DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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 and 10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10, respectively of U.S. Patent No. 8708694. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued patent claims fully anticipate the application claims.
Issued patent Claim 1 in its entirety reads: A wooden wick embedded in a wax candle, said wooden wick and said wax candle comprising: (a) a strip of a predetermined wood having each of a first predetermined length, a first predetermined width and a first predetermined thickness; (b) a wooden booster member having each of a second predetermined length, a second predetermined width and a second predetermined thickness, said first predetermined width is greater than said second predetermined width; and (c) means for adhering said booster member to said strip of wood, wherein said strip of wood is treated with a liquid wax; (d) said wax candle in direct contact with said wooden wick.
Issued patent Claim 10 in its entirety reads: A method of manufacturing a wooden wick embedded in a wax candle, said method comprising the steps of: (a) selecting a type of wood to be formed into a strip of wood to be used in said wooden wick; (b) cutting said wood selected in step (a) into said strip having each of a first predetermined length, a first predetermined width and a first predetermined thickness; (c) forming a wooden booster member having each of a second predetermined length, a second predetermined width and a second predetermined thickness, said first predetermined width is greater than said second predetermined width; (d) adhering said booster member to said strip of wood; (e) soaking said wooden booster member in a soy oil prior to assembly; (f) embedding said wooden wick in said candle such that both are in direct with one another.
The bold text above are the application claims in its entirety, showing that the issued patent claims anticipate the entire scope of the application claims.
Although terms/phrases from the application, e.g. “planar” and “to form the wooden wick” are not in the issued claims, it would have been obvious to a person of ordinary skill that these features are present, because the wick has a “strip” of wood and together with the booster, the wick is formed.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1, 2, 6, 10 and 11 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Everett [133973].
With respect to claim 1, Everett discloses: A wooden wick for use in a wax candle, said wooden wick comprising: (a) a planar strip (a) of a predetermined wood having each of a first predetermined length, a first predetermined width and a first predetermined thickness [see FIG 2]; (b) a planar booster (d) member having each of a second predetermined length, a second predetermined width and a second predetermined thickness; and (c) means for adhering (b, c) said planar booster member to said strip of wood, wherein said planar strip of wood is adhered to said planar booster member to form the wooden wick [see left column].
Everett further discloses:
{cl. 2} A wooden wick according to claim 1, wherein said means (c) for adhering said booster member to said strip of wood is an adhesive [resin is interpreted as an adhesive].
{cl. 6} A wooden wick, according to claim 1, wherein said first and said second predetermined thickness are substantially identical [see FIG 2].
With respect to claim 10, Everett discloses: A method of manufacturing a wooden wick for use in a wax candle, said method comprising the steps of: (a) selecting a type of wood (a) to be formed into a strip of wood to be used in said wooden wick; (b) cutting said wood selected in step (a) into said strip having each of a first predetermined length, a first predetermined width and a first predetermined thickness; (c) forming a booster member (d) having each of a second predetermined length, a second predetermined width and a second predetermined thickness; and (d) adhering (b, c) said booster member to said strip of wood [see FIG 2, left column].
Everett further discloses:
{cl. 11} A method of manufacturing a wooden wick, according to claim 10, wherein step (d) includes selecting a suitable adhesive for adhering said booster member to said strip of wood [resin is interpreted as an adhesive].
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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 14-16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Everett [133973], further in view of McCullough et al [20030235797].
Regarding claims 14-16, Everett discloses the invention as substantially claimed however does not disclose the curing process as claimed.
McCullough makes up for these deficiencies by teaching:
{cl. 14} A method of manufacturing a wooden wick, according to claim 13, wherein said method further includes an additional step of curing said wooden wick prior to use in such candle [paragraph 0025].
{cl. 15} A method of manufacturing a wooden wick, according to claim 14, wherein said additional step of curing said wooden wick prior to use in such candle includes a step of baking [paragraph 0025].
{cl. 16} A method of manufacturing a wooden wick, according to claim 10, wherein said method further includes an additional step of drying said wooden wick for a predetermined time prior to use in such candle [paragraph 0025].
It is understood that McCullough only teaches drying the candle wick, however drying can also be interpreted as baking or curing because baking and curing result in a dried product.
It would have been obvious to a person of ordinary skill in the art at the time of the invention to modify the invention of Everett with the teachings of McCullough because McCullough provides a known method of how to produce a candle wick that will ensure proper capillary functioning.
Allowable Subject Matter
Claim 3-5, 7-9, 12, 13 and 17-20 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Quinn [2376083] and Decker [20040009447] are considered relevant art because Quinn shows the use of strips of paper adhered to one another to form a wick, albeit the material used is asbestos paper [see FIG 1, page 1, right column, lines 22-48] while Decker shows the use of a wooden material for the wick [see FIG 2, paragraph 0011].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AVINASH A SAVANI whose telephone number is (571)270-3762. The examiner can normally be reached Monday thru Friday 8am-4pm.
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/AVINASH A SAVANI/Primary Examiner, Art Unit 3762
4/30/2026
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