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 1-18 are finally 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) 1-18 is/are finally 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.
Applicant's arguments filed 5/4/26 have been fully considered but they are not persuasive.
Regarding the double patenting rejection, applicant argues citing MPEP 804(I)(B)(1)(b)(i), that the double patenting rejection in the subject application should be withdrawn because the subject application is the earlier filed of the two applications in question, the subject application and 18/697,177 the claims of which form the bases of the rejection. The examiner agrees with the applicant that under certain conditions the MPEP provides for the provisional double patenting rejection in the earlier of two filed applications to be withdrawn. However, what the applicant does not mention in the argument is that one of those conditions is that there be a provisional double patenting rejection in both applications, such that upon the withdrawal of the double patenting rejection in the earlier filed application, the provisional double patenting rejection in the later filed application is converted into a double patenting rejection in that application. Refer back to the same section of the MPEP cited by the applicant. Moreover, as applicant is no doubt aware, application 18/697,177 is currently under a restriction requirement to which a reply has yet to be filed (and 18/697,177 had the same status at least when the applicant filed the reply on 5/4/26 in the subject application to the provisional double patenting rejection herein). So clearly there has been no action on the merits in 18/697,177, much less a double patenting rejection made in that application. Accordingly, applicant’s arguments for withdrawal of the double patenting rejection in the subject application are unconvincing.
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 5/4/26 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 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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