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 non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-2, 4-13 and 15-18 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-30 of co-pending Application No. 18/697,177 (reference application). 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 of the reference application to practice the methods claimed in the subject application for the purpose of providing additional or superior protection to an agricultural product or agricultural product bale. The nontacky portion in the claimed method corresponds to the reduced risk material portion of the reference application claims based at least on the disclosure in specification [0003] of the subject application as compared with relevant disclosure in the reference application regarding the meaning of the reduced risk material portion claimed in the reference application.
This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1-2, 4-13 and 15-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porter et al. (10,264,732) filed by the applicant along with applicant’s latest reply. Porter discloses most of the features of the claims including wrapping a wrapping material around an agricultural product to form a bale. See, for example, Fig 1D and the disclosure in the reference specification relative to Figs. 1. Porter also discloses wrapping a wrapping unit (first wrapping segment 1) of the wrapping material around a circumference of the bale, the wrapping material having a nontacky portion extending lengthwise from a leading end (end 17 in Fig 1D) of the wrapping unit and a tacky portion (the portion including adhesive 11) extending lengthwise from the nontacky portion to the tail end (at the perforation 15 as shown in Fig 1A and Fig 1D) of the wrapping unit. Porter even discloses the winding steps at the end of claim 1, and winding the nontacky portions of the wrapping unit around a length of the bale that is greater than the circumference of the bale, as required in some dependent claims.
However, what Porter may not disclose is aligning a width of the wrapping material with a width of the bale as required in claim 1, and some details of the dependent claims such as winding nontacky and tacky portions of the wrapping material over different lengths of the bale circumference. On the other hand the missing expedients are well within the skill level of one having ordinary skill in the relevant art to provide, as shown by the prior art of record including Porter itself. Therefore, it would have been obvious in view of the Porter disclosure to provide for the wrapping in Porter to have the missing features, for the purpose of more securely wrapping certain bales (depending on exactly what was being wrapped), providing appropriate protection for certain bales (depending on exactly what was being wrapped) and/or making the wrapping easier to do.
Regarding the unwrapping in claim 9 and its dependent claims, Porter may not specifically disclose features such as cutting the wrapping material along an entire width of the wrapping material such that the wrapping material is separated from the agricultural product in a single piece, as required in independent claim 9. However, these features are well within the level of skill of one of ordinary skill in the relevant art to provide, as shown, for example, by the prior art of record. Therefore, it would have been obvious to provide for unwrapping the wrapping material from the bale in Porter in the manner claimed, in order to expeditiously remove the wrapping material from the bale.
In view of the commentary above, it is apparent why the latest additions to the independent claims are not found by the examiner to avoid the prior art of record. More specifically, and for example only, one having ordinary skill in the relevant art has the skill to provide the tacky portions of the Porter wrapping material in different lengths relative to the wrapping material. For example, and not by way of limitation, Porter himself discloses this at least at column 7 lines 37-43. Thus, what Porter is missing is the specific length of the tacky portion as it relates to the bale, now added to each independent claim, ie., “for a length greater than the circumference of the bale”. However, in view of the commentary above, it would have been obvious to provide this feature in the practice of the Porter invention, for the purpose of more securely attaching the tacky portion to the non-tacky portion, thereby preventing unintended unwrapping of the bale (depending on the material baled and the specific material of the non-tacky portion of the Porter wrapping material, one of ordinary skill in the art would want to make sure the bale was securely wrapped, leading this person to use a length of tacky material as claimed).
Additionally or alternatively, and in another example only, it would also have been obvious to provide the feature in the practice of the Porter invention depending on the size of the bale the Porter wrapping material was used with (for example, when the Porter wrapping material is used to wrap a much smaller bale than shown in Fig 6, the length of the wrapping material vis-à-vis the bale could be such that without modifying the wrapping material at all, the length of the tacky portion would be longer than the circumference of the bale, and therefore, winding the tacky portion of the wrapping unit around the bale would result in winding it for a length greater than the circumference of the bale as claimed.
Claims 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Applicant's arguments filed 8/27/26 have been fully considered but they are not persuasive as to any claims not allowed. See the commentary above. The arguments relating to the Advisory Action appear to be moot in view of the current RCE filing.
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.
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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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