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, 6 and 7; 2; 3; 8; 9; 10; 11; 12 and 13; 14; and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1; 2; 3; 9; 4; 5; 6; 8; 11; and 12, respectively, of U.S. Patent No. 12,366,817. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1; 2; 3; 9; 4; 5; 6; 8; 11; and 12 of U.S. Patent No. 12,366,817 contain or make obvious the features contained in claims 1, 6 and 7; 2; 3; 8; 9; 10; 11; 12 and 13; 14; and 15, respectively. The claimed second gear corresponds to the partially toothless gear claimed in U.S. Patent No. 12,366,817 [see Applicant’s claim 1]. Moreover, the first gear axis corresponds to the agitator axis claimed in U.S. Patent No. 12,366,817 [see Applicant’s claim 8]. Specifically, it is considered to have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the idle gear and the first gear to be connected between the coupling gear and the second gear, since such is considered to be merely an engineering decision [see Applicant’s claim 1].
Claims 4 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,366,817 in view of Takagi (US 2011/0236062).
Claim 9 of U.S. Patent No. 12,366,817 contains features of claims 4 and 5, but does not contain the claimed agitator shaft. Takagi (…062) discloses an agitator (16) including an agitator shaft (62) ([0069]; and [0101]-[0102]) [see Applicant’s claim 4]. A gear (49) is mounted on the agitator shaft (62) ([0101]-[0102]) [see Applicant’s claims 5]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the claimed agitator shaft, since as disclosed by Takagi (…062), it is well known in the art for an agitator to have an agitator shaft.
Claims 1, 6, 7, 11, 12, 13, 14 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,934,113. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,934,113 contains or makes obvious the features contained in claims 1, 6, 7, 11, 12, 13, 14 and 15. The claimed the first gear corresponds to the agitator gear claimed in U.S. Patent No. 11,934,113 [see Applicant’s claim 1]. Moreover, the second gear corresponds to the partially toothless gear claimed in U.S. Patent No. 11,934,113 [see Applicant’s claim 1]. Specifically, it is considered to have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the idle gear and the first gear to be connected between the coupling gear and the second gear, since such is considered to be merely an engineering decision [see Applicant’s claim 1].
Claims 4 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,934,113 in view of Takagi (US 2011/0236062).
Claim 11 of U.S. Patent No. 11,934,113 contains features of claims 4 and 5, but does not contain the claimed agitator shaft. Takagi (…062) discloses an agitator (16) including an agitator shaft (62) ([0069]; and [0101]-[0102]) [see Applicant’s claim 4]. A gear (49) is mounted on the agitator shaft (62) ([0101]-[0102]) [see Applicant’s claims 5]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the claimed agitator shaft, since as disclosed by Takagi (…062), it is well known in the art for an agitator to have an agitator shaft.
Claims 9 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,934,113 in view of Itabashi et al. (US 2013/0051849).
Claim 11 of U.S. Patent No. 11,934,113 contains features of claims 9 and 10, but does not contain the claimed gear cover. Itabashi et al. (…849) disclose a developing cartridge
(25) comprising: a gear cover (62) positioned at an outer surface, the gear cover covering a gear
portion ([0092]; and figures 3-5) [see Applicant's claim 9]. The developing cartridge, wherein
the gear cover (62) has a through hole, and wherein a coupling further includes a coupling part
(61), the coupling part being rotatably fitted into the through hole ([0093]; [0094]; [0100]; and
figures 3-5) [see Applicant's claim 10]. It would have been obvious to one of ordinary skill in the
art before the effective filing date of the claimed invention to have the claimed gear cover, since as disclosed by Itabashi et al. (...849), such a gear cover is well known in the art to cover gears of a cartridge.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANDRA BRASE whose telephone number is (571)272-2131. The examiner can normally be reached M-F.
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/SANDRA BRASE/Primary Examiner, Art Unit 2852 June 25, 2026
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