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 .
Election/Restrictions
Claim 91 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/29/26.
Claim Rejections - 35 USC § 102
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.
Claims 72-77,80-82, 85,86, 89 and 90 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benjamin, II (US 2009/0040865).
Regarding claim 1, Bengamin discloses an enclosing holder (fig. 1-6b) for a sealed sample container for use in a mechanical shaker, comprising:
a holder base (106) comprising an interior cavity (see fig. 1) having a bottom surface and a top opening (110), said holder base comprising a sample container-engaging feature (base adapter 112 having a step feature 117 which holds the sample container within the holder base. The sample container is not positively recited and is not part of the instant claim) and a first closure engagement feature (upper lip of the holder base as seen in fig. 5, 134); and
a holder top (114) comprising a mated closure engagement feature (lip 132 of holder top 114 that mates with the first closure engagement feature 134) adapted to removably engage with said first closure engagement feature to form a leak-proof seal (this limitation does not further structurally limit the instant claim. The holder top 114 is structurally capable of being removably engaged with the first closure engagement lip 134 as seen in fig. 5), and further comprising a second sample container-engaging feature (opening which surrounds upper end of sample container, see fig. 3c, recess 136);
wherein, when the first closure engagement feature (upper lip of the holder base as seen in fig. 5, ref. 134) is engaged with the mated closure engagement feature (lip 132 of holder top 114 that mates with the first closure engagement feature 134), the enclosing holder forms an air-tight enclosed space that limits or prohibits motion with respect to the enclosing holder of a sealed sample container enclosed in the enclosed space (this limitation does not further structurally limit the instant claim. See fig. 5 which shows a sealed enclosed space. Para. 37).
Regarding claim 73, the enclosing holder of claim 72, wherein the enclosing holder is configured to enclose in the enclosed space a sealed sample container that comprises a bucket and a lid (this limitation does not further structurally limit the instant claim as the sealed sample container can be added to the enclosure holder at a later time), and a central axis (156), wherein the enclosing holder comprises at least one sample container-engaging feature engageable with at least one of the bucket and the lid of the sealed sample container (both the first and second sample container engaging feature hold contact and secure the sample container within the holder), thereby limiting or prohibiting motion of the sealed sample container (see fig. 5).
Regarding claim 74, the enclosing holder of claim 72, wherein the enclosing holder is configured to enclose in the enclosed space a sealed sample container that has an internal volume of at least 300 ml (quart size container para 5, gallon and 5 gallon containers para. 25).
Regarding claim 75, the enclosing holder of claim 72, wherein the enclosing holder is configured to enclose in the enclosed space a sealed sample container that has an internal volume of 300 ml to 1400 ml (quart sized, para 5) .
Regarding claim 76, the enclosing holder of claim 73, wherein the bucket has an internal volume of at least 300 mL (the bucket is not positively recited as being part of the enclosure and can be added at a later time).
Regarding claim 77, the enclosing holder of claim 73, wherein the bucket of the sealed sample container has an internal volume of 300 ml to 1400 ml (the bucket is not positively recited as being part of the enclosure and can be added at a later time).
Regarding claim 80, the enclosing holder of claim 73, wherein the at least one sample container-engaging feature of the enclosing holder limits or prohibits rotation of a sealed sample container enclosed in the enclosing holder around the central axis of the sealed sample container, with respect to the enclosing holder (this limitation does not further structurally limit the instant claim as there is not structure claimed which limits or prohibits rotation of a sealed sample container. The sealed sample container is not positively recited in the claim and therefore not part of the scope of the instant application as it can be added at a later time to the enclosing holder).
Regarding claim 81, the enclosing holder of claim 73, wherein the at least one sample container-engaging feature of the enclosing holder limits or prohibits motion of a sealed sample container enclosed in the enclosing holder along the central axis of the sealed sample container, with respect to the enclosing holder (this limitation does not further structurally limit the instant claim as there is not structure claimed which limits or prohibits rotation of a sealed sample container. The sealed sample container is not positively recited in the claim and therefore not part of the scope of the instant application as it can be added at a later time to the enclosing holder)..
Regarding claim 82, the enclosing holder of claim 73, further comprising a sample adapter (base 202) and a compression feature (lid 204; fig. 5), wherein the sample adapter and said compression feature are configured to limit or prohibit motion of a sealed sample container enclosed in the enclosing holder, with respect to the enclosing holder (this limitation does not further structurally limit the instant claim as there is not structure claimed which limits or prohibits rotation of a sealed sample container. The sealed sample container is not positively recited in the claim and therefore not part of the scope of the instant application as it can be added at a later time to the enclosing holder. Further there is not structure that is capable of compression. The broadest reasonable interpretation is a lid that is provided on top of a surface and has downforce via gravity).
