different and the street light changing color, flashing, or both changing color and flashing to modify the claimed invention of U.S. Patent No. 12,361,824 as taught by Chen for the purpose of effectively operating the street light in the priority route mode.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Srivastava, Smith, Bandi, and Pichey disclose systems for controlling street lights.
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/ANH V LA/ Primary Examiner, Art Unit 2685
ANH V. LA
Primary Examiner
Art Unit 2685
Al
June 27, 2026
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