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 § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21, 22, 25, 31, 32 and 40 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Cuculic et al. (US 3450100).
For claim 21, Cuculic et al. teach a method of relocating birds within a structure, the method comprising: installing a bird relocation system, the bird relocation system comprising; at least one perimeter net (68); and wherein the at least one perimeter net is positioned at or near the ceiling of the structure (Figure 1 shows that perimeter net (68) is positioned at or near the ceiling (12) of the structure (1)).
For claim 22, Cuculic et al. teach wherein the at least one perimeter net (68) is installed such that one side of the at least one perimeter net is substantially in contact with one side (14 and/or 16, see Figure 1) of the structure.
For claim 25, Cuculic et al. teach installing at least one trapping net (46).
For claim 31, Cuculic et al. teach wherein the bird relocation system comprises at least two perimeter nets (second net (68) on the opposite side of first net (68), see Figure 2).
For claim 32, Cuculic et al. teach wherein the bird relocation system comprises at least two trapping nets (two nets (46), see Figure 4).
For claim 40, Cuculic et al. teach a method of relocating birds within a structure, the method comprising: installing a bird relocation system, the bird relocation system comprising; at least one perimeter net (68), and at least one flushing device (46); and flushing the bird toward the at least one perimeter net and into the perimeter net (see Figure 2), wherein the at least one perimeter net is positioned at or near a ceiling of the structure (Figure 1 shows that perimeter net (68) is positioned at or near the ceiling (12) of the structure (1)).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 23, 24 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Cuculic et al. (US 3450100).
For claim 23, as described above, Cuculic et al. disclose most of the claimed invention except for mentioning wherein the at least one perimeter net is placed within the structure such that the square footage available for the bird to travel within the structure is approximately halved.
However, with respect to the limitation “that the square footage available for the bird to travel within the structure is approximately halved”, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the teaching of Cuculic et al. so as to include the at least one perimeter net is placed within the structure such that the square footage available for the bird to travel within the structure is approximately halved, since to do so would be considered as a matter of design choice depended on the intended use of the user, wherein no stated problem is solved, or any new or unexpected result achieved, and it appears that the invention would perform equally well with the placement of the perimeter net used in Cuculic et al.
For claim 24, as described above, Cuculic et al. disclose most of the claimed invention except for mentioning wherein the at least one perimeter net is placed at a height above the floor of the structure based on the species of the bird being relocated. However, it is noted that the location of the perimeter net is considered as a matter of design choice depended on the intended use of the user, wherein no stated problem is solved, or any new or unexpected result achieved, and it appears that the invention would perform equally well with the placement of the perimeter net used in Cuculic et al.
For claim 26, as described above, Cuculic et al. teach all the claimed invention except for the use of a specific material such as mist net. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the teaching of Cuculic et al. so as to include the use of mist nets, since using another type of shelf system material is considered as a matter of design choice depended on its suitability for the intended use and/or the availability of the material, wherein no stated problem is solved or any new or unexpected result achieved, since it appears that the invention would perform equally well with the type of material used in Cuculic et al..
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 obviousness-type 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 21-40 are rejected on the ground of nonstatutory double patenting over claims 1-16 of U. S. Patent No. 10,251,374 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “a bird relocation system comprising at least one perimeter net, at least one trapping net, and at least one flushing device”.
Claims 21-40 are rejected on the ground of nonstatutory double patenting over claims 1-8 of U. S. Patent No. 11,064,683 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “a bird relocation system comprising at least one perimeter net, at least one trapping net, and at least one flushing device”.
Claims 21-40 are rejected on the ground of nonstatutory double patenting over claims 1-17 of U. S. Patent No. 10,729,108 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “a bird relocation system comprising at least one perimeter net, at least one trapping net, and at least one flushing device”.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Allowable Subject Matter
Claims 27-30 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.
Response to Arguments
Applicant's arguments filed 10/20/25 have been fully considered but they are not persuasive.
Applicant argues that Cuculic does not teach “perimeter net”. Applicant’s argument has been acknowledged; however, it is noted that the Examiner is interpreting the term “net” as “an openwork fabric of string, rope, wire, ect; mesh” as defined in Collins English Dictionary — Complete & Unabridged" 2012 Digital Edition © William Collins Sons & Co. Ltd. 1979, 1986 © HarperCollins Publishers 1998, 2000, 2003, 2005, 2006, 2007, 2009, 2012 (online version at Dictionary.com). Therefore, as shown in Figure 3, Cuculic clearly teaches a perimeter net (68), i.e., “an openwork fabric of…wire; mesh”.
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.
Note, although the examiner recites certain excerpts for the prior art, MPEP 2141.02 VI states “PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRINH T NGUYEN whose telephone number is (571)272-6906. The examiner can normally be reached on Monday-Friday 7:00-3:30.
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, Timothy Collins can be reached on 571-272-6886. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TRINH T NGUYEN/Primary Examiner, Art Unit 3644