DETAILED ACTION
Claim Objections
Claims 1 and 4 are objected to because of the following informalities:
In claim 1, line 21 the word “in” should be changed to “on”.
In claim 4, the third occurrence of the word “the” in line 3 should be changed to “material”.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-6 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 14-19 of prior U.S. Patent No. 12,220,802. This is a statutory double patenting rejection.
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 7 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,220,802 in view of Harrington et al. (8,839,696). While claim 14 of the patent discloses all of the structure set forth in claim 1 of the current application, Harrington teaches a similar multi-purpose paint can tool, and teaches that it may be formed by a range of processes, including milling, and a range of materials, including steel (Col. 5, lines 19-25). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform the method of making the tool of the patent claim 14 using the process of milling and to form the tool from steel, being well known and common manufacturing process and material in the art.
Examiner Proposed Amendments
As discussed in the Interview held on 28 September 2026, the examiner proposed the following amendments to broaden the scope of independent claim 1 of the current application, which would effectively overcome the Statutory Double Patenting rejection above, which were agreed to by the attorney:
In claim 1, line 25, “and the pair of perforating cone spikesand forming the can opener either as a separate piece that is attached to the first elongate structure or forming the can opener as part of the single piece of material”.
The attorney agreed to the proposed claim amendments, which would still require a Terminal Disclaimed to overcome any pending obvious type double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The closest prior art of record is considered to be represented by Starr et al. (2,055,989), Van Sant (945,643), Zeese (952,170), Nachtigal (1,618,304), Hand (1,396,629), Tweeddale (1,203,344), Pojunas, Sr. (6,237,227), Marceau (4,747,173), Barth (4,580,302), Storch(2,286,124), Dye (1,923,779), Wihebrink (GB 203,072) and Anderson (1,466,108). Each of these references include at least some structure set forth in the current claims, but none of the prior art teaching or making obvious the combination of structure set forth in the independent claim as amended herein.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN R MULLER whose telephone number is (571)272-4489. The examiner can normally be reached M-F 8am-5pm.
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, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN R MULLER/Primary Examiner, Art Unit 3723 30 September 2026
