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 REJECTION
Non-Statutory Double Patenting
General information
The non-statutory 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. See 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) may be used to overcome an actual or provisional rejection based on a non-statutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). A registered attorney or agent of record may sign a terminal disclaimer.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application will determine what form 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/process/file/efs/guidance/eTD-info-I.jsp.
Basis for rejection
The claim is provisionally rejected on the grounds of non-statutory double patenting of the claim of US Patent No. US-D1102496-S. Although the conflicting claims are not identical, they are not patentably distinct from each other because the differences with regards additional straight section under the drill bit section are minor when compared to the overall appearance of the designs. This is a provisional non-statutory double patenting rejection because the conflicting claims have not in fact been patented.
It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F2d 610, 128 USPQ 539 (CCPA 1961).
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Additional prior art cited
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
CONCLUSION
Accordingly, the claim is rejected under Non-Statutory Double Patenting.
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/O.H.A./Examiner, Art Unit 2936
/JOSEPH KUKELLA/Primary Examiner, Art Unit 2961
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