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 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 21-22, 32-35, 37 and 39-40 are finally rejected under 35 U.S.C. 103 as being unpatentable over Bean et al. (9,334,086) in view of Fenner Jr. (10,179,694). Bean et al. disclose a display container comprising an enclosure (100 or 300) having a generally enclosed interior for storing a botanical specimen (inside the enclosure), and a transparent viewing section (lens of the lid 116 or 316) extending overtop of the interior when the enclosure is upright for viewing of the botanical specimen from above when the botanical specimen is received in the interior to provide a generally unobstructed view of the botanical specimen when received therein. Bean et al. does not disclose an integrated lighting system. However, Fenner Jr. discloses a similar display container (10) for botanical specimens including an integrated lighting system including at least one LED (62) in the interior and upper portion of a housing (30) for illumination of the botanical specimen from above, and a control system (60-70) coupled to the at least one LED for controlling operation of the at least one LED. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the display container of Bean et al. with an integrated lighting system including at least one LED in the manner of Fenner Jr. as claimed, as such a modification would predictably provide the display container of Bean et al. with a lighting source to improve viewing of the contained botanical specimen. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
As to claim 22, Bean et al. disclose the transparent viewing section comprises a lens.
As to claim 32, the at least one light source of Bean et al. is within the interior of the disclosure.
As to claim 33, the at least one light source of Bean et al. is mounted adjacent an upper end of the interior.
As to claim 34, Bean et al. disclose the enclosure has a top wall bounding the interior from above and a sidewall bounding the interior horizontally, the top wall comprising the transparent viewing section and at least a portion of the sidewall being generally transparent for viewing the botanical specimen from a side of the enclosure, and wherein the one or more light sources are below an upper periphery of the top wall and inboard of the sidewall.
As to claim 35, Bean et al. disclose the enclosure comprises a lower portion and an upper portion detachably mounted to the lower portion and comprising the transparent viewing portion.
As to claim 37, Bean et al. disclose the lower portion comprises a container body and the upper portion comprises a lid.
As to claims 39 and 40, Bean et al. disclose a similar display container provided with scent ports (122) for sampling an aroma of the content.
Claim 26 is finally rejected under 35 U.S.C. 103 as being unpatentable over the Stash Jar or the combination of Bean et al. and Fenner Jr. as employed in claim 21 above and further in view of Tian et al. (2018/0242529). The previous art does not disclose an electronics module integrated with the enclosure and coupled to the at least one light source. However, Tian et al. disclose a similar display container with an LED array (2) connected with an electronics module (4) as a control system. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the display container of the Stash Jar the combination of Bean et al. and Fenner Jr. with its LED array connected with an electronics module in the manner of Tian et al.as claimed, as such a modification would predictably provide a manually controllable light source.
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 21, 23, 24, 25, 32, 33 and 35-38 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No.12,227,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 1 of the previous patent, and the newly recited intended use relative to the botanical specimen does not distinguish any new or unexpected distinguishing patentable result thereover.
Claims 22, 26, 34, 39 and 40 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13, 5, 4, 2, and 3, respectively, of U.S. Patent No.12,227,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 27 and 28 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 10 taken together of U.S. Patent No.12,227,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 29 and 30 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 11 taken together of U.S. Patent No.12,227,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claim 31 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 9 and 10 taken together of U.S. Patent No.12,227,334. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 21-22 and 32-33 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over one of claims 6 and 14 of U.S. Patent No.11,820,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 6 or claim 14 of the previous patent, and the newly recited intended use relative to the botanical specimen does not distinguish any new or unexpected distinguishing patentable result thereover.
Claims 23-25 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over one of claims 7 and 14 of U.S. Patent No.11,820,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 7 or claim 14 of the previous patent.
Claim 26 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No.11,820,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 27-29 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No.11,820,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 17 of the previous patent.
Claims 29 and 30 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 7 taken together of U.S. Patent No.11,820,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims
may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 32-38 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No.11,820,554. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 6 of the previous patent.
Claims 21, 26 and 32-40 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No.11,691,787. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 3 of the previous patent, and the newly recited intended use relative to the botanical specimen does not distinguish any new or unexpected distinguishing patentable result thereover.
Claims 22, 23, 27 and 31 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over the claim combinations of claims 3 and 11, claims 3 and 4, claims 3 and 8, and claims 3, 7 and 8, respectively, of U.S. Patent No.11,691,787. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 24 and 25 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 6 taken together of U.S. Patent No. 11,691,787. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 28 and 30 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 9 taken together of U.S. Patent No. 11,691,787. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of the indicated claims of the previous patent.
Claims 21-27, 30, 32-35, 37 and 39-40 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,214,405. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 1 of the previous patent, and the newly recited intended use relative to the botanical specimen does not distinguish any new or unexpected distinguishing patentable result thereover.
Claims 28 and 29 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,214,405. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 6 of the previous patent.
Claims 36 and 38 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,214,405. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 7 of the previous patent.
Claims 21-27, 32-35, 37 and 39-40 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,836,537 . Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 1 of the previous patent, and the newly recited intended use relative to the botanical specimen does not distinguish any new or unexpected distinguishing patentable result thereover.
Claims 28-30 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,836,537 . Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 2 of the previous patent.
Claims 36 and 38 are each finally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 10,836,537 . Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of the pending claims may be wholly derived from the subject matter of claim 16 of the previous patent.
Applicant’s arguments, filed June 18, 2026, with respect to the Stash Jar have been fully considered and are persuasive. The grounds of rejection employing the Stash Jar have been withdrawn.
Applicant's arguments filed June 18, 2026 have been fully considered but they are not persuasive. The added recitations to claim 21 do not patently distinguish the invention, as a consideration of the combined teachings of Bean et al. and Fenner Jr. taken as a whole are seen to suggest the claimed display container. In response to applicant's argument that Fenner Jr. teaches away from the claimed invention, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
The double patenting rejections may be overcome by an appropriate terminal disclaimer.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG
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