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 .
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,194,501. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite the same system with the same elements directed to a sorting operation.
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) 21-25, 34, 38 and 40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2023-47031.
JP 2023-47031 shows a system for use in a sorting operation having a server 10 that has a memory, a processor 11, a destination assignment engine D, a plurality of receptacles 32, a transport device 20 which deposits articles G into the receptacles 32 wherein the system assigns a plurality of destination ID’s to a plurality of receptacles 32 such that a count of receptacles 32 is greater than a count of the destination ID’s.
Re claim 22, the system will direct a transport device 20 to deposit a first article G into a first receptacle 32 which has been assigned a first logical destination ID among a plurality of ID’s.
Re claim 23, if the first receptacle is full the articles G will be reassigned to an available receptacle having an appropriate ID.
Re claim 24, a computer controlled vehicle 20 is shown.
Re claim 25, an automated transfer device is shown on the vehicle 20 and there is an automated conveyor system.
Re claim 34, the server keeps track of the volume of articles G which have been delivered in order to know if a receptacle is full.
Re claim 38, a destination ID is assigned to each of the receptacles.
Re claim 40, the system is aware if there is a non-full receptacle to which a vehicle can be sent.
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.
Claim(s) 33 is is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2023-47031 in view of JP 2019-531887).
JP 2023-47031 does not disclose a sensing device which senses a condition of a receptacle. However, shown by JP 2019-531887 is the use of a sensing device 2 which determines a state of fill of a receptacle 1 in order to determine if articles may be placed into the receptacle. To include such a sensing device onto JP 2023-47031 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success as JP 2023-47031 would wish to avoid over filling a receptacle or delivering articles to a location where there are no available receptacles.
Allowable Subject Matter
Claims 26-32, 35-37 and 39 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 prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES R BIDWELL whose telephone number is (571)272-6910. The examiner can normally be reached on Monday-Friday from 8 to 4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gene Crawford, can be reached at telephone number (571)272-6911. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES R BIDWELL/ Primary Examiner, Art Unit 3651 02/10/2025