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.
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Claim 34 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12193607. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application (18983320) claim is broader in at least one aspect and do not recite additional features claimed in U.S. Patent No. 12193607claim.
For independent claim 34:
Regarding the broadening aspect of the present application claims, the following comparison between the present application claims and the co-pending application claims highlights (see underlined features in the co-pending application claims) what elements have been excluded in the presentation of the present application claims.
Present application (18983320) claim 34
U.S. Patent No. 12193607, claim 10 (claim 10 depends from claim 9, and claim 9depends from claim 10)
A method for storing and grinding organic material using a container, comprising:
(a) providing a container comprising (i) first means for storing an organic material in a first compartment in an airtight manner;(ii) second means for storing ground organic material in a separate, second compartment in an airtight manner; and (iii) means for grinding the organic material taken from the first compartment for storing in the second compartment;(b) storing organic material for grinding in the first means;(c) removing the organic material from the first means;(d) grinding the organic material using the means for grinding; and(e) storing the ground organic material in the second means.
A method for storing and grinding organic material, comprising:
(a) providing a container, comprising
(i) a body comprising a primary storage area compartment,
(ii) a cover removably attached to the body for sealing of the primary storage area compartment, and
(iii) a grinder completely enclosed within the container when the cover is removably attached to the body, wherein the grinder comprises both a lower grinding component comprising a grinding area compartment and an upper grinding component comprising a secondary storage area compartment that is isolated from the grinding area compartment, the lower grinding component and the upper grinding component being separable components and the upper grinding component having a lid that closes off the secondary storage area compartment;
(b) storing organic material for grinding in the primary storage area compartment;
(c) detaching the cover from the body and removing the organic material from the primary storage area compartment;
(d) placing the removed organic material in the grinding area compartment and grinding the organic material using the grinder;
(e) moving the ground organic material from the grinding area compartment to the secondary storage area compartment; and
(f) sealing the ground organic material in the secondary storage area compartment by closing the lid on the secondary storage area compartment and attaching the cover to the body of the container.
9. The method of claim 1, wherein the cover forms an airtight engagement with the body.
10. The method of claim 9, wherein the lid forms an airtight engagement with the upper grinding component in closing off the secondary storage area compartment.
Claim 37 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12193607. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application (18983320) claim is narrower in at least one aspect and recites additional specific features not claimed in U.S. Patent No. 12193607 claim.
For independent claim 37:
Regarding the narrowing aspect of the present application claims, the following comparison between the present application claim and the U.S. Patent claim highlights (see underlined features in the present application claims) what elements have been excluded in the presentation of the U.S. Patent.
Present application (18983320) claim 37
U.S. Patent No. 12193607, claim 1
A method for storing and grinding organic material, comprising:
(a) providing a container, comprising (i) a body comprising a primary storage area compartment,(ii) a cover removably attached to the body for sealing of the primary storage area compartment, and (iii) a grinder completely enclosed within the container when the cover is removably attached to the body, wherein the grinder comprises both a lower grinding component comprising a grinding area compartment and an upper grinding component comprising a secondary storage area compartment that is isolated from the grinding area compartment, the lower grinding component and the upper grinding component being separable components and the upper grinding component having a lid that closes off the secondary storage area compartment;
(b) storing organic material for grinding in the primary storage area compartment;
(c) detaching the cover from the body and removing the organic material from the primary storage area compartment;(d) placing the removed organic material in the grinding area compartment and grinding the organic material using the grinder;
(e) moving the ground organic material from the grinding area compartment to the secondary storage area compartment; and (f) sealing the ground organic material in the secondary storage area compartment by closing the lid on the secondary storage area compartment and attaching the cover to the body of the container;
(g) wherein the upper grinding component partially nests within the lower grinding component;(h) wherein the lower grinding component comprises a recess comprising the grinding area compartment; (i) wherein the lower grinding component is secured to the body of the container by a threaded connection; and (j) wherein the cover and body of the container are configured to provide for primary storage without the presence of the grinder, and the grinder is configured to provide grinding and secondary storage without the presence of the cover and the body.
A method for storing and grinding organic material, comprising:
(a) providing a container, comprising
(i) a body comprising a primary storage area compartment,
(ii) a cover removably attached to the body for sealing of the primary storage area compartment, and
(iii) a grinder completely enclosed within the container when the cover is removably attached to the body, wherein the grinder comprises both a lower grinding component comprising a grinding area compartment and an upper grinding component comprising a secondary storage area compartment that is isolated from the grinding area compartment, the lower grinding component and the upper grinding component being separable components and the upper grinding component having a lid that closes off the secondary storage area compartment;
(b) storing organic material for grinding in the primary storage area compartment;
(c) detaching the cover from the body and removing the organic material from the primary storage area compartment;
(d) placing the removed organic material in the grinding area compartment and grinding the organic material using the grinder;
(e) moving the ground organic material from the grinding area compartment to the secondary storage area compartment; and
(f) sealing the ground organic material in the secondary storage area compartment by closing the lid on the secondary storage area compartment and attaching the cover to the body of the container.
Claim Objections
Claim 34 objected to because of the following informalities:
Regarding claim 34, the phrase “A method for storing and grinding organic material using a container, comprising” should be changed to “A method for storing and grinding organic material, comprising:”
Appropriate correction is required.
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.
Claims 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Shalom (US20160278430A1) in view of Hainbach (US20120097774A1).
Regarding claim 34, Shalom discloses a method for storing and grinding organic material using a container (abstract and paragraphs 0127--0146), comprising:
(a) providing a container (figs.39-42: (500)) comprising
(i) first means for storing an organic material in a first compartment (fig.41: (610));
(ii) second means for storing ground organic material in a separate, second compartment (fig.41: (540)); and
(iii) means for grinding (fig.41: (527)) the organic material taken from the first compartment for storing in the second compartment;
(b) storing organic material for grinding in the first means (fig.41: (610)); (c) removing the organic material from the first means (fig.41: (610));
(d) grinding the organic material using the means for grinding (fig.41: (527)); and
(e) storing the ground organic material in the second means (fig.41: (540)).
Shalom does not disclose an airtight manner;
Hainbach teaches a method for storing and grinding organic material (abstract), comprising:
providing a container comprising for storing an organic material in an airtight manner (paragraph 0036);
Both of the prior arts of Shalom and Hainbach are related to a method for storing and grinding organic material;
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Shalom by the configuration of an airtight as taught by Hainbach in order to preventing odor from the herbs from escaping the container, while also maintaining the freshness of the herbs (Hainbach: paragraph 0036); thereby having first means for storing an organic material in a first compartment in an airtight manner;(ii) second means for storing ground organic material in a separate, second compartment in an airtight manner.
Regarding claim 35, Shalom discloses wherein the organic material comprises a tobacco (paragraph 0006).
Therefore, the modification of Shalom in view of Hainbach teaches the limitations of claim 35.
Regarding claim 36, Shalom discloses wherein the organic material comprises foliage (paragraph 0006).
Therefore, the modification of Shalom in view of Hainbach teaches the limitations of claim 36.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3.7, the closet prior art is Shalom (US20160278430A1), however in the opinion of the Examiner that the arts of record neither anticipates nor render obvious the limitations of the claim as recited.
Claim 37 would be allowable if rewritten or amended to overcome the double patenting rejection, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED S ALAWADI whose telephone number is (571)272-2224. The examiner can normally be reached 08:00 am- 05:00 pm.
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/MOHAMMED S. ALAWADI/Primary Examiner, Art Unit 3725
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