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 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 8 of copending Application No. 18/900,141 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both teach a pallet foot, comprising a guide portion and a support portion located below the guide portion, wherein an opening is formed in a top of the guide portion, the guide portion is internally provided with a stretching space in a shape of a reverse taper, a cavity is formed in the support portion, and the cavity is connected with the stretching space. For claims 1 and 8, the co-pending application claims fail to specifically teach that the cavity communicates with the space and the dimensions between the guide and support portions. This includes: the upper dimension of the guide portion is smaller or equal to twice of an overall dimension of the support portion and an overall dimension of the support portion is smaller or equal to a lower dimension of the guide portion and the lower dimension of the guide portion being smaller than or equal to the overall dimension of the support portion plus 5 mm. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the foot of the co-pending application by having the cavity communicate with the space and sizing the guide and supports portions accordingly, to allow stable stacking of multiple feet/pallets by having the support portions of the feet received within each other and to provide a more balanced and sturdier pallet support. Please note that a change in size is generally recognized as being within the level of ordinary skill in the art. Furthermore, where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges between their dimensions would involve only routine skill in the art. MPEP2144.04.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2, 3, 5, 7 and 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 8 of copending Application No. 18/900,141 (reference application) in view of GB937354. The co-pending application teaches the limitations of claim 3, including a foot having a support and guide portion. For claim 2, the co-pending application fails to teach a ground protection structure at the bottom of its support portion. GB’354 teaches a ground protection structure (7,6) at the bottom of its support portion (8). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the foot of the co-pending application by adding the ground protection structure of GB’354 there under, for additional support.
For claims 3, 5 and 7, GB’354 teaches the specific shapes of the guide and support portions (see Fig. 2), i.e. the guide portion is in a shape of an inversed pyramid, a polygonally taper or an inverted cone; the stretching space inside the guide portion is also in a shape of an inversed pyramid, a polygonally taper or an inverted cone; and teaches an auxiliary hole (11) in the support portion. Furthermore, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. MPEP 2144.04 It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the guide and support configurations of GB937354 for its foot, for aesthetic reasons, foot strength, etc. and to provide plural drainage ports therein.
For claim 10, see rejections above for claims 1 and 8.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 8 of copending Application No. 18/900,141 (reference application) in view of Nash (WO0071431). The co-pending application teaches the limitations of claim 1, including a foot having a support and guide portion. For claim 6, the co-pending application fails to teach that an elongation portion is provided at a top of the guide portion, and the elongation portion extends upwards along an upper side of the guide portion. Nash teaches an elongation portion (c) is provided at a top of the guide portion, and the elongation portion extends upwards along an upper side of the guide portion. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the foot of the co-pending application by adding the elongation portion of Nash thereon, to elongate the vertical dimension of the foot for a taller support.
Response to Arguments
Applicant’s arguments, filed April 27, 2026, with respect to the art rejections over GB937354 and Nash (WO0071431 have been fully considered and are persuasive. The art rejections over 102 and 103 have been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANET M WILKENS whose telephone number is 571-272-6869. The examiner can normally be reached Mon thru Thurs 7am-5:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Troy can be reached at 571-270-3742. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Wilkens
May 26, 2026
/JANET M WILKENS/ Primary Examiner, Art Unit 3637
Prosecution Insights