Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 7,708,159 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11-06-2024 has been entered.
Double Patenting
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. A non-statutory 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 non-statutory 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 non-statutory 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 and 4-6 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 9,850,019 in view of Farrar-2008/0053949, Jones-3,712,497 and Collette, et al. 2002/0150703.
Regarding claims 1 and 4-6, Patent ‘019 claim 9 claims the invention as claimed with the exception of the opening diameter. Farrar discloses a conventional standard bottle mouth opening diameter is 28mm. It would have been obvious to have provided the container of claim 9 of the ‘019 patent with the “conventional standard” bottle opening diameter of 28mm (within the claimed ranges of 25-30 mm and 26-28mm) taught by Farrar, in order to provide a bottle with a standard sized bottle opening, closeable by standard size screw caps, which is able to withstand the pressures of carbonated drinks while being less likely to fall over due to the claimed lower center of gravity.
The specific distances or lengths claimed in claims 1 and 4-6 all fall within the ranges claimed in claim 9 of the ‘019 patent. For example, the weight of the neck being 2.5 grams is within the claimed range in claim 1 of the ‘019 patent of 0-3.0 grams; in reissue claim 1 the vertical distance from the top of the neck portion to the bottom of the tamper bead and the distance from the bottom of the tamper bead to the bottom of the support ring total 0.435 inches. Since the top of the neck portion is where the dispensing opening is located, and since claim 1 of the ‘019 patent calls for the distance from the opening to the lower surface of the support flange is 0.58 inches or less, this distance (0.435 in) in reissue claim 1 falls within the claimed range in the ‘019 patent of 0-0.58 inches. In reissue claim 1, the claimed ratio is 0.425 which falls within the ratio of less than 0.57 found in claim 9 of the ‘019 patent. Regarding the claimed gas range of 20-75 psi, a POSITA at the time of the invention would readily recognize that the claimed range of PSI is well within the known range for plastic soda and beer bottles as evidenced by Jones, which discloses a plastic bottle with a threaded neck/cap for bottling soft drinks and beer needs to withstand pressures of 50-75 psi for these types of beverages-see col. 1 lines 12-28 and col. 2 lines 34-50. A POSITA at the time of the invention would have found it obvious to have the container be capable of holding carbonated beverages with a gas range of 20-75 psi. This range includes PSI that a POSITA at the time of the invention would have recognized is well within the known range for plastic beer and soda bottles- approximately 30psi-60psi for beer and soda-see Collette, et al. 2002/0150703 [0041], and 50-75 psi taught by Jones. As bottling carbonated beverages such as these were common before the time of the invention, providing the bottle or container of claim 9 of the ‘019 patent to be capable of holding carbonated beverages with a gas range of 20-75 psi would have been an obvious modification to a POSITA at the time of the invention to take advantage of the use of plastic bottles (lower weight, low cost of production, etc.) for carbonated beverages.
Claims 1 and 4-6 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 9,738,409 in view of Farrar-2008/0053949, Jones-3,712,497 and Collette, et al. 2002/0150703.
Regarding claims 1 and 4-6, Patent ‘409 claim 9 claims the invention as claimed with the exception of the opening diameter. Farrar discloses a conventional standard bottle mouth opening diameter is 28mm. It would have been obvious to have provided the container of claim 9 of the ‘409 patent with the “conventional standard” bottle opening diameter of 28mm (within the claimed ranges of 25-30 mm and 26-28 mm) taught by Farrar, in order to provide a bottle with a standard sized bottle opening which is able to withstand the pressures of carbonated drinks while being less likely to fall over.
The specific distances or lengths claimed in claims 1 and 4-6 all fall within the ranges claimed in claim 9 of the ‘409 patent. For example, the weight of the neck being 2.5 grams is within the claimed range in claim 1 of the ‘409 patent of 0-3.0 grams; in reissue claim 1 the vertical distance from the top of the neck portion to the bottom of the tamper bead and the distance from the bottom of the tamper bead to the bottom of the support ring total 0.435 inches. Since the top of the neck portion is where the dispensing opening is located, and since claim 1 of the ‘409 patent calls for the distance from the opening to the lower surface of the support flange is 0.58 inches or less, this distance (0.435 in) in reissue claim 1 falls within the claimed range in the ‘409 patent of 0-0.58 inches. In reissue claim 1, the claimed ratio is 0.425 which falls within the ratio of less than 0.57 found in claim 9 of the ‘409 patent. Regarding the claimed gas range of 20-75 psi, a POSITA would readily recognize that the claimed range of PSI is well within the known range for plastic soda and beer bottles as evidenced by Jones, which discloses a plastic bottle with a threaded neck/cap for bottling soft drinks and beer needs to withstand pressures of 50-75 psi for these types of beverages-see col. 1 lines 12-28 and col. 2 lines 34-50. A POSITA at the time of the invention would have found it obvious to have the container be capable of holding carbonated beverages with a gas range of 20-75 psi. This range includes PSI that a POSITA at the time of the invention would have recognized is well within the known range for plastic beer and soda bottles- approximately 30psi-60psi for beer and soda-see Collette, et al. 2002/0150703 [0041], and 50-75 taught by Jones. As bottling carbonated beverages such as these were common before the time of the invention, providing the bottle or container of claim 9 of the ‘409 patent to be capable of holding carbonated beverages with a gas range of 20-75 psi would have been an obvious modification to a POSITA at the time of the invention to take advantage of the use of plastic bottles (weight, low cost of production, etc.) for carbonated beverages.
Claims 1 and 4-6 are rejected on the ground of non-statutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 9,522,759 in view of Farrar-2008/0053949, Jones-3,712,497 and Collette, et al. 2002/0150703.
