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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of copending Application No. 18/910169. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim a pet waste scoop assembly with a frame in a generally rectangular configuration, a pivotable door, a receptacle with a bag, a first projection and a second projection to displace a portion of the bag into the receptacle, the claims of the two applications differing only by minor phraseology which obviously does not affect the scope of the invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 12 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.
Regarding claim 12, the phrase "essentially" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed, thereby rendering the scope of the claim(s) unascertainable.
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 (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.
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 1-4 and 13
are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Becattini, Jr. ‘9133592 B2.
Regarding claims 1 and 13, Becattini ‘592 shows a method of using pet waste scope assembly as shown in figures 1-17. Becattini ‘592 discloses a pet waste scoop assembly 10 comprising a bag 44, a scoop member 12 having a frame 18, wherein the frame 18 has opposing top and bottom walls (18a, 18b) and opposing first and second sidewalls (18c, 18d) that collectively provide an inner surface defining a passageway (i.e., aperture of the frame, no reference number) for waste material collected by the scoop member to pass through the frame, wherein the opposing top and bottom walls and second side walls are arranged in a generally rectangular configuration having a forward end and a rear end (i.e., a front portion of the frame and a rear portion of the frame, as same as applicant’s frame, see drawing below), an imaginary centerline or axis extending vertically and centrally between the forward end and the rear end of the frame (see drawing below) when the frame is viewed from a side elevation view, a receptacle 14 that is engageable with the frame of the scoop member 12, and a door 26 pivotably connected to the frame forward of the imaginary centerline or axis (see drawing below, a lower end 26b of the door 26 contacts a portion of 18b, claim 4), said door 26 being movable between an open and closed position, wherein when the door is in the open position, the waste material is permitted to move through the passageway and into the receptacle, see figures 1-17.
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Regarding claims 2-3, Becattini ‘592 shows a first side edge of the door (see drawing below) and a second side edge of the door (see drawing below) that is spaced apart from each respective wall (18d, 18c), see figure 8.
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Claim Rejections - 35 USC § 103
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.
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 5-10, 14-16, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Becattini, Jr. ‘9133592 B2.
Regarding claims 5-10, 14-16, and 19-20, as stated above, Becattini ‘592 discloses all the structural elements, except for placing the door 26 into a range of angles such that a certain door portion is adjacent to the inner surface of the frame while in a vertical orientation and able to move into a horizontal orientation.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to place the door in a certain range of angles such that a certain door portion is adjacent to the inner surface of the frame while in a vertical orientation and able to move into a horizontal orientation in order to allow many different orientations of the door. Furthermore, since it has been held that rearranging parts of an invention involves only routine skill in the art.
Allowable Subject Matter
Claims 11-12, and 17-18 would be allowable if rewritten to overcome the rejection(s), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The claims 11-12 and 17-18 are patentable over the prior art of record because the teachings of the references taken as a whole do not show or render obvious the combination set forth in claims 11 and 17, including every structural element recited in the claim, especially placing a first projection located inwardly from the inner surface of the frame, which extends into the receptacle and displace a portion of a bag in the receptacle, allowing the door to move freely without the interruption by the bag in the receptacle.
None of the references of the prior art teach or suggest the elements of the device as advanced above and such do not provide the necessary motivation, absent applicant's specification, for modifying the device in the manner required by the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See U.S. Patent No. 9428873 and 9661825, continuation cases of ‘592 related to the pet waste scoop assembly.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SANG K KIM whose telephone number is 571-272-6947. The examiner can normally be reached Tuesday through Thursday from 10:30 A.M. to 9 P.M or Tuesday through Thursday from 10:30 A.M. to 7 P.M.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Robert Hodge, can be reached on (571) 272-2097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SK
7/14/26
/SANG K KIM/ Primary Examiner, Art Unit 3654
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