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 .
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 5, 6 and 8 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 5 recites the limitation "the jacket" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the second face" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the tubular member" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,479,474. Although the claims at issue are not identical, they are not patentably distinct from each other because encompass all if the limitations of the current application as recited.
Claims: 1. A bearing assembly system for a vehicle steering system comprising: a tubular member having a radially inwardly protruding shoulder, the tubular member having a stake portion angling radially inwardly; a bearing disposed within the tubular member and in contact with the radially inwardly protruding shoulder; and a retainer formed of spring metal disposed within the tubular member and in contact with the bearing, the bearing disposed between the retainer and the radially inwardly protruding shoulder to maintain a position of the bearing (claims 8, 14). 2. The steering column assembly of claim 1, wherein the retainer extends circumferentially from a first retainer end to a second retainer end, wherein the first retainer end and the second retainer end define a gap therebetween (claim 10). 3. The steering column assembly of claim 2, wherein the first retainer end includes a radially inwardly projecting extension (claim 12). 4. The steering column assembly of claim 3, wherein the second retainer end includes a radially inwardly projecting extension (claim 13). 5. The steering column assembly of claim 1, wherein the jacket is an upper jacket telescopingly received within a lower jacket (claim 5). 6. The steering column assembly of claim 1, wherein the second face of the bearing is in contact with a radially inwardly protruding shoulder of the jacket to define an axial position of the bearing (claim 6). 7. A steering column assembly comprising: a jacket defining a bore with an inner jacket diameter and having an open axial end, the jacket having a stake portion angling radially inwardly into the bore, the stake portion having a stake surface; a steering shaft at least partially disposed within the bore of the jacket, the steering shaft rotatable within, and relative to, the jacket; and a bearing assembly system comprising: a bearing disposed within the bore of jacket, the bearing having a first face, a second face opposite the first face, an outer bearing diameter, and an inner bearing diameter; and a retainer formed of a resilient material, the retainer in contact with the first face of the bearing and the inner jacket diameter, the retainer having an angled surface in contact with the stake surface in a fully assembled condition (claim 1). 8. The bearing assembly system of claim 7, wherein the tubular member is a steering column jacket (claim 9). 9. The bearing assembly system of claim 8, wherein the steering column jacket is an upper jacket telescopingly received within a lower jacket (claim 5). 10. The bearing assembly system of claim 7, wherein the retainer extends circumferentially from a first retainer end to a second retainer end, wherein the first retainer end and the second retainer end define a gap therebetween (claim 2). 11. The bearing assembly system of claim 10, wherein the first retainer end includes a radially inwardly projecting extension (claim 3). 12. The bearing assembly system of claim 11, wherein the second retainer end includes a radially inwardly projecting extension (claim 4). 13. The bearing assembly system of claim 7, wherein the retainer is formed of spring metal (claim 7). 14. The bearing assembly system of claim 7, wherein the angled surface is non-parallel to the first face of the bearing (claim 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicole Verley whose telephone number is (571)270-3542. The examiner can normally be reached 10AM-6PM.
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, Jason Shanske can be reached at (571) 270-5985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE T VERLEY/Primary Examiner, Art Unit 3614
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