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 during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 11,396,763 (“the ‘763 patent”). A review of the maintenance fee status for the ‘763 patent shows the 3.5 year fee has been paid and the first day to pay the 7.5 year fee opens July 26, 2029, the surcharge starts January 29, 2030, and the last day to pay is July 26, 2030.
Amendments
The claim amendment of April 28, 2026 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 claims 13-33 are new in relation to the patent, they all should be entirely underlined without any other editing marks and the status identifiers should be (New) of (New – Once Amended) with Twice, Three Times, Four Times, etc. before Amended depending on how many times the claim has been amended.
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 6-15 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, including the new limitations added in the April 28, 2026 amendment, 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, including the new limitations added in the April 28, 2026 amendment, 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.
Allowable Subject Matter
Claims 1-12 are allowed.
Claims 15, 17-19, 22, 24-26, 29, and 31-33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
With respect to Applicant’s arguments starting on page 13, line 21 to page 14, line 2, Applicant argues the corrections to the specification amendment overcome the amendment objections. While this is true, the claim amendments filed April 28, 2026 do not comply with 37 CFR 1.173(d)(2) and (g) as advanced above. Thus the amendments are objected to.
With respect to Applicant’s arguments starting on page 14, line 3 to page 14, line 19, Applicant argues filing the supplemental declaration has overcome the objection and rejection of the reissue declaration. Applicant’s arguments are persuasive and the objection and rejection of the reissue declaration have been withdrawn.
With respect to Applicant’s arguments starting on page 14, line 20 to page 17, line 6, Applicant argues the amendments to the claim have overcome the recapture rejection. Applicant’s arguments are persuasive and the recapture rejection has been withdrawn.
With respect to Applicant’s arguments starting on page 17, line 7 to page 18, line 17 Applicant argues the original patent does support a latch actuation member in a shape other than a ball and amendments have added the secondary lock mechanism. Applicant’s arguments are persuasive and the original patent rejection has been withdrawn.
With respect to Applicant’s arguments starting on page 18, line 18 to page 20, line 6, Applicant argues Moret does not disclose a gravity actuated latch having a secondary locking mechanism configured to inhibit the latch actuation member from moving along the elongated passage by inhibiting movement of the lever when a container with which the latch body is configured to be coupled is accidentally tipped. Applicant’s arguments are persuasive and thus the 35 USC 102 rejection is withdrawn.
With respect to Applicant’s arguments starting on page 20, line 7 to page 20, line 17, Applicant argues the amendments have changed the claim scope and overcome the double patenting rejection. Applicant’s arguments are not persuasive. While the amendments have changed the scope of the claims, patent claims of US Patent No. 10,100,554 and 11,149,467 (“the ‘554 and ‘467 patents”) still contain all of the limitations of the instant reissue claims, including the latched and unlatched configuration, latch member moving along the elongated passage, and the secondary lock mechanism. Thus, the double patenting rejections in view of the ‘554 and ‘467 patents are maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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
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