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 .
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 6 of claim 1, the phrase “the second form” should read “a second form”
Appropriate correction is required.
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.
Claims 1, 7, 8, 10-17, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swartz (US 2677913 A).
Regarding claim 1, Swartz discloses a solid bath agent (see fig) comprising: a water-soluble main body (38); and a secondary part (37) which is enclosed within the main body and partially exposed from the main body (see fig), in a first form before the main body dissolves, wherein the secondary part is configured such that the secondary part becomes entirely exposed in the second form after the main body dissolves (once 38 dissolves, 37 will become entirely exposed).
Regarding claim 7, Swartz discloses the solid bath agent according to claim 1, wherein the secondary part is non-water-soluble (see col 1, lines 9-12).
Regarding claim 8, Swartz discloses the solid bath agent according to claim 1, wherein the secondary part is configured to allow grasping of the part exposed from the main body in the first form (39 can be grasped).
Regarding claim 10, Swartz discloses the solid bath agent according to claim 8, wherein the secondary part in the first form is held by the main body except for the exposed part (see fig).
Regarding claim 11, Swartz discloses the solid bath agent according to claim 8, wherein the exposed part of the secondary part in the first form includes a rod-shaped part (neck portion of 39) and a non-rod-shaped part (head portion of 39).
Regarding claim 12, Swartz discloses the solid bath agent according to claim 1, wherein the main body and the secondary part are, as a whole, shaped to resemble a predetermined form in the first form (see fig; shape is necessarily predetermined).
Regarding claim 13, Swartz discloses the solid bath agent according to claim 12, wherein the secondary part forms a shape of a character independently in the second form (see fig; in the second form, the secondary part forms the shape of a doll).
Regarding claim 14, Swartz discloses the solid bath agent according to claim 13, wherein a portion of the secondary part, which is the character, protrudes from the main body in the first form (see fig; in the first form, 39 protrudes from the main body).
Regarding claim 15, Swartz discloses the solid bath agent according to claim 14, wherein the secondary part is configured such that the volume of the character excluding the portion which protrudes from the main body is larger than the portion which protrudes from the main body (see fig).
Regarding claim 16, Swartz discloses the solid bath agent according to claim 15, wherein the secondary part is the character comprising at least a head, a body, and legs, and a support part is configured to be connected to the legs in the second form (see fig; support part is 40).
Regarding claim 17, Swartz discloses the solid bath agent according to claim 16, wherein the secondary part is configured to self-stand in the second form in a state where the support part is connected to the legs (see fig).
Regarding claim 20, Swartz discloses the solid bath agent according to claim 1, wherein the main body is made of rigid material (bar soap is rigid) in the first form, and the secondary part is made of flexible material (“elastic rubber”; see col 1, lines 9-12) in both the first form and the second form.
Claims 1, 6, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Japanese Patent Document JP H0515945 U, herein referred to as JP ‘945.
Regarding claim 1, JP ‘945 discloses a solid bath agent (1) comprising: a water-soluble main body (2); and a secondary part (6) which is enclosed within the main body and partially exposed from the main body, in a first form before the main body dissolves (see fig 3(c) for the first form in which the secondary part is partially exposed), wherein the secondary part is configured such that the secondary part becomes entirely exposed in the second form (see fig 3(d) for the second form in which the secondary part is entirely exposed) after the main body dissolves.
Regarding claim 6, JP ‘945 discloses the solid bath agent according to claim 1, wherein the main body and the secondary part included in the main body both sink in water in the first form (see fig 3(c)), and the secondary part floats in water in the second form (see fig 3(d)).
Regarding claim 19, JP ‘945 discloses the solid bath agent according to claim 1, wherein the main body is configured so that a maximum diameter thereof is longer than a longest side of the secondary part (see fig 1).
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Duda, III (US 20140162525 A1), herein referred to as Duda.
Regarding claim 1, Duda discloses a solid bath agent (see fig 3) comprising: a water-soluble main body (141); and a secondary part (131, 151) which is enclosed within the main body and partially exposed from the main body (see left portion of fig 3 in which 131 is exposed), in a first form before the main body dissolves, wherein the secondary part is configured such that the secondary part becomes entirely exposed in the second form after the main body dissolves (see right portion of fig 3).
Regarding claim 2, Duda discloses the solid bath agent according to claim 1, wherein the main body is configured to be rollable in the first form (141 is cylindrical which would be rollable), and the secondary part is configured to be non-rolling in the second form (see right portion of fig 3; 131 and 151 are not rollable).
Regarding claim 3, Duda discloses the solid bath agent according to claim 2, wherein the secondary part is configured to be invisible from an outside except for the part exposed from the main body, in the first form (see left portion of fig 3).
Regarding claim 4, Duda discloses the solid bath agent according to claim 2, wherein the secondary part is located approximately at a central part of the main body in the first form (151 is necessarily located at a central part of the main body since 151 would extend through the whole main body in the first form).
Regarding claim 5, Duda discloses the solid bath agent according to claim 2, wherein the secondary part is located in vicinity of an outer surface of the main body in the first form (151 is necessarily located in vicinity of an outer surface of the main body since 151 would extend to each surface of the inside of the main body in the first form).
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 9 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Swartz (US 2677913 A).
Regarding claim 9, Swartz discloses the solid bath agent according to claim 8, but does not disclose wherein the part of the secondary part is exposed from only a single point of the main body in the first form.
While Swartz recognizes the benefit of being able to rest 38 upright on a base 41 to dry (see col 2, lines 20-23), the solid bath agent would work equally well if soap cake 38 extended to enclose the visible portions of 40 while leaving the flat portion able to rest on base 41. It would have been an obvious matter of design choice to one of ordinary skill in the art before the effective filing date of the claimed invention to extend soap cake 38 to enclose the visible portions of 40 in order to provide more soap for the user, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04. Per this modification, it follows that the part of the secondary part is exposed from only a single point (i.e., 39 is exposed from only a single upper point of 38) of the main body in the first form.
Regarding claim 18, Swartz discloses the solid bath agent according to claim 17, wherein the support part is contained within the main body in the first form, and the support part and the legs are connected to each other in the first form (per rejection of claim 9 above).
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/015,803 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the reference application anticipates all limitations of claim 1 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner notes that the prior art cited on PTO-892 but not relied upon for this rejection discloses solid bath agents relevant in scope and structure to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christine M Mills whose telephone number is (571) 272-8322. The examiner can normally be reached from Monday - Thursday, 7:30 - 5:30 EST.
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, Namrata Boveja, can be reached on (571) 272-8105. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/CHRISTINE M MILLS/Supervisory Patent Examiner, Art Unit 3675
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