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.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-11 of U.S. Patent No. 12,655,559. Although the claims at issue are not identical, they are not patentably distinct from each other. The only differences between the application claim and the patent claims are that the patent claims are much more specific. Accordingly, the patent claims are in essence a "species" of the generic invention of the application claim. It has been held that the generic invention is "anticipated" by the "species" within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Additionally, note that claims 9-11 of the patent are fully capable of resulting in the forming of “patterned tufted articles having different sewing gauges using a single machine gauge spacing”.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 15 of U.S. Patent No. 12,655,559. While the claims in the present application are directed to a method of tufting and the claims of the patent are directed to a tufting machine, note that the structural product as claimed in the patent already inherently processes or dictates the physical configuration necessary to perform the claimed method steps. Therefore, the claimed method is an obvious variation of, and is not patentably distinct from, the product claims of the patent. This is especially true because the process of using, as claimed within the application, a backing feed, at least one needle bar having needles and a yarn feed mechanism together is considered old and known in the art and is even disclosed as function within the patent. Additionally, even though claims 14 and 15 of the patent are directed at a tufting machine, the claim language thereof is directed at a method of tufting as performed by a control system. As previously discussed, it has been held that the generic invention is "anticipated" by the "species" within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
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 and 2 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.
Within lines 9-12 of claim 1, the applicant recites, “wherein the plurality of needles and the plurality of gauge parts are shifted in one or more selected shift increments sufficient to form patterned tufted articles having different sewing gauges using a single machine gauge spacing at which the needles of the plurality of needles are spaced along the at least one needle bar”. Firstly, this recitation is considered indefinite because it unclear if the plurality of needles and the plurality of gauge parts are shifted in the same one or more selected shift increments or different one or more selected shift increments. For the purpose of this Office Action, the one or more selected shift increments will be considered the same for both of the plurality of needles and the plurality of gauge parts. Additionally, the term “sufficient” in line 10 of the claim (as shown in the recitation noted above) is a relative term which renders the claim indefinite. The term “sufficient” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Note that is unclear what selected shift increments are necessary to result in patterned tufted articles having different sewing gauges using a single machine gauge spacing”.
All remaining claims are also rejected under 35 U.S.C. 112(b) as being dependent from a rejected base claim.
Allowable Subject Matter
Claims 1 and 2 would be allowable if the double patenting rejection is overcome and the claims are rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Note that the prior art fails to disclose transversely shifting, with respect to a direction of movement of the backing, both “the plurality of needles and the plurality of gauge parts” in “one or more selected shift increments sufficient to form patterned tufted articles having different sewing gauges using a single machine gauge spacing at which the needles of the plurality of needles are spaced along the at least one needle bar”. Note that both HALL (US 2015/0159323 A1) and FROST et al. (US 2016/0069010 A1) disclose the shifting of a plurality of needles transverse with respect to a direction of movement of backing; however, there is no transverse shifting of gauge parts as claimed. Note that JACKSON (US 3,850,120) discloses the transverse shifting of gauge parts to allow loopers (32) to move in an oblique direction (26) (Figures 1-3); however, JACKSON fails to disclose transverse shifting of both a plurality of needles (24) and the plurality of gauge parts (32) in “one or more selected shift increments sufficient to form patterned tufted articles having different sewing gauges using a single machine gauge spacing at which the needles of the plurality of needles are spaced along the at least one needle bar”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please note the “Allowable Subject Matter” section above for discussion of the relevant art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN E DURHAM whose telephone number is (571)272-8642. The examiner can normally be reached 8:00 am - 4:00 pm, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alissa J Tompkins can be reached at 571-272-3425. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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NED
/NATHAN E DURHAM/Primary Examiner, Art Unit 3732
