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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,396,763 (“the ‘763 patent”) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee
Applicant is reminded the 3.5 year maintenance fee for U.S. Patent No. 11,396,763 (“the ‘763 patent”) is currently due. The payment window opened July 26, 2025, the surcharge begins January 27, 2026, and the last day to pay is July 27, 2026. Applicant is reminded during the prosecution of the reissue patent application, maintenance fees must be kept up to date for the prosecution of the application to continue.
Amendments
The specification amendment of July 25, 2024 does not comply with 37 CFR 1.173(b)-(g). 37 CFR 1.173(d)(1) “The matter to be omitted by reissue must be enclosed in brackets”. 37 CFR 1.173(d)(2) states “The matter to be added by reissue must be underlined”. The Applicant is also reminded that 37 CFR 1.173(g) states that all amendments must be made relative to the patent. As the specification amendment states that the paragraph at column 1, lines 6-18 is being deleted and replaced with the underlined paragraph of the amendment:
The original paragraph should be shown in single brackets to indicate it is being deleted, or
The original paragraph should be amended with underlining for new material added to it and single brackets around deleted material removed from it.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because the error which is relied upon to support the reissue application is not an error upon which a reissue can be based. See 37 CFR 1.175and MPEP § 1414. The error statement is the “latch actuation ball” and “secondary lock mechanism” limitations are unduly narrow. Therefore, the limitation, “latch actuation ball” is changed to “latch actuation mechanism” and the “secondary lock mechanism” is removed in the new independent reissue claims. However, as explained below these changes are impermissible recapture and do not meet the original patent requirement. As such, these changes are not proper reissue errors.
Claim Rejections - 35 USC § 251: Improper Reissue Declaration
Claims 1-33 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251: Recapture
Claims 13-33 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Claims 13-33 are broader than patented claims 1-12. Claims 13-33 do not require “a catch…in a latched configuration or unlatched configuration”, “a latch actuation ball…the latch actuation ball moving along the elongated passage during…”, and “a secondary locking mechanism…by inhibiting the latch actuation ball from moving along the elongated passage when the container is accidentally tipped…” (emphasis added).
Therefore step 1 of the three-step test is met for claims 13-33.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘763 patent, the Examiner rejected claims 1-12 under 35 USC § 112(b)/second paragraph as indefinite in a non-final rejection mailed November 26, 2021. The Applicant responded with arguments and amendments. The Applicant amended claim 1 to add the limitation, “in a latched configuration or unlatched configuration respectively” to the catch limitation; adding the limitation, “the latch actuation ball moving along the elongated passage during” to the latch actuation ball limitation; adding the limitation “by inhibiting the latch actuation ball from moving along the elongated passage when the container is accidentally tipped” to the secondary lock mechanism limitation; and arguing the amendments overcome the 35 USC § 112(b)/second paragraph rejections in lines 4-10 of page 5 of the remarks filed on February 28, 2022. On March 23, 2022, the Examiner mailed a notice of allowability indicating claims 1-12 as allowable
Therefore, the Patent Owner amended claim 1 to add the limitations “in a latched configuration or unlatched configuration respectively”, “the latch actuation ball moving along the elongated passage during”, “by inhibiting the latch actuation ball from moving along the elongated passage when the container is accidentally tipped”, and argued that the amendments overcame the 35 USC § 112(b)/second paragraph rejections. Therefore, the newly presented claims must include the limitations “in a latched configuration or unlatched configuration respectively”, “the latch actuation ball moving along the elongated passage during”, and “by inhibiting the latch actuation ball from moving along the elongated passage when the container is accidentally tipped”. Claims 13-33 fail to disclose any of the limitations added to the claims to make them allowable.
Therefore, the limitations of “in a latched configuration or unlatched configuration respectively”, “the latch actuation ball moving along the elongated passage during”, and “by inhibiting the latch actuation ball from moving along the elongated passage when the container is accidentally tipped” are limitations which are considered surrendered subject matter1.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claims 13-33 are being broadened to omit the surrendered subject matter.
Therefore step 2 of the three-part test is met.
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
Therefore, the third step of the analysis does not need to be performed for claims 13-33.
Therefore, claims 13-33 improperly recapture surrendered subject matter.
Claims 13-33 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections - 35 USC § 251: Original Patent
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. at 1356. The Federal Circuit adopted the Supreme Court's explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification’ ”. Id. at 1359. The Federal Circuit further stated that although wording in 35 USC 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
Based on Antares a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, the four corners of the ‘763 patent, including the entire disclosure and all the embodiments shown in the drawings, disclose the latch actuation member as a ball 48. While column 9, lines 35-37 states the latch actuation member may be any shape, this is only reference to the latch actuation member being anything other than a ball. Furthermore, this is just a mere suggestion of what shape the latch actuation member could be and there is no further fully fleshed out description of other embodiments with different shaped lock actuation members. As such, the reissue claims do not meet the original patent requirement for the latch actuation member of any other shape than a ball. Furthermore, the four corners of the patent, including the specification and drawings, do not disclose a gravity actuated lock without a secondary lock mechanism. The first embodiment shown and described in Figures 1-11 and the associated description in the specification describes a secondary lock mechanism being a disc 44. The second embodiment describes a secondary lock mechanism 120 including a lever 121, dampening device 130, plunger 132, and a secondary lock actuation member/ball 44 in Figures 12-19 and the associated description in the specification. The third embodiment in Figures 20-22 and associated description in the specification, describes a secondary lock mechanism 120 including a lever 121, rotary dampening device 150, plunger 132, and a second lock actuation member/ball 44. As such there is not embodiment described with out a secondary locking mechanism. As such the reissue claims do not meet the original patent requirement of a secondary locking mechanism.
