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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Examiner's Note.
Examiner has cited particular paragraphs and/or columns and line numbers and/or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
The Examiner notes that it has been held that a recitation that a structural element is "adapted to", “configured to”, “capable of”, “arranged to”, “intended to”, "so as" or “operable to” perform a function does not limit the claim to a particular structure and thus only requires the ability to so perform the function. (See In re Hutchison, 69 USPQ 138. See also, MPEP 2111.04) As such, under the broadest reasonable interpretation of the claims and the prior art, the recitations of "adapted to", “configured to”, “capable of”, “arranged to”, “intended to”, "so as" or “operable to” will be deemed met by an element in the prior art capable of performing the function recited in connection with "adapted to", “configured to”, “capable of”, “arranged to”, “intended to”, "so as" or “operable to”.
The Examiner has cited particular paragraphs or columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested of the applicant in preparing responses, to fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner. SEE MPEP 2141.02 [R-07.2015] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert, denied, 469 U.S. 851 (1984). See also MPEP §2123.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 12 and 19 and their dependent claims of the instant application rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 8 and 15 and their dependent claims of U.S. Patent No. US 12080907.
Although the conflicting claims are not identical, they are not patentably distinct from
each other because they are obvious variations.
Information Disclosure Statement
An applicant's duty of disclosure of material information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work." Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573, 220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to "bury" it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind.1992); Molins PLC v. Textron Inc., 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et aL, 175 U.S.P.Q. 260, 272 (S.D. FI. 1972). It is unreasonable for Examiner to review all of the cited references thoroughly. By initialing the accompanying 1449 forms, Examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been made.
Claim Objections
Claim 1, 9, 11, 12 and 17-20 are objected to because of the following informalities:
The term “to be” is not a positive limitation inasmuch as the term is in future tense and implies a change in condition in the future. This does not serve to limit the structure in the present tense. Appropriate correction is required.
Claims 1, 11, 12 and 18-20 objected to because of the following informalities: (thereby). Appropriate correction is required.
The above are only examples of such informalities. The Applicant is required to review the entire claims and correct all such informalities.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. The above identified claims will be examined as best understood.
Re claims 1, 11, 12 and 18-20 the claim recites "can be" is indirect, suggests optionally, and passive which renders any recitation claimed after not being patentable weight. Appropriate correction is required. Claims should be amended to recite "is" or "will be".
The above are only examples of such informalities. The Applicant is required to review the entire claims and correct all such informalities.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHAT BADAWI whose telephone number is (571)270-5983. The examiner can normally be reached on Mon-Fri during office hours. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSHUA MICHENER can be reached on 571-272-1467. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MEDHAT BADAWI/Primary Examiner, Art Unit 3642