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 .
Election/Restrictions
Applicant's election with traverse of claims 1-10 in the reply filed on 12/10/2025 is acknowledged. The traversal is on the grounds that the inventions are not independent nor distinct. In this case, this is not found persuasive because the specifics to examine a process, namely the stepwise claim limitations and the material undergoing a change in physical state, are not required when examining a product, its intended use, and is limited only by structural limitations. Although a process claim may contain product limitations, they are only given patentable weight as to how the structure affects the stepwise process. Similarly, the specifics of a product do not require the same consideration of stepwise process limitations as in a process claim but rather only that the structure is capable of performing such process step.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
Applicant is reminded of MPEP 2004, in which it states:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents, which have been specifically brought to applicant’s attention and/or known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff'd, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. Denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ 2d 1823 (Fed. Cir. 1995) (see MPEP § 2004).
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 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 5 of U.S. Patent No. 10,675,817. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches an overlay applicator tray comprising:
a cradle comprising a device slot configured to hold an electronic device;
an overlay applicator, wherein the overlay applicator comprises an overlay layer and an adhesive release liner, wherein the overlay layer comprises an adhesive side configured to be adhered to a screen of the electronic device, and wherein the adhesive release liner is removably attached to the adhesive side of the overlay layer;
an alignment piece coupling the cradle to the overlay applicator, wherein the alignment piece is configured to align the overlay layer of the overlay applicator with the screen as the overlay layer is applied to the screen when the electronic device is held in the device slot, and wherein the overlay applicator is pre-aligned and attached during manufacturing with the device slot of the cradle using the alignment piece; and
a pull tab configured to be pulled to remove the adhesive release liner from the adhesive side of the overlay layer and expose the adhesive side of the overlay layer.
Claims 1, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 4 of U.S. Patent No. 11,772,320. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent teaches an overlay applicator tray comprising:
a cradle comprising a device slot configured to hold an electronic device;
an overlay applicator, wherein the overlay applicator comprises an overlay layer and an adhesive release liner, wherein the overlay layer comprises an adhesive side configured to be adhered to a screen of the electronic device, and wherein the adhesive release liner is removably attached to the adhesive side of the overlay layer;
an alignment piece coupling the cradle to the overlay applicator, wherein the alignment piece is configured to align the overlay layer of the overlay applicator with the screen as the overlay layer is applied to the screen when the electronic device is held in the device slot, and wherein the overlay applicator is pre-aligned and attached during manufacturing with the device slot of the cradle using the alignment piece; and
a pull tab configured to be pulled to remove the adhesive release liner from the adhesive side of the overlay layer and expose the adhesive side of the overlay layer.
Allowable Subject Matter
Claims 2-5 and 7-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SONYA M SENGUPTA whose telephone number is (571)272-6019. The examiner can normally be reached Monday-Friday, 9:30am-5:00pm.
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, Philip Tucker can be reached at 571-272-1095. 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.
/SONYA M SENGUPTA/Primary Examiner, Art Unit 1745