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 .
Information Disclosure Statement
Receipt is acknowledged of an Information Disclosure Statement, filed 8 July 2024, which has been placed of record in the file. An initialed, signed and dated copy of the PTO-1449 or PTO-SB-08 form is attached to this Office action.
Specification
Title of the Invention:
The title of the invention is objected to because it is not consistent with the claimed invention. It is suggested that the title of the invention be amended to reflect that method claims are also pending.
Continuing Data Should Be Updated:
Applicant is respectfully requested to carefully review all continuing data for accuracy and completeness, and the status of each parent application appearing in paragraph [0001] of the specification should be updated where appropriate.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,054,296 in view of Jungmayr et al. (US 3045720).
The claims of the ‘296 patent anticipate all of the limitations of the pending application claims 1-9 because the claims of the ‘296 patent are more specific. The claims 1-9 of the pending application are broader and all of the limitations of the claims 1-9 of the pending application are found in claims 1-14 of the ‘296 patent with the exception of the limitation “a conveyer that moves a plurality of containers, including a first container” as set forth in claim 1 of the present application. However, the Jungmayr et al. reference teaches that it is old and well known in the relevant art to provide a conveyer (1) that moves a plurality of containers (P), including a first container, which containers are positioned to receive material from a plurality of dispensing components including when a first dispenser and the first container are both located in a filling area. It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the claims 1-14 of the ‘296 patent by having incorporated the limitation of “a conveyer that moves a plurality of containers, including a first container” as suggested by Jungmayr et al., in order for the containers to be in position within the filling area so that they may receive the medication from the medication dispensers.
Claims 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,054,296.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 of the ‘296 patent "anticipate" present application claims 10-20. It is apparent that the present application claims 10-20 differ from the ‘296 patent claims 1-19 in that the ‘296 patent claims 1-19 are more specific, i.e. the patent claims 1-19 require additional limitations nor required by the present application claims 10-20. Accordingly, the present application claims 10-20 are not patentably distinct from the ‘296 patent claims 1-19 because the more specific patent claims anticipate the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references listed on the attached form (PTO-892) are cited to show systems and methods for dispensing material into containers. All are cited as being of interest and to show the state of the prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN F. GERRITY whose telephone number is (571)272-4460. The examiner can normally be reached Monday - Friday (7:30-4:00).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thanh Truong can be reached at 571-272-4472. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN F. GERRITY/Primary Examiner, Art Unit 3731 18 August 2025