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 .
Response to Amendments
The Amendment filed 09/22/2025 has been entered. Claims 1-7,9-10 remain pending in the application.
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 1-7,9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 11950575 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 of U.S. Patent No. US 11950575 B2 is a “species” of the “generic” invention of the application. It has been held that the generic invention is "anticipated" by the "species". See in re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Allan (US 8465340) in view of Vanderhoff (US 20180255748 A1 cited in IDS).
For claim 1, Allan discloses:
A modular housing structure for solitary bees, comprising (Fig. 3+7, col 1, ln 30-32)
a core partially enclosed (50+24, fig 3+7)
within a housing (see core 50+24 enclosure within 58+61)
having an opening on one side, (see front opening, fig 3+7)
wherein the core has an exposed side facing the opening on the housing (see exposed side of 50+24 on housing opening)
and one or more recesses formed on the exposed side of the core. (24 of 50, fig 3+7)
Allan doesn’t disclose:
a housing having an opening on only one side
Vanderhoff discloses:
a housing having an opening on only one side (13,14,figs 3-5, para0025)
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the housing of Allan to comprise an opening only on one side as disclosed by Vanderhoff to provide shelter protection from factors such as wind/rain for the bees held within the housing.
Claims 2-7,9,10 are rejected under 35 U.S.C. 103 as being unpatentable over Allan in view of Vanderhoff, as applied to claim 1 above, and in view of Pederson (US 4628558).
For claim 2, Allan as modified discloses claim 1 but doesn’t disclose:
wherein the core is formed from a porous material to facilitate drainage from the recesses.
Pederson discloses:
a housing structure for solitary bees (see Abstract)
wherein the core 12 is formed from a porous material (col 4, ln 5-8 describes ref. 12 being sufficiently porous so it will “breathe” to prevent mold; claims 1-3 recite a lightweight fibrous and breathable material, including sawdust, shredded paper, and/or ground straw)
to facilitate drainage from the recesses 76 (note this is an intended use limitation, and the breathable material, including straw, is capable of facilitating drainage therethrough and, thus, through to the recesses 76).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the core of Allan to be formed from a porous material to facilitate drainage from the recesses as taught by Pederson in order to prevent the formation of mold or the like which could be devastating to the bee larvae (Pederson, col 4, ln 5-8).
For claim 3, Allan as modified discloses claim 2, and further discloses:
wherein the housing 58,61 extends outwardly from the exposed side of the core 50 to form a ridge about the perimeter of the exposed side of the core (Fig. 3 shows refs. 58,61 forming a ridge that projects from the exposed side of the core).
Allan as modified doesn’t disclose:
wherein the core and the housing are integrally formed.
However, it would have been obvious to one of ordinary skill in the art to modify the core and housing of Allan as modified such that they were integrally formed as claimed, to reduce production costs. It has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
For claim 4, Allan as modified discloses claim 2, and further discloses:
wherein the core 10 comprises a plurality of wafers 50 stacked on top of one another and, wherein each wafer has a top, a bottom, and opposing sides (Fig. 7).
For claim 5, Allan as modified discloses claim 4, and further discloses:
wherein the one or more recesses 24,26,28,30 formed on the exposed side of the core comprises one or more recesses formed on one of the opposing sides of each wafer (Fig. 3+7; front side of the core 50 having recesses (24, 26, 28, or 30)).
For claim 6, Allan as modified discloses claim 5, and further discloses:
wherein the plurality of wafers are arranged in the stack with the one or more recesses on each wafer on the exposed side of the core (Fig. 3+7; one/front side of the core 50 having recesses (24, 26, 28, or 30) is exposed through the opening in the housing of fig 3).
For claim 7, Allan as modified discloses claim 6, and further discloses:
wherein each wafer has a top section and a bottom section each having opposing top and bottom faces (Fig. 7) and, wherein the one or more recesses are formed by complementary grooves on the adjacent top and bottom faces of the bottom section and the top section of the wafer (Fig. 7).
For claim 9, Allan as modified discloses claim 6, and further discloses:
wherein the one or more recesses are between 4 mm and 8 mm in diameter (col 3 ln 50-52)
For claim 10, Allan as modified discloses claim 6, and further discloses:
wherein the housing extends downwardly to raise the opening and the exposed side of the core off the ground (Fig 3, see how the bottom of housing 58 extends downwardly thereby raising the opening and exposed side of core off the ground).
Response to Arguments
Applicant's arguments filed 09/22/2025 have been fully considered but they are not persuasive.
In regards to Applicant’s arguments regarding the drawing objection and 112(b) indefiniteness rejection. (pg 4)
Claim 8 has been canceled and thus the objections/rejections rendered moot.
In regards to Applicant’s arguments regarding the double patenting rejection.(pg 4)
Applicant’s arguments are not found persuasive because a terminal disclaimed has not been filed therefore the rejections maintained.
In regards to applicant’s arguments that Allan or Allan as modified does not disclose “a housing having an opening on only one side” (pg 5-6)
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 SHADA M ALGHAILANI whose telephone number is (571)272-8058. The examiner can normally be reached M-F (7:30am - 3:30pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Poon can be reached on 571-272-6891. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHADA ALGHAILANI/
Examiner
Art Unit 3643
/PETER M POON/Supervisory Patent Examiner, Art Unit 3643