DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restriction
Applicant’s election without traverse of Group I, Species A1, Species B2, and Species C2, corresponding to claims 1 and 3-8, in the reply filed on 9/17/2026 is acknowledged.
Claims 2 and 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/17/2026.
Examiner notes that claim 2 is directed to the second filing port of the tray portion being an open end of the tray portion aligned with the first filling port. As such, claim 2 is directed to Species A2, in which the tray has three lateral sides that are walls without holes and one open side, as discussed in the Requirement for Restriction. As Applicant elected Species A1 and not Species A2, claim 2 is withdrawn as being drawn to a nonelected species (in addition to claims 9-13, which were withdrawn by Applicant as being drawn to a nonelected invention).
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, 3, 5, and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, and 6 of copending Application No. 19/378,309 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, 5, and 6 of 19/378,309 disclose all of the limitations of claims 1, 3, 5, and 6 of the instant application (see table below).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Application
19/378,309
Claim 1
1. A box assembly, comprising: a body portion; a tray portion disposed within the body portion; and a cover portion disposed over the tray portion and body portion; wherein the body portion includes a first filling port at one end, and the tray portion includes a second filling port aligned with the first filling port.
Claim 3
1. A box assembly for an aerosol-generating device, characterized by comprising: a body portion comprising a sidewall, an accommodating cavity, and a first filling port disposed on the sidewall; and a cover portion disposed over the body portion; wherein the first filling port is configured to align and communicate with a filling port of the aerosol-generating device when the aerosol-generating device is disposed within the accommodating cavity.
3. The box assembly of claim 1, further comprising a tray portion disposed within the accommodating cavity of the body portion; wherein the tray portion comprises a second filling port aligned with the first filling port.
Claim 3
3. The box assembly of Claim 1, wherein the body portion includes an accommodating cavity sized and shaped to match a size and shape of the tray portion.
Claim 5
5. The box assembly of claim 3, wherein the accommodating cavity of the body portion is sized and shaped to match a size and shape of the tray portion.
Claim 5
5. The box assembly of Claim 1, wherein the tray portion comprises an interior portion sized and shaped to receive a device; and wherein the device includes a filling port aligned with the second filling port of the tray portion when disposed within the tray portion.
Claim 6
6. The box assembly of claim 5, wherein the tray portion comprises an interior portion sized and shaped to match a size and shape of the aerosol-generating device, and the second filling port aligns and communicates with the filling port of the aerosol-generating device when the aerosol-generating device is disposed within the accommodating cavity.
Claim 6
6. The box assembly of Claim 5, wherein the filling port of the device is aligned with the first filling port of the body portion.
Claim 6
See above, “the first filling port is configured to align and communicate with a filling port of the aerosol-generating device”.
Claim Objections
Claim 7 is objected to because of the following informalities: "a bottom surface" in lines 4-5 . Appropriate correction is required.
Status of the Claims
Claims 1-13 are pending. Claims 2 and 9-13 are withdrawn. Claims 10 has been amended.
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 1 and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Connors et al. (US 5,004,103).
Regarding claim 1, Connors discloses a box assembly (“tool storage and tote box”, Fig. 1, Col. 4, Lines 3-4), comprising:
a body portion (“container 3”, Fig. 1, Col. 4, Line 34);
a tray portion (“tray 2”, Fig. 1, Col. 4, Line 43) disposed within the body portion (“tray being removably accommodated in the container”, Abstract; shown but not labeled in Fig. 3, compare Fig. 3 to Fig. 1); and
a cover portion (“lid or cover 1”, Fig. 1, Col. 4, Line 29) disposed over the tray portion and body portion (see Figs. 1 and 3);
wherein the body portion includes a first filling port (top opening of the body portion as seen in Fig. 1) at one end, and the tray portion includes a second filling port (one of the “plurality of through holes 9”, Fig. 3, Col. 4, Line 44) aligned with the first filling port (see Fig. 3).
Regarding claim 3, Connors discloses the box assembly of claim 1, as discussed above. Connors further discloses wherein the body portion includes an accommodating cavity sized and shaped to match a size and shape of the tray portion (see Fig. 3 below, annotated by examiner).
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Figure 3, Annotated by Examiner
Regarding claim 4, Connors discloses the box assembly of claim 1, as discussed above. Connors further discloses wherein the cover portion is configured to removably engage the body portion (see Fig. 1 showing the cover removed and Fig. 3 showing the cover engaged with the body portion).
Regarding claim 5, Connors discloses the box assembly of claim 1, as discussed above. Connors further discloses wherein the tray portion comprises an interior portion (“cylindrical projections 11”, Fig. 3, Col. 5, Lines 23-24). With regards to the interior portion being sized and shaped to receive a device wherein the device includes a filling port aligned with the second filling port of the tray portion when disposed within the tray portion, it is noted that the device is not a positively recited element (“A claim is only limited by positively recited elements”, MPEP § 2115). As the interior portion of Connors could receive a device with a filling port aligned with the second filling port of the tray portion when disposed within the tray (for example, a syringe with its needle constituting a filling port, as shown in the rendering of the box assembly of Fig. 3 receiving a device below), the box assembly of Connors satisfies the claim limitation (see MPEP § 2115).
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Rendering of the Box Assembly of Figure 3 Receiving a Device
Regarding claim 6, Connors discloses the box assembly of claim 5, as discussed above. Connors further discloses that the box assembly is configured such that the filling port of the device (which is not positively recited, MPEP § 2115) is aligned with the first filling port of the body portion (see rendering in the rejection of claim 5 above).
Regarding claim 7, Connors discloses the box assembly of claim 1, as discussed above. Connors further discloses wherein the cover portion includes a plurality of recessed perimeter walls (see Fig. 3 below, annotated by examiner) set back on all sides form respective side edges of the cover portion (see Fig. 3 below, annotated by examiner); wherein the perimeter walls extend downward from a bottom surface of the cover portion (see Fig. 3 below, annotated by examiner) and are positioned to be received within a recessed portion of the body portion (see Fig. 3 below, annotated by examiner) such that a portion of the bottom surface of the cover portion abuts against a top surface of the body portion (see Fig. 3 below, annotated by examiner).
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Figure 3, Annotated by Examiner
Regarding claim 8, Connors discloses the box assembly of claim 1, as discussed above. Connors further discloses wherein the cover includes a plurality of bulges (see Fig. 3 below, annotated by examiner) configured to press-fit engage an interior portion of the body portion (see Fig. 3 below, annotated by examiner).
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Figure 3, Annotated by Examiner
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY G CULBERT whose telephone number is (571)270-0874. The examiner can normally be reached Monday-Friday 9am-4pm.
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, Michael H Wilson can be reached at (571)270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COURTNEY G CULBERT/Examiner, Art Unit 1747