Therefore, claims 13-33, which are directed to a gravity actuated lock with a latch actuation member of shapes other than a ball and without a secondary lock mechanism do not satisfy the “original patent” requirement.
Claims 13-33 are rejected under 35 USC 251 for not claiming subject matter directed to the invention disclosed in the original patent.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 13, 16-17, 20, 23-25, 27, 30-31, and 33 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Moret (US-6666485). Regarding Claim 13, Moret discloses a gravity-actuated latch mechanism, comprising: a strike (at 13) configured to couple to a lid of a container; and a latch body 2 configured to couple to the container, wherein the latch body comprises: a housing 12;a catch 9c,9d,8d,8c,8b,8a accessible from outside of the housing, wherein the catch is configured to selectively engage and disengage the strike; a lever 7d having a lever arm 7e, the lever moveable between an engaged position (Figure 5) and a disengaged position (Figures 3-4), wherein the lever is engaged with the catch in the engaged position and is disengaged with the catch in the disengaged position; and a latch actuation member 7a housed in an elongated passage (defined by plates at each end of 17) within the housing, wherein the lever arm of the lever extends into the elongated passage (depicted in Figure 1), and wherein the latch actuation member is configured to apply a force (down arrow in Figure 1) to the lever arm to move the lever from the engaged position to the disengaged position in response to the latch actuation member moving within the elongated passage during tipping the container for dumping (see Figures 3-5) (Figures 1-14).
Regarding Claim 16, Moret discloses movement of the lever from the engaged position to the disengaged position is configured to cause the catch to disengage the strike to release the strike (depicted in Figures 3-5) (Figures 1-14).
Regarding Claim 17, Moret discloses a manual open actuator 17 coupled with the lever and configured to receive an input from a user to move the lever from the engaged position to the disengaged position (see column 8, lines 34-40) (Figures 1-14).
Regarding Claim 20, Moret discloses a gravity-actuated latch mechanism, comprising: a latch body 2 configured to couple with a container, the latch body including: a housing 12 having a passage (defined by plates at end of 17) formed therein; a catch 9c,9d,8d,8c,8b,8a rotatably coupled with the housing and accessible from an outside of the housing ;a latch actuation member 7a configured to move within the passage; and a lever 7d rotatably coupled with the housing and having a lever arm 7e extending at least partially into the passage, the lever movable between an engaged position (Figure 5) and a disengaged position (Figures 3-4), wherein the lever is engaged with the catch in the engaged position and is disengaged with the catch in the disengaged position; wherein a movement of the latch actuation member within the passage is configured to apply a force (down arrow in Figure 1) to the lever arm to move the lever from the engaged position to the disengaged position (Figures 1-14).
Regarding Claim 23, Moret discloses movement of the lever from the engaged position to the disengaged position is configured to cause the catch to disengage a strike (at 13) to release the strike (depicted in Figures 3-5) (Figures 1-14).
Regarding Claim 24, Moret discloses a manual open actuator 17 coupled with the lever and configured to receive an input from a user to move the lever from the engaged position to the disengaged position (see column 8, lines 34-40) (Figures 1-14).
Regarding Claim 27, Moret discloses a gravity-actuated latch mechanism, comprising: a housing 12; a catch 9c,9d,8d,8c,8b,8a movably coupled with the housing and accessible from an outside of the housing; a lever 7d coupled with the housing and movable between an engaged position (Figure 5) and a disengaged position (Figures 3-4), wherein the lever is engaged with the catch in the engaged position (Figure 5) and is disengaged with the catch in the disengaged position (Figures 3-4); and a latch actuation member 7a provided at least partially within the housing and configured to move within the housing in response to a tipping motion of the housing (Figures 3-5), wherein a movement of the latch actuation member is configured to cause the lever to move from the engaged position to the disengaged position to disengage the catch (see Figures 3-5) (Figures 1-14).
Regarding Claim 30, Moret discloses movement of the lever from the engaged position to the disengaged position is configured to cause the catch to disengage a strike (at 13) to release the strike (depicted in Figures 3-5) (Figures 1-14).
Regarding Claim 31, Moret discloses a manual open actuator 17 coupled with the lever and configured to receive an input from a user to move the lever from the engaged position to the disengaged position (see column 8, lines 34-40) (Figures 1-14).
Regarding Claim 33, Moret discloses the lever including a first end 7c and a second end (end of 7e near 7a), the first end of the lever configured to engage with catch when the lever is in the engaged position (Figure 5), and wherein the second end of the lever is configured to contact the latch actuation member to move the lever to the disengaged position (as 7a is attached to 7e, 7e contacts 7a) (Figures 1-14).
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 13-14, 16, 20-21, 23, 27-28, and 30 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,100,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are narrower in scope that the instant reissue application claims. The patent claims include all of the limitations of the instant reissue claims with extra limitation, and thus, encompass and read on the instant reissue application claims. It is noted that a latch actuation ball has a least one curved surface. As such, the patent claims render the instant reissue application claims unpatentable under obvious type anticipatory double patenting.
Claims 13-14, 16, 20-21, 23, 27-28, and 30 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,149,467. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims are narrower in scope that the instant reissue application claims. The patent claims include all of the limitations of the instant reissue claims with extra limitation, and thus, encompass and read on the instant reissue application claims. It is noted that a latch actuation spherical member has a least one curved surface. As such, the patent claims render the instant reissue application claims unpatentable under obvious type anticipatory double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
CONFEREES: /WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022) states amendments to overcome 35 USC § 112(b)/second paragraph rejections can raise a surrender generating limitation. See the definition of a Surrender Generation Limitation in MPEP 1412.02(I). See MPEP 1412.02(II)(B)(1), second paragraph.