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 21-41 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 the present claims are a mere broadening of the previously allowed claims.
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) 21-23,25-28,32,33,35,36,38,39 and 41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas et al. US 2018/0132676 on view of Thompson et al. US 9,858,748.
Thomas discloses a dispenser assembly for dispensing 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 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 defining a raised margin area” (3 figure 3). “(2) a plurality of front plates each having a first side and a second and opposite side, the plurality of front plates each having a first surface with a different appearance, the first side of each of the plurality of front plates configured to form an exterior surface of the dispenser” (para 0081). “wherein the second side of each of the plurality of the front plates is removably attachable to the first side of the back frame member, wherein the second side of each of the plurality of the front plates 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 figures 3,4).
Thomas does not disclose that 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.
Thompson teaches that 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).
It would have been obvious to one skilled in the art to modify the system of Thomas to include that 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 because it helps prevent tampering with or removal of the front plate.
(Re claim 22) “the margin area of the first side of the back frame member forms a portion of the exterior surface of the housing” (3 figure 3).
(Re claim 23) “the housing includes a front face and wherein the first side of each of the plurality of the front plates and the margin area of the first side of the back frame member form the front face” (3 figure 3).
(Re claim 25) “the second side of each of the plurality of the front plates includes at least four locking elements that correspond in location and connect to at least four mating receptors on the first side of the back frame” (9,10 figure 3, 4).
(Re claim 26) Thomas does not disclose that the second side of each of the plurality of the front plates includes at least six locking elements that correspond in location and connect to at least six mating receptors on the first side of the back frame. Increasing the number of locking elements from 4 to 6 would have been obvious to one skilled in the art as it is merely duplication of existing parts and there purpose of securing the front plate.
(Re claim 27) “the second side of each of the plurality of the front plates further includes at least one alignment tab and the first side of the back frame member defines at least one alignment slot for aligning one of the plurality of the front plates with the back frame member when connecting the two pieces together” (9,10 figure 3,4). Having the lot and mating receptor on the front plate and the locking tab one the back frame is merely a reverse of the system of Thomas and would have been obvious to try by one skilled in the art.
(Re claim 28) “wherein the locking element on the second side of each of the plurality of the front plates defines a slot and the mating receptor on the first side of the back frame member comprises a locking tab that is slideably engageable with the slot on the locking element” (9,10 figure 3, para 0061).
(Re claim 32) “wherein the dispenser is connected to a power source and wherein each of the plurality of the front plates automatically connects to the power source when connected to the back frame member” (para 0018, 0075).
(Re claim 33) “wherein the first side of each of the plurality of the front plates comprises an electronic display” (7 figure 3).
(Re claim 35) “the back frame member is pivotally connected to the housing” (figure 2, para 0065).
(Re claim 36) “the roll of sheet material comprises a roll of paper towels for dispensing paper towels from the dispenser” (para 0020).
(Re claim 38) Thomas does not disclose that the first side of the front plate has a perimeter and wherein the raised margin area of the first side of the back frame member surrounds at least 70% of the perimeter of the first side of the front plate.
Thompson teaches that the first side of the front plate has a perimeter and wherein the raised margin area of the first side of the back frame member surrounds at least 70% of the perimeter of the first side of the front plate (figure 4,5a,b).
It would have been obvious to one skilled in the art to modify the system of Thomas to include that the first side of the front plate has a perimeter and wherein the raised margin area of the first side of the back frame member surrounds at least 70% of the perimeter of the first side of the front plate because it helps prevent tampering with or remove of the front plate.
(Re claim 39) Thomas discloses that there are a plurality of possible front plates, at least three plates would have been obvious to one skilled in the art to allow for different kinds of front plates or simple replacements.
Thomas discloses a method for assembling a dispenser assembly for dispensing sheet materials, the method comprising:
(Re claim 41) “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). “a front cover assembly comprising 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 defining a raised margin area” (3 figure 3 ). “selecting one of a plurality of front plates, each of the plurality of front plates having a first side and a second and opposite side, the first side of each of the plurality of front plates forming an exterior surface of the dispenser, the second side of each of the plurality of the front plates being removably attachable to the first side of the back frame member” (6 figure 3, para 0081). “wherein the second side of each of the plurality of the front plates 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 … and attaching the selected front plate to the back frame member” (3,6,9,10 figures 3,4).
Thomas does not disclose that 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.
Thompson teaches that 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).
It would have been obvious to one skilled in the art to modify the system of Thomas to include that 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 because it helps prevent tampering with or removal of the front plate.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas/Thompson in view of Manke et al. US 2003/0067254.
Thomas/Thompson does not disclose that the second side of the front plate further includes at least one alignment tab and the first side of the back frame member defines at least one alignment slot for aligning the front plate with the back frame member when connecting the two pieces together.
Manke teaches that the second side of the front plate further includes at least one alignment tab and the first side of the back frame member defines at least one alignment slot for aligning the front plate with the back frame member when connecting the two pieces together (138-140 figure 2,3).
It would have been obvious to one skilled in the art to modify the system of Thomas/Thompson to include that the second side of the front plate further includes at least one alignment tab and the first side of the back frame member defines at least one alignment slot for aligning the front plate with the back frame member when connecting the two pieces together because it helps align and secure the front plate with the back frame.
Claim(s) 29-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas/Thompson in view of Miranda et al. US 2018/0353017.
Thomas/Thompson disclose the system as rejected above.
Thomas/Thompson does not disclose that the first side of the front plate has a mirrored finish,
a metallic finish, a woodgrain finish nor that there are at least the different front plates
Miranda teaches that the first side of the front plate has a mirrored finish,
a metallic finish, a woodgrain finish nor that there are at least the different front plates (para 0070).
It would have been obvious to one skilled in the art to modify the system of Thomas/Thompson to include that the first side of the front plate has a mirrored finish, a metallic finish, a woodgrain finish nor that there are at least the different front plates because it allows the operator of the dispenser to choose among various aesthetic appearances and functions for the front plates/
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas/Thompson in view of Owens US 2016/0373844.
Thomas/Thompson discloses the system as rejected above.
Thomas/Thompson does not disclose that the front plate includes an audio speaker.
Owens teaches that the front plate includes an audio speaker (abstract).
It would have been obvious to one skilled in the art to modify they system of Thomas/Thompson to include the front plate includes an audio speaker because audio can be used to advertise as well as the visuals.
Claim(s) 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas/Thompson in view of Liebisch US 2,930,664.
Thomas/Thompson discloses the system as rejected above.
Thomas/Thompson does not disclose that the housing has a volume so as to retain at least two rolls of sheet material.
Liebisch teaches that the housing has a volume so as to retain at least two rolls of sheet material (25,26 figure 5).
It would have been obvious to one skilled in the art to modify the system of Thomas/Thompson to include that the housing has a volume so as to retain at least two rolls of sheet material because it allows for the dispenser to operate for a longer period of time between servicing.
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas/Thompson in view of Kendall et al. US 2018/0028027.
Thomas/Thompson discloses the system as rejected above including a flush fit.
Thomas/Thompson does not disclose a U-shape of the margin area of the first side of the back frame member.
Kendall teaches a U-shape of the margin area of the first side of the back frame member (104 figure 1,6).
It would have been obvious to one skilled in the art to modify the system of Thomas/Thompson to include a U-shape of the margin area of the first side of the back frame member because it is an aesthetically pleasing arrangement and allows for a larger front plate.
Allowable Subject Matter
Claim 24 is 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; and if the double patenting rejection is overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 12,507,837 is a related patent and 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.
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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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