CTNF 19/254,081 CTNF 92243 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-18 of U.S. Patent No. 12344294 . Although the claims at issue are not identical, they are not patentably distinct from each other because : The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”) . 08-35 AIA Claim s 1-8 and 11-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-3 and 15-18 of copending Application No. 19254077 and over claims 1-2, 10-11, 17-20 of copending Application No. 19254080 (reference applications) . Although the claims at issue are not identical, they are not patentably distinct from each other because : The reference applications claims include all of the limitations of the instant application claims, respectively. The reference applications claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective reference applications claims. As such, the instant application claims are anticipated by the reference applications claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the reference applications invention" and the instant “application claims are generic to species of invention covered by the reference applications claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”) . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. 08-37 AIA Claim s 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1 of copending Application No. 19254077 and over claims 1-2 of copending Application No. 19254080 in view of Buschelman (US 20240137635). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of this application are rendered obvious by the claims of the reference applications. Reference applications claims recite all limitations found in instant claims except for “wherein: at least some of the first lights of the first array of first lights are pointed in a direction that is different from a direction in which some others of the first lights of the first array of first lights are pointed; at least some of the first lights of the second array of first lights are pointed in a direction that is different from a direction in which some others of the first lights of the second array of first lights are pointed; at least some of the second lights of the first array of second lights are pointed in a direction that is different from a direction in which some others of the second lights of the first array of second lights are pointed; and at least some of the second lights of the second array of second lights are pointed in a direction that is different from a direction in which some others of the second lights of the second array of second lights are pointed;” and “wherein: there is a first gap between the first array of first lights and the second array of first lights; at least some of the one or more first cameras are positioned within the first gap; there is a second gap between the first array of second lights and the second array of second lights; and at least some of the one or more second cameras are positioned within the second gap.” Buschelman teaches wherein: at least some of the first lights of the first array of first lights are pointed in a direction that is different from a direction in which some others of the first lights of the first array of first lights are pointed; at least some of the first lights of the second array of first lights are pointed in a direction that is different from a direction in which some others of the first lights of the second array of first lights are pointed; at least some of the second lights of the first array of second lights are pointed in a direction that is different from a direction in which some others of the second lights of the first array of second lights are pointed; and at least some of the second lights of the second array of second lights are pointed in a direction that is different from a direction in which some others of the second lights of the second array of second lights are pointed; and wherein: there is a first gap between the first array of first lights and the second array of first lights; at least some of the one or more first cameras are positioned within the first gap; there is a second gap between the first array of second lights and the second array of second lights; and at least some of the one or more second cameras are positioned within the second gap (FIGS. 3-4, lights 15 are pointed in different directions and cameras 5 are positioned between gaps). At the time before the effective filing date of the claimed invention to use Buschelman’s teachings to include wherein: at least some of the first lights of the first array of first lights are pointed in a direction that is different from a direction in which some others of the first lights of the first array of first lights are pointed; at least some of the first lights of the second array of first lights are pointed in a direction that is different from a direction in which some others of the first lights of the second array of first lights are pointed; at least some of the second lights of the first array of second lights are pointed in a direction that is different from a direction in which some others of the second lights of the first array of second lights are pointed; and at least some of the second lights of the second array of second lights are pointed in a direction that is different from a direction in which some others of the second lights of the second array of second lights are pointed; and wherein: there is a first gap between the first array of first lights and the second array of first lights; at least some of the one or more first cameras are positioned within the first gap; there is a second gap between the first array of second lights and the second array of second lights; and at least some of the one or more second cameras are positioned within the second gap in order to produce a better quality image of the train as it moves through the portal (Buschelman; [0010]-[0012]) . This is a provisional nonstatutory double patenting rejection. Allowable Subject Matter Claims 1-20 would be allowable if the double patenting rejection set forth is overcome. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOUBACAR ABDOU TCHOUSSOU whose telephone number is (571)272-7625. The examiner can normally be reached M-F 8am-4pm. 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, Chris Kelley can be reached at 5712727331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BOUBACAR ABDOU TCHOUSSOU/Primary Examiner, Art Unit 2482 Application/Control Number: 19/254,081 Page 2 Art Unit: 2482 Application/Control Number: 19/254,081 Page 3 Art Unit: 2482 Application/Control Number: 19/254,081 Page 4 Art Unit: 2482 Application/Control Number: 19/254,081 Page 5 Art Unit: 2482 Application/Control Number: 19/254,081 Page 6 Art Unit: 2482 Application/Control Number: 19/254,081 Page 7 Art Unit: 2482 Application/Control Number: 19/254,081 Page 8 Art Unit: 2482
Prosecution Insights