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 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 (which depends on claim 1) and 9 of U.S. Patent No. 12,004,691 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one of ordinary skill in the art that claims 1 and 4 are broader and included in and can be gleaned from claims 8 (which depends on claim 1) and 9 of U.S. Patent No. 12,004,691.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore,
In claim 5, “wherein the second tong section includes regions of the second arm that mate with the one or more shaped portions of the first arm to enclose the cage which are straight”. The Figures only show second tong section regions that are similar in dimensions and/or configurations of the shaped portions of the first tong section.
In claim 6, “wherein the second tong section includes regions of the second handle region that mate with the one or more shaped portions of the first handle region to enclose the cage which are shaped portions of different dimension and/or configuration of the those on the first handle region”. The Figures only show second tong section regions that are similar in dimensions and/or configurations of the shaped portions of the first tong section.
must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 5-8 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.
Claim 5 recites the limitation "the second arm" in lines 1-2. How does the “second arm” in lines 1-2 of claim 5 relate to the “second food holding region” in lines 11-12 of claim 1? Is there an additional arm being claimed that differs from the second food holding region? There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the second arm” is being interpreted as ---the second food holding region---.
Claim 5 recites the limitation "the first arm" in line 2. How does the “first arm” in line 2 of claim 5 relate to the “first food holding region” in line 8 of claim 1? Is there an additional arm being claimed that differs from the first food holding region? There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination, “the first arm” is being interpreted as ---the first food holding region---.
Regarding claim 6, the phrase "the second tong section includes regions of the second handle region that mate with the one or more shaped portions of the first handle region to enclose the cage which are shaped portions of different dimension and/or configuration of the those on the first handle region" renders the claim indefinite because it is unclear whether the one or more shaped portions are part of the first handle region or if the one or more shaped portions are part of the first food holding region, as described lines 8-10 of claim 1. Therefore, how does the second handle region mate with the shaped portions of the first handle region to enclose the cage when it is the second food holding region that mates with the first food holding region to enclose the cage, as described in lines 11-14 of claim 1? For the purposes of examination, “the second handle region” is being interpreted as ---the second food holding region---; and “the first handle region” is being interpreted as ---the first food holding region---.
Regarding claim 7, the phrase " the second tong section includes regions of the second handle region that mate with the one or more shaped portions of the first handle region to enclose the cage which are shaped portions of similar dimension and configuration of the those on the first handle region” renders the claim indefinite because it is unclear whether the one or more shaped portions are part of the first handle region or if the one or more shaped portions are part of the first food holding region, as described lines 8-10 of claim 1. Therefore, how does the second handle region mate with the shaped portions of the first handle region to enclose the cage when it is the second food holding region that mates with the first food holding region to enclose the cage, as described in lines 11-14 of claim 1? For the purposes of examination, “the second handle region” is being interpreted as ---the second food holding region---; and “the first handle region” is being interpreted as ---the first food holding region---.
Regarding claims 6 and 7, “of the those” in line 3 of claims 6 and 7 renders the claim indefinite because the claim is unclear as what claimed structure “those” refers to in the claim. Applicant may want to change “of the those” to ---of the one or more shaped portions---.
Claim 8 is rejected because it is a dependent of claim 7.
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(s) 1-2 and 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Case (US3361468A).
