The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
It is noted that the references listed in the specification are not cited in the 8/15/24 IDS supplied by applicant.
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.
Claim 20 is 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.
In the third-to-last line, the recitation “and wherein said discharge portion … in said operating position” is repeated from the immediately preceding line.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 8 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 5/1 of prior U.S. Patent No. 12,089,534. This is a statutory double patenting rejection. The examiner notes pending claim 8 is identical to patented claim 1 with the exception that the pending claim recites in the last two lines that the second distance is greater than or equal to 120 inches, whereas patented claim 1 recites that the first distance is at least 45% of the second distance (noting that both claims recite the first distance as being greater than or equal to 60 inches), which means that the second distance is greater than or equal to 133 and 1/3 inches (in patented claim 1). However, patented claim 5 further limits claim 1 by reciting that the first distance is at least 50% of the second distance, which means that the second distance is greater than or equal to 120 inches, and thus the claims recite identical subject matter, even though they are not literally word-for-word identical.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 9, 10 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 5 and 1, respectively, of U.S. Patent No. 12,089,534. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims sought to be patented is wholly commensurate with and encompassed within that of the patented claims.
Specifically, pending claim 9 recites that the second distance is greater than or equal to 125 inches. However, as noted above in par. 5, (at least) claim 5 of the Patent requires the second distance to be greater than or equal to 120 inches, and thus the pending claim limitation is merely a subset within and fully covered by the subject matter of patented claim 5.
Similarly, pending claims 10 and 14 recite that the second distance is greater than or equal to 130 inches, and about 133 inches, respectively. The former is again merely a subset of patented claim 5, while the latter is a subset of patented claim 1, which as noted above, requires the second distance to be greater than or equal to 133 and 1/3 inches.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9/1 of U.S. Patent No. 11,343,971. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claim sought to be patented is wholly commensurate with and encompassed within that of the patented claim.
Specifically, pending claim 20 is identical to patented claim 1 except for the recitation “said discharge portion is forward of said hitch when in said operating position such that the discharge portion is visible to a tractor operator when a tractor is connected to said hitch in order to tow said cart”. However, patented claim 9 further limits claim 1 by reciting “said discharge portion in the operating position extends beyond a back wall of a tractor cab when said tractor cab is hitched to said grain cart such that said discharge portion is configured to be observable by an operator of said tractor cab”, which are two different ways of saying essentially the same thing, and thus the claims are patentably indistinct.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,700,791 in view of Grieshop (US 5,013,208).
Pending claim 20 is identical to patented claim 3 except for the recitation “such that the discharge portion is visible to a tractor operator when a tractor is connected to said hitch in order to tow said cart”.
Grieshop shows a grain cart with a folding auger, wherein a discharge portion 97 of the auger is forward of a hitch of the grain cart when in an operating position such that the discharge portion is visible to a tractor operator when a tractor is connected to the hitch in order to tow the cart. See Figs. 1-4, col. 1:29-35 and 43-48, col. 2:25-29, col. 5:46-50 and 56-61, and col. 5:66 to col. 6:2.
It would have been obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the grain cart of patented claim 3 such that the discharge portion of the auger was visible to a tractor operator when a tractor was connected to the hitch in order to tow the cart, as taught by Grieshop, to enable the operator to readily observe and monitor the unloading operation.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,542,676 in view of Grieshop.
The same obviousness analysis set forth above in par. 11 applies equally here, with the additional distinction that pending claim 20 also differs from that of patented claim 1 in that the longitudinal axis of the upper auger assembly portion extends “upwardly, forwardly and laterally outward relative to said front corner of said container’, rather than “laterally outward relative to said axis of said lower auger assembly portion” as in the patented claim. However, insofar as the patented claim recites that the longitudinal axis of the lower auger assembly portion also extends “upwardly, forwardly and laterally outward relative to said front corner of said container”, being laterally outward of such an axis would necessarily be “upwardly, forwardly and laterally outward relative to said front corner of said container” as well, and therefore the limitation of pending claim 20 is considered to recite substantially the same limitation of the patented claim using different wording.
Claims 11-13 and 15-19 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Keenan whose telephone number is (571)272-6925. The examiner can normally be reached Mon. - Thurs.
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, Ernesto Suarez can be reached on 571-270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James Keenan/
Primary Examiner
Art Unit 3652
6/03/26
Prosecution Insights