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 .
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.
Claims 9-12, 14-15 and 43-44 are finally rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 9, line 3, “the jamb” lacks clear singular antecedent basis to distinguish which antecedent “jamb” is being defined and should be --the header jamb--.
In claim 14, line 2 and claim 15, lines 2-3, “of one the pair of lower protective side caps” does not make clear sense as to what is being claimed, and should be --of one of the pair of lower protective side caps--. See also claims 43 and 44.
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, 4, 5, 6 and 7 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 2, and 3, respectively, of U.S. Patent No. 12,065,299. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously patented claims. Claim 1 of Patent No. 12,065,299 recites “each of the support spacers includes a base member” in lines 22-23 , which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent.
Claims 18, 20, 21 and 22 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7, 7, 7, and 8, respectively, of U.S. Patent No. 12,065,299. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously patented claims. Claim 7 of Patent No. 12,065,299 recites “each of the support spacers includes a base member” in lines 29-30, which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent.
Claims 31, 33 and 34 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,065,299. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously patented claims. Claim 11 of Patent No. 12,065,299 recites “each of the support spacers includes a base member” in lines 17-18, which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent.
Claims 31, 32, 33 and 35 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,065,299. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously patented claims. Claim 12 of Patent No. 12,065,299 recites “each of the support spacers includes a base member” in lines 17-18, which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent.
Claim 41 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,065,299 in view of Westberg II (6,029,410). Claim 12 of Patent No. 12,065,299 recites “each of the support spacers includes a base member” in lines 17-18, which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent. The previously patented claims of the earlier patent do not recite the side caps composed of corrugated cardboard. However, Westberg II disclose it was well known to provide door shipping caps from corrugated cardboard (see column 1, lines 11-27). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the package of claim 12 of the earlier patent with side caps made from corrugated cardboard in the manner of Westberg II as claimed, as such a modification would predictably provide protective door shipping structures of a conventional protective material.
Claims 48, 50, 51 and 52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21, 21, 22, and 23, respectively, of U.S. Patent No. 12,065,299. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously patented claims. Claim 21 of Patent No. 12,065,299 recites “each of the support spacers includes a base member” in lines 27-28, which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent.
Claims 3, 19, 32 and 49 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 12 and 21, respectively, of U.S. Patent No. 12,065,299 in view of Lester Jr. and Guerrant. Claims 1, 7, 12 and 21 of Patent No. 12,065,299 each recite “each of the support spacers includes a base member” (as identified above), which encompasses the previously disclosed “I-shaped base member” of the disclosure of the patent. Lester Jr. and Guerrant each disclose the support spacers each further including a portion that serves as a door base protector mounted to a bottom edge of the door slab. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the package of the earlier patent with a door base protector in the manner of either one of Lester Jr. and Guerrant as claimed, as such a modification would predictably provide a better base protection of the door.
Applicant's amendments and arguments filed December 22, 2025 have been fully considered but they are not entirely persuasive. The double patenting rejections are maintained as the applicant previously claimed a base member which by disclosure encompasses the now claimed limitations thereof. The 112 rejections of claims 9-12, 14-15 and 43-44 are maintained as they are still indefinite as explained above. Remedies therefor have been suggested.
Applicant’s amendments and arguments, filed December 22, 2025, with respect to the 103 grounds of rejection have been fully considered and are persuasive. These grounds of rejection have been withdrawn. Most of the previous rejections under 112 have also been overcome
Applicant's amendment necessitated the new grounds of rejection relative to the base member as claimed 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.
Claims 2, 8, 13, 16, 23, 36, 37, 53, 54 and 58 are each 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. Dependent claims 17, 24-30, 38-40, 42-47, 55-57 and 59-61 would also then be allowable. Dependent claims 14, 15, 43 and 44 would also then be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action.
Claim 9 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Dependent claims 10-12 would also then be allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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, ORLANDO AVILES-BOSQUES, can be reached on (571) 272-4560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG