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 .
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 claim 9 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because various combinations of claim 9 of the patent is obvious over claim 1 of the instant application in view of US Patent 6062383 by Han.
The claims of US Patent 12083398 does not expressly disclose legs pivotally attached to the top cuff.
Han teaches one or more legs pivotally attached to a top cuff arranged along the top opening of the elongated body (Fig 2 of Han, the legs 22 are pivotally attached at 16 to the top cuff 17 at the top opening of the golf bag 10); wherein the one or more actuator rods are configured to move the one or more legs to a retracted position as the rear base section and the front base section pivot relative to each other (Fig 2-3 of Han, the actuator rods 110 mode the legs 22 between an extended and retracted position as the rear base and front base sections pivot relative to each other).
It would have been obvious to a person having ordinary skill in the art having the teachings of Burgess and Han before them, when the application was filed, to have modified the golf bag of Burgess to include legs attached to the top cuff that an actuator can retract and extend, as taught by Han, to advantageously make the golf bag stand when in playing mode an retract when being carried.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of the patent anticipates claim 2 of the instant application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of the patent anticipates claim 3 of the instant application.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent anticipates claim 5 of the instant application.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of the patent anticipates claim 6 of the instant application.
Claims 7-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of the patent anticipates claims 7-8 of the instant application.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of the patent anticipates claim 9 of the instant application.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of the patent anticipates claim 10 of the instant application.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the patent anticipates claim 11 of the instant application.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of the patent anticipates claim 13 of the instant application.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of the patent anticipates claim 14 of the instant application.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 20 of the patent anticipates claim 15 of the instant application.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of the patent anticipates claim 18 of the instant application.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of the patent anticipates claim 19 of the instant application.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 16 and 17 of U.S. Patent No. 12083398. Although the claims at issue are not identical, they are not patentably distinct from each other because various combinations of claims 16 and 17 of the patent anticipates claim 20 of the instant application.
Allowable Subject Matter
Claims 1-20 would be allowable if the overcome the Double Patenting rejections set forth in this Office action.
Regarding claim 1, US Patent 6062383 by Han discloses a golf bag (Fig 2 of Han, golf bag 10), comprising:
an elongated body with a top opening (Fig 2 and 5 of Han, the golf bag 10 has an elongated body with top opening and closed bottom base 116, a second embodiment is referenced here as it is the same as embodiment 1 except for overlapping sidewalls);
a base secured to a bottom portion of the elongated body (Fig 2 and 5 of Han, the golf bag 10 has an elongated body with top opening and closed bottom base 116, a second embodiment is referenced here as it is the same as embodiment 1 except for overlapping sidewalls), the base comprising a front base section with a front bottom surface and a front sidewall (Fig 5 of Han, front base section 44 has a front sidewall and front bottom surface) and a rear base section with a rear bottom surface and a rear sidewall (Fig 5 of Han, rear base section 42 has a bottom surface and sidewall), wherein the front base section and the rear base section are pivotally connected to form a hinged connection for moving the golf bag between an upright position and a tilted position (Fig 5 and 7 of Han, rear base 42 and front base section 44 are pivotally/hingedly connected to go between the upright and tilted position),
wherein the rear base section includes an angled tab (Fig 5 of Han, the rear base section includes an angled tab 43) [Not taught: that extends across the hinged connection when the golf bag is in the upright position], wherein the angled tab is configured to (i) move downwardly towards the front bottom surface when the golf bag is tilted (Fig 5 of Han, Column 5 lines 13-27; rear base section 42 rim forms an angled tab at the ends and a portion moved downwards towards the front bottom surface as it is moved to the tilted position) and (ii) contact the front bottom surface of the front base section to stop the rear base section from pivoting beyond a predetermined angle relative to the front bottom surface (Fig 7 of Han, the angled tab contacts the base section at the bottom portion of the angled tab),
[Not taught: wherein the front base section includes an anti-rotation plate extending from the front bottom surface of the front base section and overlapping the rear bottom surface of the rear base section, wherein the anti-rotation plate is decoupled from the rear bottom surface of the rear base section so that the plate functions independently of the hinged connection to catch and stop the rear base section from rotating beyond the predetermined angle];
one or more legs pivotally attached to a top cuff arranged along the top opening of the elongated body (Fig 2 of Han, the legs 22 are pivotally attached at 16 to the top cuff 17 at the top opening of the golf bag 10); and
one or more actuator rods with a first end coupled to the one or more legs and a second end coupled to the front base section (Fig 3 of Han, actuator rod 110 couples to an upper region of the leg at one end and a second end), wherein the one or more actuator rods are configured to move the one or more legs between an extended position and a retracted position as the rear base section and the front base section pivot relative to each other (Fig 2-3 of Han, the actuator rods 110 mode the legs 22 between an extended and retracted position as the rear base and front base sections pivot relative to each other).
Han does not expressly disclose the following Limitations:
Limitation A: wherein the front base section includes an anti-rotation plate extending from the front bottom surface of the front base section and overlapping the rear bottom surface of the rear base section, wherein the anti-rotation plate is decoupled from the rear bottom surface of the rear base section so that the plate functions independently of the hinged connection to catch and stop the rear base section from rotating beyond the predetermined angle
Han does not expressly disclose Limitation A, wherein the front base section includes an anti-rotation plate extending from the front bottom surface of the front base section and overlapping the rear bottom surface of the rear base section, wherein the anti-rotation plate is decoupled from the rear bottom surface of the rear base section so that the plate functions independently of the hinged connection to catch and stop the rear base section from rotating beyond the predetermined angle.
The following is a statement of reasons for the indication of allowable subject matter: The Prior art does not teach an anti-rotation plate, wherein the anti-rotation plate is decoupled from the rear bottom surface of the rear base section so that the plate functions independently of the hinged connection to catch and stop the rear base section from rotating beyond the predetermined angle
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Publication 2009/0312118 by Deshmukh (Fig 4: Multiple layers)
US Patent 6386362 issued to Cheng (Fig 9: Angled Tab)
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/JESSICA KAVINI TAMIL/Examiner, Art Unit 3733
/DON M ANDERSON/Primary Examiner, Art Unit 3733
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