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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 6, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by U.S. Pat. 5,836,470 to Neelly et al. (hereinafter, “Neelly”).
Regarding claim 1, Neelly discloses a receptacle (receptacle 50, Fig. 20) comprising: a first frame (swing side 54, Figs. 18-20); a second frame (main can 52, Figs. 18-20) adjoining the first frame (swing side 54 is joined to main can 52, see Figs. 18-20) to define a cavity with a first volume (see Fig. 19); a hinge (pivot point at hinge 96, Figs. 19, 26), defining a first axis (first axis is into the page at hinge 96 in Fig. 19) and operatively connecting the first and second frame (swing side 54 and main can 52, see Figs. 19-20), wherein the first frame (swing side 54) may pivot about the first axis in order to redefine the cavity with a second volume (see Fig. 20); and a first member (annotated Fig. 22 below) mated with a first track (annotated Fig. 22), wherein the first member (annotated Fig. 22) and the first track (annotated Fig. 22) are configured to permit movement between the first frame (swing side 54) and the second frame (main can 52) in order to redefine the cavity with the second volume (see Fig. 20), and further wherein when the first member (annotated Fig. 22) and the first track (annotated Fig. 22) are mated (Figs. 19-20), the first member (annotated Fig. 22) is completely concealed (see Fig. 22) between the first frame (swing side 54) and the second frame (main can 52) when the receptacle (receptacle 50) is in a collapsed state (state with the second volume, see Fig. 20).
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Neelly Annotated Figure 22
Regarding claim 6, Neelly further discloses the receptacle (receptacle 50) further comprises a spring (springs 94, Figs. 18, 22) connecting the first frame (swing side 54) to the second frame (main can 52) and configured to resist the first frame’s pivot about the first axis (springs 94 resist pivot of swing side 54 about the pivot point 70, col. 4, ll. 57-64).
Regarding claim 7, Neelly further discloses the first member (annotated Fig. 22) is disposed on an exterior surface of the second frame (see annotated Fig. 22) and is mated with the first track (annotated Fig. 22) that is disposed on an interior surface of the first frame (see annotated Fig. 22).
Regarding claim 9, Neelly further discloses the first frame (swing side 54) further comprises a second track (annotated Fig. 22), wherein the second track (annotated Fig. 22) is disposed on the interior surface of the first frame (see Fig. 22) and is mated with a second member (annotated Fig. 22) disposed on the exterior surface of the second frame (main can 52, see Fig. 22).
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 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Neelly as applied to claim 1 above, and in further view of U.S. Pub. 2008/0116207 to Yang et al. (hereinafter, “Yang”).
Regarding claim 2, Neelly does not expressly disclose a lid assembly, wherein the lid assembly abuts the cavity with the first volume and covers an aperture defined by the cavity with the first volume.
Yang teaches a container (assembly 20) having a lid assembly with an outer lid (lid 30, Fig. 4) and an inner lid (trim 28, Fig. 4). A lid hinge (hinge about pivot shaft 50, Fig. 4; para. [0028]) is operatively attached to both the outer lid (lid 30) and the inner lid (trim 28) such that each of the outer and inner lids may pivot about an axis defined by the lid hinge independently of each other (lid 30 and trim 28 each pivot about axis defined by pivot shaft 50, Fig. 4; paras. [0028], [0035]). Yang teaches that it is known to include a lid with trash containers in order to contain odors, hide the trash from view, and prevent the trash from contaminating the surrounding area (para. [0004]). Yang further teaches that the container has a foot pedal assembly (see Fig. 3) having a foot pedal member (pedal bar 38, Fig. 3), a pivot rod (rod along axis 42, Fig. 3; para. [0027]), and a push rod (rod 40, Fig. 3). Yang teaches that the pivot rod (rod along axis 42) defines a third axis (axis 42, Fig. 3; para. [0027]) between the foot pedal member (pedal bar 38) and the push rod (rod 40). Yang teaches that the push rod (rod 40) is operatively abutted to the foot pedal member (pedal rod 38) and the lid assembly (see Fig. 3; para. [0027]). Yang teaches that this pedal arrangement operates to translate an up-down motion of the pedal to a pivot motion for the lid to permit a user to open the lid via the foot pedal (paras. [0027], [0035]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have modified the container of Neelly to have a lid assembly and foot pedal assembly as taught by Yang for the purpose of covering the container to contain odors and hide the trash from view while permitting a user to open the lid via the foot pedal, as recognized by Yang (paras. [0004], [0027], [0035]).
