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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “rotatable dispensing outlet component 350”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 4, 5, 8, 9, 18 and 19 are 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 term “about” in claims 4, 5, 8 and 9 is a relative term which renders the claim indefinite. The term “about” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. An amendment deleting the term would overcome the rejection.
Claims 18 and 19 recite the limitation “said dosing indicium”. There is insufficient antecedent basis for this limitation in the claims.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). The patented claim(s) disclose a process of creating indicia by a bitmapped pattern of chemically or structurally modified bits of a part, wherein said bitmapped pattern comprises at least two rows of said bits and Wadsworth discloses a package comprising a first part (24) and a second part (28) moveable relative to one another; a first part positional indicator (49) integral with the first part, and it would have been obvious to manufacture the indicia (product) of Wadsworth using the patent’s process, substituting one known method of producing indicia with another known method of producing indicia while obtaining the same result.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). Wadsworth discloses a second part positional indicator (51) integral with said second part, and it would have been obvious to manufacture the indicia of Wadsworth using the patent’s process; wherein said second part positional indicator comprises a bitmapped pattern of chemically or structurally modified bits of said second part, wherein said bitmapped pattern comprises at least two rows of bits.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). Wadsworth discloses said first part and said second part have a first position relative to one another in which said first part positional indicator and said second part positional indicator are spaced apart from one another, wherein said first part and said second part have a second position relative to one another in which said first part positional indicator and said second part positional indicator are nearer to one another than in said first position. (Wadsworth: col. 4, lines 6-10)
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of U.S. Patent No. 12,416,519. The patented claims discloses all the limitations of the instant claim.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). Wadsworth discloses that the second part is a rotatable dispensing outlet component (nozzle).
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090) and further in view of Mylan, Inc. (“Mylan”) (WO 2020/072582). Wadsworth is silent in regards to an open region. Mylan discloses a part (44) with an open region (104) wherein a positional indicator (72) is registered with the open region and it would have been obvious to modify the combination of Wadsworth and the patented claims to substitute Wadsworth method of displaying indicia with Mylan’s in which the said second part comprises an open region, wherein said first part and said second part have a first position relative to one another in which said first part positional indicator is spaced apart from said open region, wherein said first part and said second part have a second position relative to one another in which said first part positional indicator is registered with said open region, since doing so would be a mere substitution of one known indicia configuration for another known indicia configuration with the expected results that the substituted configuration would display the required indicia based upon the relative positions of the first and second parts. (see MPEP 2143 I B).
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). Wadsworth disclsoes that the first part is a closure (when in the OFF position) and the second part is attached to a container having an opening, wherein said closure is engaged with said opening.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). Wadsworth discloses that first part comprises more than one first part positional indicator. (“Indicia may be provided on the front face of the peripheral flange, such as OFF, SPRAY, STREAM, or ON (not shown), as shown in FIG. 4, associated with the two off modes and the two on modes of the nozzle assembly. Otherwise indicia such as STOP (FIG. 5) may be provided on the outer surfaces of walls 36, 37, and indicia such as a spray pattern symbol (FIGS. 9, 10) may be provided on the outer surfaces of walls 38, 39, for respectively indicating the two on and the two off modes of the nozzle assembly.”)
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 or 22 of U.S. Patent No. 12,416,519 in view of Wadsworth, et al. (“Wadsworth”) (U.S. Pat. 6,126,090). Wadsworth discloses a second part positional indicator integral (51) with said second part, wherein said second part positional indicator comprises a bitmapped pattern of chemically or structurally modified bits of said second part, wherein said first part and said second part have a first position relative to one another in which one said first part positional indicator and said second part positional indicator are associated with one another and a second position relative to one another in which another said first part positional indicator and said second part positional indicator are associated with one another. (OFF vs SPRAY vs STREAM vs OFF relative to indicator 49)
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,416,519. The patented claim discloses all the limitations of the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See form PTO-892, attached.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J MELARAGNO whose telephone number is (571)270-7735. The examiner can normally be reached Mon - Fri: 8 am - 5 pm +/- flex.
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/MICHAEL J. MELARAGNO/ Examiner, Art Unit 3754
/PAUL R DURAND/Supervisory Patent Examiner, Art Unit 3754 February 6, 2026