Regarding claims 1-2 and 4-6, Case discloses a tool (10; Figures 1-4) for seizing an article (20) comprising: a first tong section (11) and a second tong section (12) pivotally engaged about a fulcrum (13); a handle region (15, 16) and a food holding region (17, 21) formed by the first tong section (11) and the second tong section (12); the first tong section (11) including a first handle region (15) and a first food holding region (21) having a blunt end (23a) at a distal end and one or more shaped portions (24) forming a first side of a cage; the second tong section (12) including a second handle region (16) and a second food holding region (17), the second food holding region (17) configured and dimensioned to mate with the first food holding region (21) to enclose the cage; wherein in a first position about the fulcrum (13) the shaped portion (24), and the region of the second food holding region (17) that mates with the shaped portion (24), are spaced apart (Figure 2, dotted line), and in a second position about the fulcrum (13) the shaped portion (24), and the region of the second food holding region (17) that mates with the shaped portion (24), are proximate one another to enclose the cage for seizing an article (Figures 2-3, solid lines);
wherein the fulcrum (13) is at a location at an end distal to the blunt end (23a);
wherein the cage is configured and dimensioned to hold food (food 20) with minimal pressure to prevent or minimize crushing;
wherein the second tong section (12) includes regions of the [second arm] second food holding region (17) that mate with the one or more shaped portions (24) of the [first arm] first food holding region (21) to enclose the cage which are straight (Figures 2-3);
wherein the second tong section (12) includes regions of the [second handle region] second food holding region (17) that mate with the one or more shaped portions (24) of the [first handle region] first food holding region (21) to enclose the cage which are shaped portions of different dimension and/or configuration of the those on the [first handle region] first food holding region (21).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the tool of Case to include the tool having an overall length of about 18-36 inches in order to allow the user to roast the food from a safe distance of a heat source, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the experimental, optimum, or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233. It also would have been obvious to include the at least the food holding region formed of food grade metal suitable for roasting over an open flame or heat source in order to prevent material degradation, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice, In re Leshin, 125 USPQ 416. It is noted that such a tool as suggested above could obviously include blunted ends on both the first and second food holding regions because the resulting tool would be used for clamping one or more food articles without a need for scraping against a grill surface.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Case in view of Kaiser (US5601323A).
Regarding claim 3, Case discloses the above tool and further teaches the handle region (15, 16), but fails to teach wherein at least a portion of the handle region is formed of or covered in heat resistant material.
Kaiser teaches a similar tool and further teaches wherein at least a portion of the handle region (16, 38; Figure 1) is formed of or covered in heat resistant material (column 4, lines 6-19). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the tool of Case to include the heat-resistant material on the handle region as taught by Kaiser in order to protect the user’s hand from heat during grilling.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Case in view of Beach (US2689518A).
Regarding claim 7, Case discloses the above tool and further teaches wherein the second tong section includes regions of the [second handle region] second food holding region (17) that mate with the one or more shaped portions (24) of the [first handle region] first food holding region (21) to enclose the cage, but fails to teach wherein the second tong section includes regions of the [second handle region] second food holding region that mate with the one or more shaped portions of the [first handle region] first food holding region to enclose the cage which are shaped portions of similar dimension and configuration of the those on the [first handle region] first food holding region.
Beach teaches a similar tool and further teaches wherein the second tong section (11; Figures 1-4) includes regions of the [second handle region] second food holding region (13) that mate with the one or more shaped portions (23) of the [first handle region] first food holding region (12) to enclose the cage which are shaped portions (24) of similar dimension and configuration of the those on the [first handle region] first food holding region (12). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the tool of Case to include the first and second food holding region having shaped portions of similar dimension and configuration as taught by Beach in order to provide better grip of food of different diameters.
Regarding claim 8, Case discloses the above tool and further teaches wherein the cage is configured and dimensioned with a width, height, and length to accommodate different sized food articles (as outlined in Figures 1-4 and column 2, line 55 – column 3, line 6). It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to modify the tool of Case to include cage configured and dimensioned with a width of about 0.6-1.3 inches, a height of about 0.6-1.3 inches and a length of about 0.6-1.3 inches in order to accommodate frankfurters of typical sizes, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the experimental, optimum, or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional references listed on form PTO-892 are cited for their relevance to the disclosed invention and demonstration of the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRIX SOTO whose telephone number is (571)270-5394. The examiner can normally be reached Monday - Friday 8am - 5pm ET.
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/HENRIX SOTO/Examiner, Art Unit 3654
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