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 .
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 22-23 and 28 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.
Claims 22-23 recite the limitation "the first pressure threshold" in the claims. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, it is interpreted that the pressure threshold is the pressure.
The limitation “other gas of the same or similar properties” renders claim 28 indefinite. The properties and how similar they must be to the claimed carbon dioxide and nitrogen are not made clear by the claim and the specification provides no reference for this limitation either, and therefore the scope of what other gasses are included by this limitation cannot be determined. The scope of the claim therefore cannot be determined and the claim is indefinite. For the purpose of examination, it is interpreted the inert gas is nitrogen or carbon dioxide or some other inert gas.
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 18-19, 21-22, and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,975,115.
Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim 1 is more narrow in scope and anticipates the instant claim 18.
Instant claim 19 is anticipated by reference claim 1, because CO2 is an inert gas, teaching that limitation.
Instant claim 21 is anticipated by reference claim 3.
Instant claim 22 is anticipated by reference claim 4.
Instant claim 24 is anticipated by reference claim 4.
Allowable Subject Matter
Claims 11-17 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art, alone or in combination, fails to teach or fairly suggest each and every limitation of the claimed invention. The prior art considered to be the closest prior art is Novotny (WO 2019/133952).
Regarding specifically claim 11, Novotny teaches a method of treating plant material (abstract) including a vacuum cycle procedure (Fig. 7f, par. 51-52), and that valves are used in the control of the pressure to achieve and maintain determined set points (par. 46). Novotny does teach that a cycle can include a single positive pressure cycle (par. 52 discloses “a” cycle above atmospheric pressure), but is silent with regards to the repeated evacuation and pressurization of the vessel by opening a gas tank flow valve, much less the particular arrangement of the first and second cycles of claim 11. Therefore claim 11 is allowable over the prior art.
Claims 12-17 are allowable for depending on claim 11.
Similarly, Novotny fails to teach the limitations of claims 18 and 19 that include a repressurization of the vessel by flowing CO2 or another inert gas into the vessel and those claims are similarly allowable over the prior art.
Claims 22-23 and 28 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 20, 25-27, and 29 are objected to for being dependent on a claim that is rejected under 112(b) or for nonstatutory double patenting as set forth above, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRENDAN A HENSEL whose telephone number is (571)272-6615. The examiner can normally be reached Mon-Thu 8:30 - 7pm;.
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/BRENDAN A HENSEL/ Examiner, Art Unit 1758
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