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 .
Specification
The disclosure is objected to because of the following informalities: page 1, paragraph [0001], the status of 17/982,103, 16/548,422, and 17/866,143 should be updated.
Appropriate correction is required.
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 1-4, 6, and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,134,871. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 12,134,871.
Claims 1-4, 6, and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,492,771. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are fully encompassed by those of U.S. Patent No. 11,492,771.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 and 9-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bestmann (US 5,338,131).
As to claim 1, Bestmann discloses an erosion control apparatus comprising:
a marsh installation (17,23) placed relative to the shoreline, wherein the marsh installation comprises a plurality of stones 29 wrapped in a layer of coir fiber 25 with sediment and a plant matrix 14 over the plurality of stones;
a plurality of anchors (15,19), each anchor connected to the marsh installation such that the anchors extend to a depth into a slope; and a fill material (ground surface) positioned between the marsh installation and the anchors (15,19), at least a portion of the marsh installation and the fill material being positioned over the anchors.
As to claim 9, Bestmann discloses (see figure 4) further comprising a plurality of anchored fiber rolls positioned adjacent the marsh installation.
As to claim 10, Bestmann discloses (see figures 4 and 5) wherein at least one fiber roll is coupled to the marsh installation.
As to claim 11, Bestmann discloses a live plant 14 material within the plant matrix
that is configured to grow through a coir fabric layer.
As to claim 12, Bestmann discloses wherein the marsh installation has a depth and a length and a width greater than the depth.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 2 and 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bestmann (US 5,338,131) in view of Hoashi (US 6,328,874).
As to claims 2 and 3, Bestmann discloses all that is claimed except 2 wherein the plurality of stones comprise cobblestones have a size range between 6-12 inches
and a size range between 8-10 inches. While silent to sizes, Hoashi discloses the use of cobblestones 4 in a mesh structure for use on a shoreline. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to provide a predetermined size of cobblestone for a riparian structure because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering optimum or workable ranges involves only routine skill in the art.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bestmann (US 5,338,131) in view of Choi (KR 101012414).
As to claim 4, Bestmann discloses all that is claimed except for a biodegradable mesh covering the layer of coir fiber and the biodegradable mesh comprises polylactic acid. Choi discloses a vegetation type mat comprising a biodegradable mesh that comprises polylactic acid. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a biodegradable mesh comprising polylactic acid, since doing so provides the expected benefit of environmentally friendly material.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bestmann (US 5,338,131) in view Melby III (US 2013/0272790).
As to claim 6, Bestmann discloses all that is claimed except wherein the plurality of anchors includes at least one helical anchor. Melby III discloses the use of helical anchors 12 to hold down a roll to a shoreline. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a helical anchor, since doing so provides the expected benefit of anchoring a structure to the ground.
Allowable Subject Matter
Claims 7, 8 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 7, the prior art of record fails to show or suggest the erosion control apparatus further comprising a container including shellfish.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDERICK L LAGMAN whose telephone number is (571)272-7043. The examiner can normally be reached Tuesday-Friday 8am-6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Anderson can be reached at 571-270-5281. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FREDERICK L LAGMAN/Primary Examiner, Art Unit 3678