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.
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Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-18 of U.S. Patent No. 12,240,009. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1 and 15 of US‘009 includes every feature of Claim 1 of the present application; the recited limitation “attracting excess oil from the spray zone towards the at least one inductor bar via the difference between the first charge and the second charge” in present Claim 1 merely expounds upon an effect of the method claimed in US’009, implied by the combination of limitations, including differences in charge between the inductor bar and the oil and the application of vacuum through at least one inductor bar to recover excess oil with a first charge in Claim 1 of US’009. See, also Claims 2-5 and 13 which suggest “attracting excess oil from the spray zone towards the at least one inductor bar via the difference between the first charge and the second charge,” given that excess oil is vacuumed through a slot through an inductor bar.
Regarding Claim 2, Claims 6,18 of US’009 recites other charged inductor bars with different relative charges. The recited “attracting droplets of oil within the volume of oil towards the inductor bars” in present Claim 2 is merely an expanded description of a function of the inductor bars in US’009, and it would have been obvious that differently charged induction bars would have had the effect of attracting a charged oil droplet towards them.
Claim 3, see US’009, Claims 6,9,10
Claim 4, see US’009, Claim 14
Claim 5, see US’009, Claim 11 (also adjusting voltage to a specific voltage is an obvious optimization of the process to accelerate oil droplets in a desired direction and volume to achieve successful spraying of a target)
Claim 6, cycling between voltage charges as additional blanks of material move through a spray zone is obvious duplication of steps, given the claimed steps for managing a second blank in Claim 11 of US’009.
Claims 7-8, spraying and vacuuming continuously or in batch are prima facie obvious modifications. MPEP 2144.04.V.E.
Claim 9, see US’009, Claim 9
Claim 10, see US’009, Claim 18 (droplets in an interior of an inductor bar implies “hollow”)
Claim 11, see US’009, Claims 6,9
Claim 12, see US’009, Claim 9
Claim 13, see US’009, Claim 5,6,9
Claim 14, see US’009, Claims 5-8 and optimization of charges/ forces to accelerate an oil droplet
Claim 15, see US’009, Claims 10,13,16,18
Claim 16, see US’009, Claim 18, and given a plurality of inductor bars and a slot through at least one of them, the choice to assign a slot to any or all inductor bars is a prima facie obvious choice (e.g. to vacuum an excess oil on or in the vicinity of any given inductor bar.
Claims 17-18, see US’009, Claims 5,6,9 and obvious optimization of charges/forces to direct charged oil in a desired direction for spraying and/ or vacuuming
Claim 19, see Claims 16-18 above
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of U.S. Patent No. US 12,011,732. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of US’732 recites in detail the claimed method in Claims 1-19. In addition, specific voltages and slot placement in specific inductor bars represent prima facie obvious optimization of the claimed method in US’732 to provide desired forces on charged oil droplets to direct their acceleration towards a substrate and/ or towards an inductor bar for vacuum and recovery. See, also, the double patenting rejection over claims in U.S. Patent No. 12,240,009 above for comments and arguments which apply equally to this rejection.
Claim 20 rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-18 of U.S. Patent No. 12,240,009 in view of Schaming (US 4,488,505).
Regarding Claim 20, Claims 1-18 of US’009 fail to claim additionally steps of filtering excess oil and returning the excess oil to at least one spray nozzle subsequent to filtering excess oil. It is conventional to recycle used (i.e. excess) oil and to filter it before coating a substrate with recycled oil. For example, Schaming (US’505), published in 1984, teaches an analogous method of electrostatically coating a substrate with oil (Abstract) and also teaches recovering excess oil and filtering recovered oil before coating a substrate with it (Abstract). Thus, it would have been obvious to modify the claims of US’009 by filtering the excess oil and returning the excess oil to at least one spray nozzle subsequent to filtering the excess oil, because it was conventional to filter oil after recovery and before applying recovered oil to a substrate, and US’505 suggests such recycling steps.
Claim 20 rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of U.S. Patent No. 12,011,732 in view of Schaming (US 4,488,505).
Regarding Claim 20, Claims 1-15 of US’732 fail to claim additionally steps of filtering excess oil and returning the excess oil to at least one spray nozzle subsequent to filtering excess oil. It is conventional to recycle used (i.e. excess) oil and to filter it before coating a substrate with recycled oil. For example, US’505, published in 1984, teaches an analogous method of electrostatically coating a substrate with oil (Abstract) and also teaches recovering excess oil and filtering recovered oil before coating a substrate with it (Abstract). Thus, it would have been obvious to modify the claims of US’732 by filtering the excess oil and returning the excess oil to at least one spray nozzle subsequent to filtering the excess oil, because it was conventional to filter oil after recovery and before applying recovered oil to a substrate, and US’505 suggests such recycling steps.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Di Gioia et al. (US 2016/0184844) method of spraying oil comprising: an upper spray system having at least one upper spray nozzle therein (Fig. 1; [0036]); at least one upper inductor bar within the upper spray system 220 (Fig. 1; [0036]); a lower spray system 24 having at least one lower spray nozzle therein (Fig. 1; [0035]); at least one lower inductor bar within the lower spray system 220/24 (Fig. 1; [0036]); a spray zone defined between the upper spray system and lower spray system (Fig. 1).
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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