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 .
Pursuant to communications filed on 06/25/2025, this is a First Action Non-Final Rejection on the Merits wherein claims 1-46 are currently pending ed in the instant application.
-. It is noted that the instant application is Continuation (CON) from patent case (17/279,730 now patent no. US 12,364,556).
However, it has been detected a major 101 issue as a statutory doble patenting, wherein at least independent claims 1 and 16 are exactly identical to the patented independent claims 1 and 16.
In addition, it is noted that independent claim 31 of the instant application is obvious over patented claims 1, 11 and 16.
As such, two double patenting rejections will be provided below as follows:
-. One under “statutory” Double Patenting for claims 1 and 16.
-. One under Obviousness type Double Patenting for claim 31.
Double Patenting
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.
In the instant case, the robotic system claim 1, and the apparatus claim 16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of robotic system claim 1, and apparatus claim 16 of prior parent U.S. Patent No. 12,364,556 (s/n 17/279,730). Therefore, this is a statutory double patenting rejection.
Appropriated correction is earnestly solicited.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 31-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of parent Patent US 12,364,556 to Diolaiti et al. Although the conflicting claims at issue are not identical, at least independent claim 31 have been amended and/or have been re-arranged in wording, but Examiner believes they are directed to the same scope of invention, as such, they are not patentably distinct from each other because the claimed method with the associated steps recited are obvious over the steps performed by the systems and apparatus recited in the allowed claims 1-20 of parent Patent US 12,364,556.
In other words, the claims are not patentably distinct from each other because the Examiner takes note that the narrower claimed combination of claims 1-20 of parent Patent US 12,364,556 encompass the broader claimed combination of claims 31-46 of the instant application '713.
Applicant provides similar, if not identical limitations as in claims 1-20 of the above-mentioned U.S. Patent, specifically wherein both systems/apparatuses include an elongate device, actuators, sensors and to generate a test profile that correspond to the reference profile.
Since Claims 32-46 are dependent upon a rejected base claim 31, these claims would be allowed in virtue of their dependency of allowed claim 31 after a filing of a Terminal Disclaimer.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not teach or suggest the combination of limitations, especially those which include the specific limitations regarding claims 31-46. As such, it is hereby asserted by the Examiner that, in light of the above and in further deliberation over all of the evidence at hand, that the claims are allowable as the evidence at hand does not anticipate the claims and does not render obvious any further modification of the references to a person of ordinary skill in the art. Thus, the prior art references do not disclose the recited claim limitations when considered as a whole.
The filing of a terminal disclaimer would overcome the nonstatutory
double patenting rejection or applicant may amend the claims to overcome the double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jaime Figueroa whose telephone number is (571)270-7620. The examiner can normally be reached on Monday-Friday 9-5.
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, Wade Miles can be reached on 571-270-7777. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAIME FIGUEROA/Primary Patent Examiner, Art Unit 3656
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