Regarding claim 3, Neelly as modified by Yang already includes an outer lid (Yang, lid 30); an inner lid (Yang, trim 28) seated within the outer lid (Yang, see Fig. 4); and a lid hinge (Yang, hinge about pivot shaft 50), defining a second axis (Yang, axis defined by pivot shaft 50) and operatively attached to the outer and inner lid (Yang, Fig. 4; paras. [0028], [0035]), wherein each of the outer lid (Yang, lid 30) and the inner lid (Yang, trim 28) may pivot about the second axis defined by the lid hinge (Yang, axis defined by pivot shaft 50) independently of each other (Yang, see Fig. 4; paras. [0028], [0035]).
Regarding claim 4, Neelly as modified by Yang already includes the receptacle (Neelly, receptacle 50) further comprises a foot pedal assembly (Yang, assembly including pedal bar 38 and push rod 40, Fig. 3).
Regarding claim 5, Neelly as modified by Yang already includes the foot pedal assembly (Yang, Fig. 3) further comprises: a foot pedal member (Yang, pedal bar 38); and a pivot rod (Yang, rod along axis 42) defining a third axis (Yang, axis 42) disposed within the foot pedal assembly between the foot pedal member (Yang, pedal bar 28) and a push rod (Yang, rod 40) operatively abutted to the foot pedal member and the lid assembly (Yang, Fig. 3; para. [0027]).
Claims 8 and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Neelly.
Regarding claim 8, the embodiment of Figure 22 of Neelly does not expressly disclose the first member is disposed on an interior surface of the first frame and is mated with the first track that is disposed on an exterior surface of the second frame.
Neelly teaches an alternate embodiment having a first member on the first frame and a first track on an exterior surface of the second frame (see Fig. 23). Neelly teaches that either frame could have the track and the opposite frame would have the first member (see col. 5, ll. 31-47; see also Figs. 11-17 and 21-23).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the container of Neelly to swap the first member and the first track such that the first member is on an interior surface of the first frame and the first track is on an exterior surface of the second frame because it has been held that rearranging parts of an invention involves only routine skill in the art (MPEP 2144.04(VI)(C), citing In re Japikse, 86 USPQ 70). Here, Applicant has not disclosed any criticality for the claimed arrangement, and there is no evidence of record that establishes that rearranging the first member and first track would result in a difference in function of the Neelly container.
Regarding claim 10, Neelly further discloses a second track and a second member (see annotated Fig. 22).
However, Neelly does not expressly disclose the second frame further comprises the second track, wherein the second track is disposed on the exterior surface of the second frame and is mated with the second member disposed on the interior surface of the first frame.
Neelly teaches an alternate embodiment having a second track on the second frame and a second member track on an interior surface of the first frame (see Fig. 23). Neelly teaches that either frame could have the track and the opposite frame would have the member (see col. 5, ll. 31-47; see also Figs. 11-17 and 21-23).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the container of Neelly to swap the second member and the second track such that the second member is on an interior surface of the first frame and the second track is on an exterior surface of the second frame because it has been held that rearranging parts of an invention involves only routine skill in the art (MPEP 2144.04(VI)(C), citing In re Japikse, 86 USPQ 70). Here, Applicant has not disclosed any criticality for the claimed arrangement, and there is no evidence of record that establishes that rearranging the second member and second track would result in a difference in function of the Neelly container.
Regarding claim 11, Neelly further discloses the first frame (swing side 54) further comprises a second track (annotated Fig. 22), wherein the second track (annotated Fig. 22) is disposed on the interior surface of the first frame (see Fig. 22) and is mated with a second member (annotated Fig. 22) disposed on the exterior surface of the second frame (main can 52, see Fig. 22).
Regarding claim 12, Neelly further discloses a second track and a second member (see annotated Fig. 22).
