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.
Claims 1-3 and 5-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,150,598. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1-3 and 5-20 are merely a broadening of the previously allowed claims and claims 21-22 do not differ in a patentably distinct manner from the previously allowed claims, the U-shaped of the margin area is merely an aesthetic design choice.
Claim Rejections - 35 USC § 102
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.
Claim(s) 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thomas et al. US 2018/0132676.
Thomas discloses a method for removing a front plate of a dispenser for sheet materials, the method comprising:
(Re claim 22) “providing a dispenser comprising: a housing having an interior volume so as to retain at least one roll of sheet material, the housing including a front cover assembly” (1 figure 1). “a dispensing mechanism contained within the housing for dispensing the sheet material” (figure 2). “wherein the front cover assembly comprises: (1) a front plate having a first side and a second and opposite side, the first side of the front plate forming an exterior surface of the dispenser” (6 figure 3). “(2) a back frame member, the back frame member comprising a first side and a second and opposite side, the second side of the back frame member forming an interior surface of the housing, the first side of the back frame member being removably attachable to the second side of the front plate; and disengaging the front plate from the back frame member” (3,6,9,10 figure 3,4).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al. US 2018/0132676 in view of Thompson et al. US 9,858,748 and Kendall et al. US 2018/0028027.
Thomas discloses a dispenser for sheet materials comprising:
(Re claim 21) “a housing having an interior volume so as to retain at least one roll of sheet material, the housing including a front cover assembly” (1 figure 1). “a dispensing mechanism contained within the housing for dispensing the sheet material” (figure 2). “wherein the front cover assembly comprises: (1) a front plate having a first side and a second and opposite side, the first side of the front plate forming an exterior surface of the dispenser” (6 figure 3). “(2) a back frame member, the back frame member comprising a first side of the back frame member and a second and opposite side of the back frame member, the second side of the back frame member forming an interior surface of the housing, the first side of the back frame member defining a raised margin area, the first side of the back frame member being removably attachable to the second side of the front plate, wherein the second side of the front plate includes at least one locking element that corresponds in location and connects to at least one mating receptor on the first side of the back frame member” (3,6,9,10 figure 3,4).
Thomas does not disclose that the front plate forms a flush fit with a U-shape of the margin arca of the first side of the back frame member when the locking element and mating receptor are engaged.
Thompson teaches that the first side of the back frame defining a raised margin area, wherein the front plate forms a flush fit with the margin area of the first side of the back frame member when the locking element and mating receptor are engaged (figure 5a,b).
Kendall teaches a U-shaped margin area (104 figure 1,6).
It would have been obvious to one skilled in the art to modify the system of Thomas to include that that the front plate forms a flush fit with a U-shape of the margin arca of the first side of the back frame member when the locking element and mating receptor are engaged because a flush fit helps prevent tampering with or removal of the front plate and the U-shaped margin area provides an aesthetically pleasing design and allows for a larger decorative panel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 12,507,837 is applicant’s own related invention and is subject to a terminal disclaimer to US 12,150,598.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY R WAGGONER whose telephone number is (571)272-8204. The examiner can normally be reached Mon-Thurs 5am-330pm.
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, Jacob Scott can be reached at 571-270-3415. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TIMOTHY R. WAGGONER
Primary Examiner
Art Unit 3655 B
/TIMOTHY R WAGGONER/ Primary Examiner, Art Unit 3655
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