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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 1 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 2 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 2 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 3 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 3 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 9 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 4 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 10 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 11 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 6 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 12 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 7 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 13 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 14 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 9 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 15 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 10 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 16 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 11 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 17 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 12 of copending Application No. 19/263,649 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Allowable Subject Matter
The claims would be allowable if rewritten or amended to overcome the double patenting rejection as set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The claims are patentable over the prior art of record because the teachings of the references taken as a whole do not show or render obvious the combination set forth in claim 1, including every structural element recited in the claims. Specifically, prior art of record does not teach or disclose the following: “An oil distribution system (10) for an internal combustion engine valvetrain, said oil distribution system comprising: a rocker arm base member (100) having a base upper surface (102), a base lower surface (104), a plurality of sidewalls (106) spanning a distance between the base upper surface and the base lower surface, and a plurality of base mounting holes (108) extending from the base upper surface through the base lower surface, said rocker arm base member comprising: a distribution slot (110) disposed in the base lower surface; a plurality of oil receiving holes (120) wherein at least a first set of the plurality of oil receiving holes extends from at least one sidewall of the plurality of sidewalls; and a plurality of oil distribution holes (130) passing from the distribution slot through the base upper surface; and a base plate (200) configured to cover at least a portion of the base lower surface including at least a portion of the distribution slot; and wherein the distribution slot is configured to receive oil from the plurality of oil receiving holes and pass at least a first portion of the oil to the plurality of oil distribution holes, and wherein said oil distribution holes are configured to discharge at least a second portion of the oil past the base upper surface.”
More specifically, Joshi et al., US PGPub 2013/0228235 is considered the closest prior art of record. Joshi et al. disclose the basic structure as claimed however possesses a modified flow directionality. This distinction has been identified in the Remarks filed 6/10/2026, and applicants argument was found persuasive. Modifying the flow directionality in the manner required in claim 1 is considered novel and non-obvious.
None of the references of the prior art teach or suggest the elements of the lubrication system as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the system in the manner required by the claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A RIEGELMAN whose telephone number is (571)270-7956. The examiner can normally be reached 8-6 EST Monday - Friday.
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, Robert Hodge can be reached at (571) 272-2097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL A. RIEGELMAN
Primary Examiner
Art Unit 3654
/MICHAEL A RIEGELMAN/Primary Examiner, Art Unit 3654
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