However, Neelly does not expressly disclose the second frame further comprises the second track, wherein the second track is disposed on the exterior surface of the second frame and is mated with the second member disposed on the interior surface of the first frame.
Neelly teaches an alternate embodiment having a second track on the second frame and a second member track on an interior surface of the first frame (see Fig. 23). Neelly teaches that either frame could have the track and the opposite frame would have the member (see col. 5, ll. 31-47; see also Figs. 11-17 and 21-23).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the container of Neelly to swap the second member and the second track such that the second member is on an interior surface of the first frame and the second track is on an exterior surface of the second frame because it has been held that rearranging parts of an invention involves only routine skill in the art (MPEP 2144.04(VI)(C), citing In re Japikse, 86 USPQ 70). Here, Applicant has not disclosed any criticality for the claimed arrangement, and there is no evidence of record that establishes that rearranging the second member and second track would result in a difference in function of the Neelly container.
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7 of U.S. Patent No. 12,179,997. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-5 and 7 of the ‘997 patent “anticipate” application claims 1-7, as shown below.
Present Claims
Claims of the ‘997 Patent
Claim 1: A receptacle comprising:
a first frame;
a second frame adjoining the first frame to define a cavity with a first volume;
a hinge, defining a first axis and operatively connecting the first and second frame, wherein the first frame may pivot about the first axis in order to redefine the cavity with a second volume; and
a first member mated with a first track, wherein the first member and the first track are configured to permit movement between the first frame and the second frame in order to redefine the cavity with the second volume, and further wherein when the first member and the first track are mated, the first member is completely concealed between the first frame and the second frame when the receptacle is in a collapsed state.
Claim 1, col. 9, l. 38;
Claim 1, col. 9, l. 39;
Claim 1, col. 9, ll. 40-41;
Claim 1, col. 9, ll. 42-45;
Claim 1, col. 10, ll. 1-12.
Claim 2: The receptacle of claim 1, wherein the receptacle further comprises a lid assembly, wherein the lid assembly abuts the cavity with the first volume and covers an aperture defined by the cavity with the first volume.
Claim 2, col. 10, ll. 13-16.
Claim 3: The receptacle of claim 2, wherein the lid assembly further comprises:
an outer lid;
an inner lid seated within the outer lid; and
a lid hinge, defining a second axis and operatively attached to the outer and inner lid, wherein each of the outer lid and the inner lid may pivot about the second axis defined by the lid hinge independently of each other.
Claim 3, col. 10, ll. 17-18;
Claim 3, col. 10, ll. 19;
Claim 3, col. 10, ll. 20;
Claim 3, col. 10, ll. 21-26.
Claim 4: The receptacle of claim 3, wherein the receptacle further comprises a foot pedal assembly.
Claim 4, col. 10, ll. 27-28.
Claim 5: The receptacle of claim 4, wherein the foot pedal assembly further comprises:
a foot pedal member; and
a pivot rod defining a third axis disposed within the foot pedal assembly between the foot pedal member and a push rod operatively abutted to the foot pedal member and the lid assembly.
Claim 5, col. 10, ll. 29-30;
Claim 5, col. 10, l. 31;
Claim 5, col. 10, ll. 32-35.
Claim 6: The receptacle of claim 1, wherein the receptacle further comprises a spring connecting the first frame to the second frame and configured to resist the first frame’s pivot about the first axis.
Claim 7, col. 10, ll. 40-43.
Claim 7: The receptacle of claim 1, wherein the first member is disposed on an exterior surface of the second frame and is mated with the first track that is disposed on an interior surface of the first frame.
Claim 1, col. 10, ll. 1-9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
CN-114644184 to Zhang et al. discloses a container having a first frame and a second frame that pivot relative to one another to define two volumes, and first and second tracks engaged with first and second members (see Figs. 1-7).
U.S. Pub. 2008/0283536 to Schafer discloses a container having a first frame and a second frame that pivot relative to one another to define two volumes, a first track, and a first member (see Figs. 1-11).
WO 2007035138 to Unger discloses a container having a first frame and a second frame that pivot relative to one another to define two volumes, first and second tracks engaged with first and second members such that the first member is completely concealed between the first and second members, and a lid (see Figs. 1-6).
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/LAURA E. PARKER/Examiner, Art Unit 3733