DETAILED ACTION
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,150,539. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same essential elements of the single bag pack but in broader terms, including: a harness, a travel compartment, a first lid, a personal items compartment, a computer compartment within the first lid or wall, and an expansion zipper and gusset.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-3, 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 recites that the travel compartment is constructed and arranged to be expandable from a condition of occupying substantially no volume which renders the claim indefinite. In particular, it is unclear how the travel compartment can be considered to have substantially no volume when the gusset is closed - this would essentially require something like a vacuum to remove any storage volume within the compartment. While closing the gusset may limit the amount of storage space it would not result in substantially no volume rendering the claim indefinite (alternatively the term "substantially" is unclear in this context).
Claim 9 recites that the first compartment is constructed and arranged to be “expandable and to be substantially invisible when not expanded". This limitation renders the claim indefinite because Figure 2 shows the travel compartment and gusset thereof being closed but the compartment is still visible. The only component that is not visible is the zipper itself which is hidden under the flap. Correction/clarification is required.
Claim 9 recites the limitation "the first lid opening" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims 3 and 10 are also indefinite as depending from indefinite claims 2 and 9.
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) 1-2, 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Anderson et al. (US 5,209,384).
Regarding claim 1, Anderson discloses a single-bag pack for carrying business and travel items together, comprising: a harness 22 for carrying the pack on one’s back; a travel compartment 30c having a first lid 12 to which the harness is attached; a personal items compartment 80; and a computer compartment 30a/94 within one of the first lid and a wall 14 separating the travel compartment from the personal items compartment; the travel compartment, the personal items compartment, and the computer compartment each inaccessible from within each other of the travel compartment, the personal items compartment, and the computer compartment – see Figure 6.
Regarding claim 2, the travel compartment 30c is constructed and arranged to be expandable from a condition of occupying substantially no volume – noting that this limitation is merely functional and does not define any particular structure, i.e. compartment 30c is capable of being compressed and expanded.
Regarding claim 5, to the degree claimed, the first lid 12 is considered “a suitcase-opening lid” to the degree claimed – see Figure 5.
Regarding claim 6, the suitcase-opening lid 12 remains able to open when the travel compartment is compressed – see zipper 35.
Regarding claim 7, a tuck-away compartment 58 is provided in the lid into which the harness “can be” tucked.
Regarding claim 8, see accessory compartment 30b.
Regarding claim 9, Anderson discloses a single-bag pack 10 for carrying business and travel items together, comprising: a first compartment 30c having a first lid 12, the first compartment constructed and arranged to be expandable and to be substantially invisible when not expanded (no particular structure is defined by this limitation other than the compartment being functionally capable of being compressed and expanded, which Anderson is capable of); a slender compartment 58 built into the first lid opening outside the first lid; and a second compartment 80 having a second lid 84 accessible from outside the first compartment and the slender compartment.
Regarding claim 10, see harness 22 for carrying the pack on one’s back attached to the first lid.
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.
Claims 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. (US 5,209,384) in view of Wulf (US 5,799,851).
Anderson discloses the invention substantially as claimed but does not disclose that compartment 30c is expandable by an expansion zipper joined by an expansion gusset. However, Wulf teaches that it is known to make a compartment expandable by use of an expansion zipper 29 joined by an expansion gusset 36, and wherein a flap of material 37 is provided beneath which the expansion zipper is hidden when the expansion zipper is closed. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to form the opening of compartment 30c of Anderson with the gusset and zipper taught by Wulf in order to enable the compartment to be quickly expanded and contracted to provide additional storage or a slimmer profile as needed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COREY NELSON SKURDAL whose telephone number is (571)272-9588. The examiner can normally be reached on Mon-Fri 9am-4pm EST.
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/COREY N SKURDAL/Primary Examiner, Art Unit 3734