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 .
Applicant’s election without traverse of Species G and claims 1-5, 7-19 and 24-26 in the reply filed on October 31, 2025 is acknowledged.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the positively claimed twist-tie cluster must be shown in elected species Figures 15-19 and the claimed top base portion and rear base portion clearly distinguished by numeral in the drawings or the features canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification or in the drawings in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. In claim 13, it is not seen that the elected species of Figures 15-19 discloses “a bottom portion extension extending outward from a bottom of the rear portion…”, as it appears limited to Figures 12-14.
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 7-8, 14-19 and 24-26 are 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 7, line 2, “thereby being in effect integral” is indefinite as to the meaning and scope of “in effect”.
In claim 14, lines 7 and 8, claim 17, lines 2 and 5, claim 19, line 3, claim 24, line 5, claim 25, lines 2-3 and 4 and claim 26, lines 2 and 5, the terms “hook-like” and “rod-like” are indefinite in the meaning and scope of “like”. The phrase "____-like" renders the claims indefinite because the claims include elements not actually disclosed (those encompassed by "____-like"), thereby rendering the scope of the claims unascertainable. See MPEP § 2173.05(d).
In claim 18, line 2, “the at least one corresponding cantilever member” lacks antecedent basis.
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.
Claims 1, 3, 5, 7-8, 10-12 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Helseth et al. (6,217,500). Claims 1, 3, 5, 7-12 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Helseth (5,961,434). Claims 1, 5, 7, 9-12 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Helseth (D395,566). Each discloses a twist-tie dispenser comprising a twist-tie cluster (40; 40; see Figure 2) including a top cluster portion (52; 52; see Figure 2), and a base (80; 80; see Figure 1) including a top base portion (94, 92, upper part of 82; 81, 83, upper part of 82; see Figure 1), the top base portion being generally U-shaped and forming an opening configured and arranged to receive the top cluster portion of the twist-tie cluster.
As to claim 3, Helseth et al. (‘500) and Helseth (‘434) each disclose the base made of extruded plastic.
As to claim 5, each discloses the twist-tie cluster at least partially friction-fit within the base (see Figure 6; provided by 100 and 101; see Figure 2).
As to claim 7, each discloses the base and twist-tie cluster secured together integrally.
As to claim 8, Helseth et al. (‘500) and Helseth (‘434) each disclose adhesive (48; 48).
As to claims 9 and 10, Helseth et al. (‘434) and Helseth (‘566) each disclose a mounting member (86a or 86b; shown holes) configured and arranged to allow securing the base to a mounting plate.
As to claim 11, each discloses the top cluster portion is a connected portion including a connecting member (52; 52; ass shown in Figure 2) interconnecting a plurality of twist-ties.
As to claim 12, each discloses a rear portion (82; 82; as clearly shown) extending downward from the top base portion.
As to claim 24, the recitation “is configured for attachment…” in line 5 is mere intended use, not construction. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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 of this title, 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 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over any of the three previously employed Helseth references in view of Gelbard (4,537,330). The Helseth references disclose various materials may be used to comprise the construction, but not specifically cardboard, inherently biodegradable. However, Gelbard discloses a similar dispensing system where the base construction is made from cardboard. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide any of the three Helseth references from cardboard as claimed, as such a modification would predictably provide an expectedly workable construction that is biodegradable and less expensive to produce. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 14-19 and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 1, 1, and 4, respectively, of U.S. Patent No. 9,486,092. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter as now claimed is rendered obvious by the claimed subject matter of the indicated earlier patented claims.
Claims 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, and 6, respectively, of U.S. Patent No. 10,138,039. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter as now claimed is rendered obvious by the claimed subject matter of the indicated earlier patented claims.
Claims 14-19 and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 1, 1, and 4, respectively, of U.S. Patent No. 10,661,956. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter as now claimed is rendered obvious by the claimed subject matter of the indicated earlier patented claims.
Claim 14 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and double patenting overcome by a proper Terminal Disclaimer. Dependent claims 15-19 would also then be allowable.
Claim 25 would be allowable if rewritten to overcome the rejections 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, and double patenting overcome by a proper Terminal Disclaimer. Dependent claim 26 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.
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.
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/BRYON P GEHMAN/ Primary Examiner, Art Unit 3736
BRYON P. GEHMAN
Primary Examiner
Art Unit 3736
BPG