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 .
Applicant’s election without traverse of the species of Group 2 represented by Figs. 6-15 in the reply filed on 5/6/26 is acknowledged. Applicant’s indication in the reply that all of the pending claims, claims 1-9 are readable on the elected species is also acknowledged. Claims 1-9 are examined on their merits below.
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 1-9 are rejected on the ground of non-statutory double patenting as being unpatentable over the claims of record of U.S. Patent Nos. 12,258,188, 11,628,968 and 11,267,636. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious in view of the claims in each patent to provide the packaging system claimed in the subject application, for the purpose of providing a more economical packaging system.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4-5 and 9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claims 4-5 it is not apparent what the reference to “the diameter” and “a diameter” is intended to encompass. The second “third” in claim 9 line 2 appears to be an error.
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) 1-3 and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yen (2021/0094726) alone, or in view of Sandow (7,621,402). Yen discloses most of the features of the claims including a packaging system comprising a folded body formed of paperboard (the packing box of Figs 1-4). The claimed top surface can be base surface 1 and the claimed aperture can be one of the apertures in the base surface of Yen that are intended to hold items. As can be appreciated the Yen packaging system meets the length and width requirements recited in the last paragraph of claim 1.
The structural tube ends of claim 2 are most clearly seen at the ends of the packaging system comprising the structures 4, 2-1, 6, 2-2, 14 and 2-3. Thus the first side, second side and third side of claim 3 are 2-1, 6 (note the material of the folded body between the two fold lines or folding marks 6) and 2-2 respectively on one end of the folded body, and the fourth side, fifth side and sixth side are the same features on the opposite end of the folded body.
Regarding claim 8 the claimed tube crimp support can include the wall surfaces of the accommodating spaces or receiving compartments. These wall surfaces in concert with adjacent parts of the top surface can support some tube as functionally required. For example, the claimed first layer having the top surface can be a portion of the top surface adjacent the accommodating spaces or receiving compartments and/or wall surface 10, and the claimed second layer can be one or more of wall surfaces 10, 12 and 5. Note Figs 2-3.
Therefore, what Yen may not disclose relative to the independent claims is the container (see claim 1 lines 2-3 for example) and tube-type container (see claim 8). On the other hand, Yen is directed to packaging for holding cosmetics and other content and these are conventionally contained in containers having the features of the claimed containers in the features of the claimed containers. Alternatively or in addition, Sandow discloses that it is conventional to hold containers of the type claimed in folded bodies as also claimed. It would have been obvious in view of Yen alone, and/or together with the disclosure in Sandow, to provide for containers having the claimed features to be held in the packaging system of Yen, for the purpose of adequately protecting the containers during their storage or transportation.
Features of the dependent claims not disclosed in either reference are found to be conventional in the relevant art or well within the level of skill of one of ordinary skill in the art to provide. Therefore, it would have been obvious in view of Yen and/or Sandow to provide the apparatus in Yen with the missing features for the purpose of providing a more economical packaging.
Claim 4 avoids the prior art of record. In finding claim 4 allowable, “the diameter” in the claim is read as “a diameter of the container”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (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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/JACOB K ACKUN/Primary Examiner, Art Unit 3736
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