DETAILED ACTION
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 .
Information Disclosure Statement
It is noted that one of the references (US 20150032106 A1) was struck through as the last name of the patentee did not match that publication number. The correct publication number (US 20150321061 A1) has been added to the accompanying Notice of References Cited (PTO-892) so the correct prior art reference is now on file. Therefore, no action is required by Applicant.
Drawings
The drawings are objected to because reference character 300a appears to be directed at two different things. 300a appears to be directed to the lateral inflation aperture, but then also the entire setup involving the lateral inflation aperture, the inflation aperture 300b and hose 308 (as indicated by the circle surrounding those elements).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,195,139 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite a portable and inflatable shade assembly comprising all the same features as each other. Regarding claim 3, it would have been obvious to directly the couple the plurality of covering panels to a outer surface of the flexible tubular frame, as it is common to directly couple a cover to a frame in the art.
Allowable Subject Matter
Claims 1-17 would be allowable upon filing of a proper terminal disclaimer to overcome the double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter:
Begando et al. (US-2015/0321061 A1) discloses portable and inflatable marine vessel canopy comprising: a flexible tubular frame having a plurality of frame elements (7, 9, 41, 51) coupled together and each defining an enclosed internal frame channel and having two lateral frame elements (45, 47), the flexible tubular frame having an inflation valve coupled thereto (inherently must have an inflation valve in order to be inflated) and operably configured to provide fluid communication to the enclosed internal frame channel of the plurality of frame elements and to generate an inflated, hermetically sealed, and enclosed frame configuration (paragraph 33) with the plurality of frame elements defining a frame opening (areas between 7,9 and members 41, 43, 45, 47, 49 and 51), the two lateral frame elements spanning to and from two opposing sides of the inflated and enclosed frame configuration and separating the frame opening into side frame openings (between 45 and 43 and 43 and members 7 and 9; and also between 47, 49 and 50 and members 7 and 9) and a central frame opening (between members 45 and 47 and members 7 and 9). Begando et al. lacks a plurality of covering panels each of a polymeric and flexible material and each coupled to the flexible tubular frame, covering the frame opening, and disposed in overlapping configuration. It would not have been obvious to one of ordinary skill in the art to add such covering panels as providing covering panels that allow wind to pass through would not be necessary for the intended use of the canopy.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE JACKSON whose telephone number is (571)272-2268. The examiner can normally be reached M-F: 11AM-7PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at (571)272-6670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DNJ/Examiner, Art Unit 3636
/DAVID R DUNN/Supervisory Patent Examiner, Art Unit 3636
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