DETAILED ACTION
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 .
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 27-45 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-12 of U.S. Patent No. 12,041,927. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a pack bag for or transporting at least a head portion of a big-game animal with a nose enclosure with a passageway and straps.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 30 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claim appears to be incomplete.
Claim Objections
Claim 29 is objected to because of the following informalities: “send” should be “end.” Appropriate correction is required.
Claim 43 is objected to because of the following informalities: “backpack” should be “a backpack.” Appropriate correction is required.
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.
Claim(s) 27, 29, 30, 35-40, 42, 43 and 45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kernahan (US 2,407,787).
Regarding claim 27, Kernahan discloses a pack bag capable of transporting at least a head and a cape portion of a big-game animal, the pack bag comprising: a nose enclosure (10) including a predefined muzzle shape (Fig. 2, top between 19 and 20; or Fig. 2, between 42), wherein the predefined muzzle shape begins at a first end and connects to a second end by a compartment, wherein a cross-sectional area of the compartment decreases between the first end and the second end to create an enclosed cavity at the second end, wherein the nose enclosure is sized and shaped to receive a nose-end portion of a big-game animal head, wherein a first flexible (back of 10) sheet forms at least part of the nose enclosure; a second flexible sheet (front of 10) sized and shaped to wrap a big game cape attached to the big-game animal head or be stowed in a folded or rolled configuration without wrapping the big game cape (Figs. 3-6); two or more straps (41 or 21) connected to at least one of the first flexible sheet or the second flexible sheet such that, when fastened around the big-game animal, the two or more straps are capable of compressing both the first flexible sheet and the second flexible sheet against at least a portion of the big game animal, wherein the first flexible sheet includes at least one enclosed interior surface forming a portion of an elongated passageway (portion that holds 15) extending along a portion of an opening perimeter, wherein the elongated passageway is sized for housing a drawstring or cord (15), wherein the second flexible sheet includes at least one enclosed interior surface forming a portion of the passageway (portion holding 15) extending along the opening perimeter; and a drawstring or cord (15) extending through the passageway, wherein more of the drawstring or cord resides within the passageway when the pack bag is in an open configuration compared to when the pack bag is in a stored configuration.
Regarding claim 29, the two or more straps include a nose enclosure strap (21), wherein the nose enclosure strap includes a first end connected to a connector (22 or 43) and a second send connected to the nose enclosure. See Figs. 1-6.
Regarding claim 30, the two or more straps include. See Fig. 1.
Regarding claim 35, the two or more straps are adjustable in length. See Figs. See Fig. 6.
Regarding claim 36, the first flexible sheet is water resistant. See col. 2, ll. 35-38.
Regarding claim 37, the second flexible sheet is water resistant. See col. 2, ll. 35-38.
Regarding claim 38, a portion of the second flexible sheet forms at least part of the nose enclosure. See Fig. 1.
Regarding claim 39, the portion of the second flexible sheeting and the first flexible sheet are functionally connected. See Figs. 1-6.
Regarding claim 40, Kernahan sufficiently discloses the claimed invention. See cl. 1.
Regarding claim 42, one or more attachment points (25) for connecting the pack bag to an external carrying system. See Fig. 1.
Regarding claim 43, the external carrying system includes backpack. See Fig. 3.
Regarding claim 45, the second flexible sheet is a mirrored duplication along a centerline. See Fig. 1.
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.
Claims 28 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Kernahan as applied above.
Regarding claim 28, Kernahan discloses the claimed invention except for the two of the two or more straps being in a perpendicular orientation relative to one another. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the straps as claimed in order to carry and secure items within the pack, since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japiske, 86 USPQ 70.
Regarding claim 41, Kernahan discloses the claimed invention except for a glue. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a glue, since it was known in the art that glue can be used to hold items together.
Claim(s) 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Kernahan as applied above in further view of Haskell et al. (US 2012/0272451).
Regarding claim 31, Kernahan does not disclose the straps as claimed. Haskell, which is drawn to a pack bag, discloses two or more straps including two side straps (21-23) connected to the second flexible sheet converging to a center strap (27). See Fig. 3. Thus, it 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 to rearrange (or add) the straps of Kernahan, as disclosed by Haskell, in order to secure certain shaped/sized objects. Moreover, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have the straps as claimed in order to secure certain shaped/sized objects, since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japiske, 86 USPQ 70.
Regarding claim 32, as modified above, the center strap includes a first end connected to a connector and a second end connected to the second flexible sheet.
Regarding claim 33, as modified above, the connector of the center strap is designed to connect with the connector of the nose enclosure.
Regarding claim 34, as modified above, the two side straps are perpendicular to the center strap and the nose enclosure strap.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Kernahan as applied above in further view of Hancock et al. (US 2003/0183668).
Regarding claim 44, Kernahan does not disclose an all-terrain vehicle. Hancock, which is drawn to a pack bag, disclose an external carrying system that includes an all-terrain vehicle. See Fig. 1. Thus, it 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 to have the external carrying system of Kernahan be an all-terrain vehicle, as disclosed by Hancock, in order to more efficiently transport the pack bag.
Response to Arguments
Applicant’s arguments have been considered but are moot in view of the new grounds of rejection.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DEREK J BATTISTI whose telephone number is (571)270-5709. The examiner can normally be reached 9:00 am - 5:00 pm M-F.
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/DEREK J BATTISTI/Primary Examiner, Art Unit 3734