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: In claim 20, the terminology “at least one through-hole” is not found in the specification. In claim 25, the terminology “lid portion” is not found in the 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 17, 18 and 25 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 or the parent applications 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 17, that “the scent discharge port (SIC) is fixed relative to the interior of the container body” is not found in original parent application 16/874,394 and appears to be improperly added to the subsequent intervening application 17/552,992. Accordingly, the limitation is held at this time to be new matter relative to the indicated original disclosure.
As to claim 25, to characterize “the upper portion comprises a lid portion” is not found in original parent application 16/874,394. Accordingly, the limitation is held at this time to be new matter relative to the indicated original disclosure. There appears to be more than mere nomenclature to characterize an “upper” portion as a “lid” portion.
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 17, that “the scent discharge port (SIC) is fixed relative to the interior of the container body” is not found in original parent application 16/874,394 and appears to be improperly added to the subsequent intervening application 17/552,992. Accordingly, the limitation is held at this time to be new matter relative to the indicated original disclosure.
As to claim 25, to characterize “the upper portion comprises a lid portion” is not found in original parent application 16/874,394. Accordingly, the limitation is held at this time to be new matter relative to the indicated original disclosure. There appears to be more than mere nomenclature to characterize an “upper” portion as a “lid” portion.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 17-18 and 21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 17, line 1 and claim 21, line 1, “the scent discharge port” lacks singular antecedent basis or is inconsistent with claim 16, line 6.
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 16, 19-24 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 1, 1, 1, 9, and 1, respectively, of U.S. Patent No. 11,905,069. 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 claims, or is encompassed by disclosure by those claims. As to claim 16, claim 1 of the previous patent encompasses the display container including the container body, the at least one scent discharge port and the air pump as now claimed.
As to claim 19, claim 1 of the previous patent claims the air pump, which is originally disclosed as manually depressible to discharge scented air.
As to claim 20, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as “at least one through-hole formed integrally into a portion of the container body”.
As to claim 21, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as it “extends between a first end open to an interior surface of the container body and a second opposite the first end and open to an exterior surface of the container body”.
As to claim 22, claim 1 of the previous patent claims the container body, which is originally disclosed, although not described as a lower portion for supporting the container body upright and an upper portion detachably secured to the lower portion, the upper and lower portions cooperating to generally enclose the interior”.
As to claim 23, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as “formed in the upper portion of the container body”.
As to claim 24, claim 9 of the previous patent claims the air pump as “coupled to the upper portion”.
As to claim 26, claim 1 of the previous patent claims the upper portion of the container body, which is originally disclosed, although not described as “detachably secured to the lower portion through one or more screws”.
Claims 16, 19-24 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 1, 1, 1, 6, 1, and 1, respectively, of U.S. Patent No. 11,655,074. 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 claims, or is encompassed by disclosure by those claims. As to claim 16, claim 1 of the previous patent encompasses the display container including the container body, the at least one scent discharge port and the air pump as now claimed.
As to claim 19, claim 10 of the previous patent claims the air pump as manually depressible to discharge scented air.
As to claim 20, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as “at least one through-hole formed integrally into a portion of the container body”.
As to claim 21, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as it “extends between a first end open to an interior surface of the container body and a second opposite the first end and open to an exterior surface of the container body”.
As to claim 22, claim 1 of the previous patent claims the container body, which is originally disclosed, although not described as a lower portion for supporting the container body upright and an upper portion detachably secured to the lower portion, the upper and lower portions cooperating to generally enclose the interior”.
As to claim 23, claim 6 of the previous patent claims the at least one scent discharge port as “formed in the upper portion of the container body”.
As to claim 24, claim 1 of the previous patent claims the air pump, which is originally disclosed as “coupled to the upper portion”.
As to claim 26, claim 1 of the previous patent claims the upper portion of the container body, which is originally disclosed, although not described as “detachably secured to the lower portion through one or more screws”.
Claims 16, 19-24 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 1, 1, 6, 1, and 1, respectively, of U.S. Patent No. 11,235,909. 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 claims, or is encompassed by disclosure by those claims. As to claim 16, claim 1 of the previous patent encompasses the display container including the container body, the at least one scent discharge port and the air pump as now claimed.
As to claim 19, claim 10 of the previous patent claims the air pump as manually depressible to discharge scented air.
As to claim 20, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as “at least one through-hole formed integrally into a portion of the container body”.
As to claim 21, claim 1 of the previous patent claims the at least one scent discharge port, which is originally disclosed, although not described as it “extends between a first end open to an interior surface of the container body and a second opposite the first end and open to an exterior surface of the container body”.
As to claim 22, claim 1 of the previous patent claims the container body, which is originally disclosed, although not described as a lower portion for supporting the container body upright and an upper portion detachably secured to the lower portion, the upper and lower portions cooperating to generally enclose the interior”.
As to claim 23, claim 6 of the previous patent claims the at least one scent discharge port as “formed in the upper portion of the container body”.
As to claim 24, claim 1 of the previous patent claims the air pump, which is originally disclosed as “coupled to the upper portion”.
As to claim 26, claim 1 of the previous patent claims the upper portion of the container body, which is originally disclosed, although not described as “detachably secured to the lower portion through one or more screws”.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Orlando Aviles, can be reached on (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG