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. 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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003-500551 in view of Tanimoto et al. (2022/0250908). Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000-97398 in view of Tanimoto et al. (2022/0250908). JP 2003-500551 and JP 2000-97398 each disclose a corrosive gas mixture-filled container (see Figures 1 and 2; see 8 in Figure 1) containing a corrosive gas mixture, the sealed container including a cylindrical body portion and a surface roughness of an inner surface of the cylindrical body portion is 38 micrometers or less (about 5 micrometers or less set forth in claim 1; 50 micrometers in paragraph 10). Neither one of JP 2003-500551 and JP 2000-97398 disclose the corrosive gas mixture to be a sulfur dioxide mixture containing sulfur dioxide and water in a vapor phase. However, Tanimoto et al. disclose a sulfur dioxide mixture containing sulfur dioxide and water in a vapor phase (see paragraphs 0004 and 0023). 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 container of either one of JP 2003-500551 and JP 2000-97398 with a sulfur dioxide mixture containing sulfur dioxide and water in a vapor phase in the manner of Tanimoto et al. as claimed, as such a modification would predictably provide a particular known analogous mixture to the generally disclosed container of either one of JP 2003-500551 and JP 2000-97398 including the conventional surface roughness ranges of JP 2003-500551 and JP 2000-97398.
As to claims 2 and 3, the “or less” recitations of JP 2003-500551 and JP 2000-97398 encompass the scope of the claims as to the maximum height of the surface roughness.
As to claim 4, Tanimoto et al. further discloses the concentration of the water is 1000 mol ppm or less (see paragraph 0023).
As to claims 5 and 6, JP 2003-500551 discloses the metal of the sealed container is an alloy steel (see paragraph 0018) comprising manganese steel or chromium molybdenum steel.
As to claim 7, JP 2003-500551, JP 2000-97398 and Tanimoto et al. each disclose a corrosive gas composition extracted from a container, Tanimoto et al. disclosing a sulfur dioxide mixture containing sulfur dioxide and water.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 2, 1, 6, 7, and 16, respectively of U.S. Patent No. 12,535,185. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of each claim may be wholly derived from or encompassed by the indicated corresponding patented claim.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
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) 270-5531. 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
Prosecution Insights