Regarding claims 1 and 4-6, Patent ‘759 claim 9 claims the invention as claimed with the exception of the opening diameter. Farrar discloses a conventional standard bottle mouth opening diameter is 28mm. It would have been obvious to have provided the container of claim 9 of the ‘759 patent with the “conventional standard” bottle opening diameter of 28mm (within the claimed ranges of 25-30 mm and 26-28 mm) taught by Farrar, in order to provide a bottle with a standard sized bottle opening which is able to withstand the pressures of carbonated drinks while being less likely to fall over.
The specific distances or lengths claimed in claims 1 and 4-6 all fall within the ranges claimed in claim 9 of the ‘759 patent. For example, the weight of the neck being 2.5 grams is within the claimed range in claim 1 of the ‘759 patent of 0-3.0 grams; in reissue claim 1 the vertical distance from the top of the neck portion to the bottom of the tamper bead and the distance from the bottom of the tamper bead to the bottom of the support ring total 0.435 inches. Since the top of the neck portion is where the dispensing opening is located, and since claim 1 of the ‘759 patent calls for the distance from the opening to the lower surface of the support flange is 0.58 inches or less, this distance (0.435 in) in reissue claim 1 falls within the claimed range in the ‘759 patent of 0-0.58 inches. In reissue claim 1, the claimed ratio is 0.425 which falls within the ratio of less than 0.57 found in claim 9 of the ‘759 patent. Regarding the claimed gas range of 20-75 psi, a POSITA at the time of the invention would readily recognize that the claimed range of PSI is well within the known range for plastic soda and beer bottles as evidenced by Jones, which discloses a plastic bottle with a threaded neck/cap for bottling soft drinks and beer needs to withstand pressures of 50-75 psi for these types of beverages-see col. 1 lines 12-28 and col. 2 lines 34-50. A POSITA at the time of the invention would have found it obvious to have the container be capable of holding carbonated beverages with a gas range of 20-75 psi. This range includes PSI that a POSITA at the time of the invention would have recognized is well within the known range for plastic beer and soda bottles- approximately 30psi-60psi for beer and soda-see Collette, et al. 2002/0150703 [0041], and 50-75 taught by Jones. As bottling carbonated beverages such as these were common before the time of the invention, providing the bottle or container of claim 9 of the ‘759 patent to be capable of holding carbonated beverages with a gas range of 20-75 psi would have been an obvious modification to a POSITA at the time of the invention to take advantage of the use of plastic bottles (weight, low cost of production, etc.) for carbonated beverages.
Response to Arguments
Applicant's arguments filed 11-06-2024 have been fully considered but they are not persuasive.
Applicant relies on the Allergan decision to overcome the obviousness-type double patenting (ODP) rejections in the last office action and repeated here above. While the ‘159 patent appears to be the first-filed, first issued, later-expiring claims in the patent family, it should be pointed out that pending claims 1 and 4-6 are not the same as patent claims 1 and 4-6. Each of these claims has been amended and therefore it appears that the pending claims do not fit the fact pattern laid out in Allergan. Additionally, it should be noted that Allergan addressed nonstatutory double patenting as an invalidity defense in infringement litigation, not as a ground of rejection in a reissue proceeding as is the case here.
The doctrine of nonstatutory double patenting also seeks to prevent the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention. In re Van Ornum, 686 F.2d 937, 944-48, 214 USPQ 761, 767-70 (CCPA 1982) (citing Chisum, Patents, § 9.04(2)(b) (1981) ). MPEP 804.02(VI). Further, where both the patent under examination (via a reexamination proceeding or a reissue application) and the reference patent are post-URAA, "an earlier-expiring patent can qualify as an obviousness-type double patenting reference for a later-expiring patent." Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 1217, 110 USPQ2d 1551, 1558 (Fed. Cir. 2014). MPEP 804(I)(D).
Accordingly, the examiner is maintaining the ODP rejections.
Applicant also argues that the examiner’s contention that the ‘019 patent claims concerning the range of the weight of the neck being 0-3.0 grams is in error. The examiner disagrees. The claimed neck weight range in the ‘019 patent clearly includes the claimed weight of the neck in the reissue claims because 2.5 grams is well within the ‘019 range of less than 3 grams. The fact that a 0 gram neck is impossible is not germane to whether a neck weighing 2.5 grams is within the range claimed by the ‘019 patent. A POSITA at the time of the invention would recognize that it clearly falls within the less than 3 grams of the claims of the base patents used in the ODP rejections.
Applicant provides no evidence to support the contention that it would not have been obvious to have provided the bottle claimed in the ‘019 patent with the “conventional” neck opening size of 28mm taught by Farrar. Farrar’s 28mm bottle opening is within the claimed ranges of 25-30mm and 26-28mm and this size being “conventional” would allow the claimed bottle to be easily manufactured and filled using existing manufacturing apparatus and known twist-off caps employed with bottling carbonated fluids. The same can be said of the lack of evidence supporting the contention that the claimed range of PSI taught by Jones is not obvious to incorporate into the bottle claimed in the ‘019 patent. These conventional well-known features would have been obvious to a POSITA at the time of the invention.
Conclusion
Claims 1 and 4-6 are rejected.
None of the pending claims have been amended in any way after the mailing of the Final Rejection on 05-07-2024. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLENN K DAWSON whose telephone number is 571-272-4694. The examiner can normally be reached on M-F 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisors Patricia Engle and Eileen Lillis can be reached at 571-272-6660 and 571-272-6928, respectively.
Any general questions regarding this communication can be directed to the Central Reexamination Unit at 571-272-7705.
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Signed: /GLENN K DAWSON/
Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/Patricia L Engle/ SPRS, Art Unit 3993