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 .
Status of Application
The Remarks and Amendments filed on 02/12/26 are acknowledged.
New claim 21 was added.
Claims 1-21 are pending and included in the prosecution.
Response to Amendments/Arguments
Rejection of claims under 35 USC § 103
Applicant’s arguments (Pages 1-7, filed 02/12/26) with respect to the following rejections have been fully considered and are persuasive.
Rejection of claims 1-17 and 19-20 under 35 U.S.C. 103 as being unpatentable over Ryder et al. (US 5,154,325) in view of Frey (US 836,677 A), Barry et al. (WO 00/38552 A1), Seabrook, Jr. et al. (US 5,906,825), and Campbell, JR. (US 2016/0143291 A1)
Rejection of claims 1-17 and 19-20 under 35 U.S.C. 103 as being unpatentable over Laurin (US 4,485,064) in view of Frey, Barry et al., Seabrook, Jr. et al., and Campbell, JR.
Rejection of claims 1-20 under 35 U.S.C. 103 as being unpatentable over Nakamura (US 6,179,141 B1) in view of Frey, Barry et al., and Seabrook, Jr. et al., and Campbell, JR.
Applicant’s argument that one of ordinary skill in the art would not combine Ryder, Frey, Barry, Seabrook, and Laurin with Campbell as Campbell incorporates their antimicrobial additives into a glass substrate and since none of the primary references teach polymeric materials. Therefore, the obviousness rejections listed above are withdrawn.
Maintained Rejections
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 1-20 are again rejected and new claim 21 is also rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,926,463 B2 (the ‘463 Patent).
Although the conflicting claims are not identical, they are not patentably distinct from each other because they are drawn to a bottle having an antimicrobial property for reducing food spoilage in the bottle, and therefore, encompass overlapping or coextensive subject matter.
One difference is that claims 1, 7, and 14 of the ‘463 Patent recite that the cap comprises one or more teeth for releasably coupling the cap to the body, whereas instant claims don’t recite this limitation.
However, since instant claims recite the transitional phrase “comprising,” which is considered open language, it allows the inclusion of additional features, such as the cap comprising one or more teeth.
Another difference is that claim 1 of the ‘463 Patent recites that an antimicrobial agent is present in the wall of the body, in the cap, in the seal, and in the locking ring, whereas instant claim 1 recites that an antimicrobial agent is present in the wall of the body, in the cap, and in at least one of the seal, the locking ring, and a combination thereof.
Based on the recitation of “at least one of” and the recitation of “a combination thereof,” in instant claim 1, one of ordinary skill in the art would have found it obvious to include an antimicrobial agent in the wall of the body, in the cap, in the seal, and in the locking ring, as recited in claim 1 of the ‘463 Patent.
Therefore, instant claims are obvious over claims of the ‘463 Patent and they are not patentably distinct over each other.
Response to Arguments
Applicant’s arguments (Page 8, filed 02/12/26) with respect to the rejection of claims 1-20 on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,926,463 (the ‘463 patent) have been fully considered.
Applicant requests that the requirement for a terminal disclaimer be held in abeyance until such time as the application is otherwise in condition for allowance, and states that this approach is consistent with MPEP § 804.02.
Applicant’s request is acknowledged. However, until such time that a terminal disclaimer over the ‘463 patent is filed, the double patenting rejection will be maintained for the reasons given above.
Conclusion
No claims are allowed.
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 extension fee 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 ARADHANA SASAN whose telephone number is (571)272-9022. The examiner can normally be reached Monday to Friday from 6:30 am to 3:00 pm.
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, Robert A. Wax can be reached on 571-272-6023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ARADHANA SASAN/Primary Examiner, Art Unit 1615
Prosecution Insights