Regarding claim 85, the enclosing holder of claim 73, wherein the holder base comprises a sample container-engaging feature (base 107) fitted to engage with the bucket of a sealed sample container.
Regarding claim 86, the enclosing holder of claim 73, wherein the holder top comprises a sample container-engaging feature (surface 6b, round area which conforms to lid of sealed sample container) fitted to engage with the lid of a sealed sample container.
Regarding claim 89, the enclosing holder of claim 72, wherein manipulation to engage the first closure engagement feature of the holder base with the mated closure engagement feature of the holder top comprises turning the holder top with respect to the holder base (this claim is drawn to a process/intended use limitation which does not further structurally limit the instant claim).
Regarding claim 90, the enclosing holder of claim 73, wherein the first closure engagement feature is engaged with the mated closure engagement feature, and wherein a sealed sample container is enclosed in the enclosed space (see fig. 5).
Claim Rejections - 35 USC § 103
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.
Claim 78 is rejected under 35 U.S.C. 103 as being unpatentable over Benjamin, II (US 2009/0040865) in view of Boboltz (US 2013/0032244).
Regarding claim 78, the enclosing holder of claim 72, Benjamin does not teach wherein the enclosing holder further comprises a valve providing a valved connection between the enclosed space and an exterior of the enclosing holder.
Boboltz teaches a paint mixer that comprises a receiving can 28 is provided with a lid 30 which includes a dispensing spout . A valve 48 is provided within the dispensing lid 30 in order to provide fluid movement between the receiving can to the spout. It would have been obvious to one having an ordinary skill in the art to modify Benjamin to employ a lid with a valve that is openable in order to allow liquid to move from the interior area of the container to a spout where liquid can be collected. This is well known in the art of the dispensing apparatus for mixing paint as taught by Boboltz.
Claim 83-84 and 87-88 are rejected under 35 U.S.C. 103 as being unpatentable over Benjamin, II (US 2009/0040865) in view of Huckby et al. (US 2003/0107949).
Regarding claim 83, the enclosing holder of claim 82, Benjamin does not teach a compression feature comprises a compression spring.
Huckby teaches a device for mixing a fluid dispersion disposed in a container. The mixing device comprises a holder base bucket 64 houses a container of a paint is provided therein. A tiered lid 170 provides a cover for holder base bucket 64 and is provided with a spring compression feature which holds the cover to the bucket while mixing occurs (para 33). It would have been obvious to one having an ordinary skill in the art at the time of the invention to modify Benjamin to employ a compression features such as a spring to hold the lid on the holder base in order to keep tension on the lid feature to keep the inner container from coming out the holder base.
Regarding claim 84, the enclosing holder of claim 83, wherein said compression spring is disposed between a bottom surface of the holder base and the sample adapter. The modified Benjamin would provide the compression spring between the bottom surface of the holder base and the sample adapter.
Regarding claim 87, the enclosing holder of claim 72, Benjamin does not teach wherein said holder base or said holder top are composed of metal.
Huckby teaches the holder base is made of a metal. It would have been obvious to one having an ordinary skill in the art to modify Benjamin to employ a holder base comprised of metal as metal is durable material that can be used in a paint mixing device as taught by Huckby.
Regarding claim 88, the enclosing holder of claim 87, The modified Benjamin does not teach wherein said holder base and/or said holder top comprise steel. Huckby teaches the holder base can be made of a metal that is powder coated to enhance the appearance of the retaining structure and to protect it from corrosion. It is well known that stainless steel is a material that is corrosion resistant and therefore it would have been obvious to one having an ordinary skill in the art to modify Benjamin to make the holder base out of stainless steel due to its excellent corrosion resistant properties.
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 72-90 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 10,486,158. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a broader version of US 10,486,158 and therefore are fully encompassed by the prior art.
Allowable Subject Matter
Claim 79 is 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. The prior art is silent regarding a Schrader valve between the enclosed space and an exterior of the enclosing holder.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL P SIEFKE whose telephone number is (571)272-1262. The examiner can normally be reached Monday-Friday 8-5.
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, Maris Kessel can be reached at 571-270-7698. 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.
/SAMUEL P SIEFKE/Primary Examiner, Art Unit 1758
Prosecution Insights