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 .
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The rectangular array of container stacks including three rows and four columns as now set forth in claims 2 and 15 is not described as such in the written specification. The stack of containers including 18 containers in claim 6 is not described as such in the written specification.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 6-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. In claim 6, while the drawings show 18 containers in a stack, there is no disclosure to exceed that number as now set forth in claim 6, “wherein each container stack includes at least 18 containers” in this or the parent case.
In claim 7, it appears that reciting “each container has a height within the range of about 4 inches to about 10 inches” lacks antecedent basis to distinguish the particular range in this or the parent case. Dependent claim 8 is also then not supported.
In claim 9, that the “at least one upper container is inserted at least 80 percent into the lower container” lacks original disclosure in this or the parent case.
In claim 10, that “each shipping container does not exceed 35 lbs” lacks original disclosure in this or the parent case. See also claim 19 for the same issue
Claim 11 recites structure incompatible with the previously defined structure. In claim 1, it is defined in lines 8-9 that “wherein each container stack includes at least one upper container having a height that is inserted at least 50 percent into a lower container”, whereas claim 11 modifies claim 1 and further defines “each container is included in a package comprising the container and a lid coupled to a brim of the container, and wherein each stack of containers includes at least 2 packages stacked on one another within the shipping container” which lid inclusion would preclude the “at least 50 percent” insertion and only two packages stacked on one another. Dependent claim 12 is also indefinite.
Claim 13 recites in lines 1-3 “each of the shipping containers has a bottom area equal to an integer region of the pallet such that the shipping containers fill out the pallet”, which lacks original disclosure in this or the parent case. Claim 14 has the same issue in lines 15-16. Dependent claims 15-20 have the same indefiniteness.
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: .
In claim 6, while the drawings show 18 containers in a stack, there is no disclosure to exceed that number as now set forth in claim 6, “wherein each container stack includes at least 18 containers” in this or the parent case.
In claim 7, it appears that reciting “each container has a height within the range of about 4 inches to about 10 inches” lacks antecedent basis to distinguish the particular range in this or the parent case. Claim 8 is similarly not supported.
In claim 9, that the “at least one upper container is inserted at least 80 percent into the lower container” lacks original disclosure in this or the parent case.
In claim 10, that “each shipping container does not exceed 35 lbs” lacks original disclosure in this or the parent case. See also claim 19 for the same issue
Claim 11 recites structure incompatible with the previously defined structure. In claim 1, it is defined in lines 8-9 that “wherein each container stack includes at least one upper container having a height that is inserted at least 50 percent into a lower container”, whereas claim 11 modifies claim 1 and further defines “each container is included in a package comprising the container and a lid coupled to a brim of the container, and wherein each stack of containers includes at least 2 packages stacked on one another within the shipping container” which lid inclusion would preclude the “at least 50 percent” insertion and only two packages stacked on one another.
Claim 13 recites in lines 1-3 “each of the shipping containers has a bottom area equal to an integer region of the pallet such that the shipping containers fill out the pallet”, which lacks original disclosure in this or the parent case. Claim 14 has the same issue in lines 15-16. Dependent claims 15-20 have the same indefiniteness.
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 12,187,526. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter may be wholly derived from the previously patented claim 18. Claim 1 recites the same or less than the previously patented claim 18. Claim 2 further defines the previously claimed rectangular array, which by disclosure was covered by the rectangular array of the previously patented claim 18. Claims 3 and 4 further define the dimensions of the claimed container, which by disclosure was covered by the container of the previously patented claim 18. Claim 5 further defines the dimensions of the claimed pallet, which by disclosure was covered by the pallet of the previously patented claim 18.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG