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 (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 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.
Claim(s) 1-8, 10-18 and 21-28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nielsen et al. (US-20110079058-A1).
Nielsen discloses:
7. A method of controlling access to contents within a lockable container, the method comprising: providing a lockable container (Fig. 5) that comprises: a first element comprising: a cylindrical member (100) comprising an annular sidewall forming a first open end at a proximal end thereof and a second open end at a distal end thereof (Fig. 2), the first open end having a first undulating perimeter defining a first notch (a, Figs. 1 and 2 labeled below) and a second open end having a second undulating perimeter formed with defining a second notch (b), the second notch defining an unlocking opening (for locking with c) extending along at least a portion of the annular sidewall from the first open end; a second element mateable with the first element and comprising: a member (120) comprising an annular sidewall forming an open end and a closed end and wherein the open end of the member of the second element is slidingly engageable with the second open end of the cylindrical member of the first element (Fig. 2), the second element rotatably supporting at least two rings (40), a retainer (10) comprising a plurality of projections (Figs. 3, 4 the securing projections) formed on an exterior surface thereof (they are formed on both the interior and exterior), wherein the projections cooperate with the rings to close the open end of the member of the second element to control access to an interior of the container for capturing the rings on the member and covering the first open end, the retainer having an annular sidewall forming an open end slidingly engageable over the first open end of the cylindrical member of the first element (par. 0147).
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8. The method of claim 7 further comprising fixedly attaching the retainer to the cylindrical member (Fig. 5).
10. The method of claim 7, wherein providing the retainer comprises forming a closed end at a proximal end of the annular sidewall (Fig. 4).
11. The method of claim 7, further comprising forming an belled portion (110) at the open end of the second element to support the rings.
12. The method of claim 7 further comprising forming an unlocking opening and a plurality of alignment openings in the cylindrical member (Fig. 3).
13. The method of claim 7, wherein the rings are for setting a combination code for locking the retainer to the second element, each ring comprising an outer peripheral surface and an inner peripheral surface, wherein a plurality of identification elements is formed on the outer peripheral surface (par. 0007).
14. The method of claim 13, wherein a plurality of selectively removable tabs (50) are formed on the inner peripheral surface.
15. The method of claim 13, wherein the combination code is preset, providing a code (par. 0008).
16. The method of claim 15, wherein the providing a code comprises providing a scannable code (Fig. 1).
17. The method of claim 7 further comprising forming an annular flange (110) on the second open end of the cylindrical member to retain the rings.
18. The method of claim 7, wherein the open end of the second element is structured and arranged to slidingly fit inside the cylindrical member of the first element (Fig. 4, at locking lug structure).
21. A method of controlling access to contents within a lockable container, the method comprising: providing a lockable container (Fig. 5) that comprises: a first element comprising: a member (100) comprising: a sidewall forming a first open end at a proximal end thereof and a second open end at a distal end thereof (Fig. 2); the first open end having a first undulating perimeter defining a first notch (a), a plurality of rings (40) rotatably supported by the member, and a second element mateable with the first element (Fig. 2) and comprising: a structure (120) that cooperates with the rings to close the second open end to control access to an interior of the lockable container, wherein said plurality of rings further comprise a plurality of corresponding selectively removable tabs (50) formed on an inner peripheral surface of said rings.
22. The method of claim 21, wherein providing the structure of the second element comprises providing a plurality of protrusions formed on an exterior surface of the second element (Figs. 1, 2)
23. The method of claim 22, wherein providing the plurality of protrusions comprises providing protrusions that are structured and arranged to slidingly pass through an unlocking opening (Figs. 2, 4, the locking lugs).
24. The method of claim 22, wherein providing the first element further comprises providing a retainer comprising a first open end at a proximal end thereof and a second closed end at a distal end thereof (Fig. 2).
25. (New) A method of controlling access to contents within a lockable container, the method comprising: providing a lockable container (Fig. 5) that comprises: a first element comprising: a cylindrical member (100) comprising an annular sidewall forming a first open end at a proximal end thereof and a second open end at a distal end thereof, the second open end having an undulating perimeter defining a notch (b), at least two rings (40) rotatably supported by the annular ring of the cylindrical member, and a retainer (10) for capturing the rings on the cylindrical member and covering the first open end; a second element (120) mateable with the first element and comprising: a member comprising an annular sidewall forming an open end and a closed end and further comprising a plurality of projections formed on an exterior surface thereof (Fig. 1), such that the projections cooperate with the rings to close the second open end of the cylindrical member of the first clement, wherein the rings are for setting a combination code for locking the cylindrical member to the second element, further wherein the combination code is preset (all components cooperate together).
26. (New) The method of claim 25, wherein providing the preset code comprises providing a scannable code (Fig. 1).
27, (New) The method of claim 25, wherein providing the rings comprises providing each ring having an outer peripheral surface and an inner peripheral surface, wherein a plurality of identification elements is formed on the outer peripheral surface (Figs 1, 2).
28. The method of claim 25, wherein providing the rings comprises providing a plurality of selectively removable tabs (50) formed on the inner peripheral surface.
29. The method of claim 21 providing the member further comprises providing a cylindrical member and the sidewall comprises an annular sidewall (Fig. 1).
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.
Claims 7-18, 21-28 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-24 of U.S. Patent No. 10,842,713. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are generally broader in scope than the patent claims and therefore are anticipated by the patent claims. Furthermore, It would have been obvious to one of ordinary skill in the art at the time the invention was made to have to have altered the location of the projections since it has been held that rearranging parts of an invention involves only routine skill in the art. And It would have been obvious to one of ordinary skill in the art before the effective filing date to have manufactured the claims with notches as claimed, as taught by Nielsen above so that components could interlock with each other.
Response to Arguments
Applicant's arguments filed 12112025 have been fully considered but they are not persuasive. The applicant’s arguments have been addressed in the modified rejection above.
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 JEFFREY R ALLEN whose telephone number is (571)270-7426. The examiner can normally be reached 9:00 am - 5:00 pm, Monday-Friday.
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/JEFFREY R ALLEN/Primary Examiner, Art Unit 3733