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 disclosure is objected to because of the following informalities: The subject application is a continuation application of U.S. patent application 18/375,791, now U.S. patent 12404096. However, the subject application disclosure lacks disclosure in the parent application, that is, the subject application disclosure lacks changes that were made to the parent application drawings and specification during prosecution of the parent application. Moreover, these changes appear relevant to at least some of the issues presented in the subject application as well as to issues likely to arise in the prosecution of the subject application. Applicant is required, in reply to this Office action, to amend at least the specification and the drawings in the instant application so that they are the same as the final version of the specification and drawings of the parent application for consistency, and to provide clarity during the subject application prosecution.
Appropriate correction is required.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the lid of the annular receptacle and its uses as recited in at least claims 8-9 must be shown or the feature(s) canceled from the claim(s).
It is noted that this objection was made during the prosecution of the parent application 18/375,791 in at least the Office actions of 4/22/24 and 10/11/24, and that the features were eventually cancelled by applicant during the prosecution of that application. As indicated in the 10/11/24 Office action paragraph 7, in response to applicant’s arguments regarding this issue, the examiner acknowledges that numeral 36 in Figs 2B and 5B have lead lines pointing to something, and the specification indicates that 36 is supposed to be a lid. However, no lid can be made out in the application drawings.
No new matter should be entered.
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.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Subject matter in the claims that was not described in the specification so as to reasonably convey possession of the claimed invention by the applicant is (with emphasis on any bold text if present):
“the interfering member having a shape complementary to that of a chamfer” (note claim 1)(applicant’s specification at [0058] describes with reference to Fig 7 that an interfering member or members 70 have a shape that is complementary to that of cassette 30 having a chamfer clearance 41. See also Fig 7. Thus, the relevant specification disclosure is that the interfering member has a shape that is complementary to the shape of the cassette 30 having the chamfer clearance 41, not a shape that is complementary to the shape of a chamfer as recited in the claims.);
“abutting an annular wall at the bottom of the annular receptacle against the interfering member” (note claim 10) The subject application specification does not mention any “annular wall”, as claimed, at the bottom of the annular receptacle, and therefore, also lacks disclosure that such an annular wall is abutted against an interfering member. Nor has the applicant pointed out the feature in this continuation application.
However, taking into account the amendments to the disclosure of the subject application noted in paragraph 2 above, the parent U.S. 12404096 paragraphs [0037], [0058] and Fig. 7 disclose that original bottom annular receptacle 38 “has a lower surface 31 and an edge 35 delimiting the lower surface 31” and “edge 35 of the bottom annular receptacle 38 of the cassette 30 engages the oblique cassette-orienting wall 71”. Still further, the salient feature in the subject application and others related thereto, is the presence of a “chamfer clearance” 41 (changed to “chamfer” in at least another of applicant’s applications now patented) that is present so that the cassette can only properly seat in the cassette holder right side up. This chamfer clearance 41 or chamfer has a shape that complements that of a feature in the cassette holder bottom, such as the oblique cassette-orienting wall 71. That way the cassette can be properly seated in the cassette holder. See [0058] in 12404096. Therefore, and as one example only of the function of chamfer clearance 41, chamfer clearance 41 can also be said to abut interfering member 70 as shown in Fig 7.
Therefore, the specification lacks clarity as to what the annular wall in the claim limitation “abutting an annular wall at the bottom of the annular receptacle against the interfering member” is. For example, is it a reference to lower surface 31, chamfer clearance 41 or a portion of chamfer clearance 41?
Additionally, the use of the term “annular wall” to describe any of the noted features appears to be new matter since none of the features are ring shaped and in the case of at least the chamfer clearance 41, it does not appear to exclusively be in the bottom of the annular receptacle.
The features of claims 8-9.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite because the claim limitation “the interfering member having a shape complementary to that of a chamfer” is not well described as pointed out above, and by itself, without adequate written description, is too vague to meet the requirements of the Statute. A chamfer is a flat surface made by cutting off an edge or corner. In the invention of the applicant, it is the cassette that has the chamfer or the chamfer clearance as expressly disclosed in applicant’s specification. Additionally, in the invention of the applicant, the interfering member has the shape of the cassette with the chamfer clearance. Therefore, the shape of an interfering member that as claimed would be complementary to the shape of a chamfer (apparently complementary to the shape of some flat surface) cannot be determined with the requisite certainty.
Claim 7 is indefinite because the “pail” referred to therein lacks antecedent basis.
Claims 8 and 9 are also indefinite because they cannot be properly interpreted, given the lack of disclosure of the lid of the receptacle 38 and its function.
Claim 10 is indefinite because the feature referred to as an annular wall cannot be properly determined because of the lack of adequate written description of the term “annular wall” as described above.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12404096. 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 patent claims to practice the method claimed in the instant application for the purpose of more efficiently using the cassette and waste disposal system.
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) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mowers et al. (2008/0272140). Claims 1-11 recite obvious steps to use the Mowers Cassette. See, for example, the prior art disclosed in Mowers at [0002] through [0004]. Then see, in another example, the embodiments of cassette in Figs 1-2, 3-4, 7-8 and 11-12. Then see, how the cassette is installed in the Mowers waste disposal sysem, a portion of which is shown in Fig. 13. Finally, see the prior art of record for additional background.
Looking at Figs 1-2 and 13 of Mowers, it is apparent that the cassette is an annular receptacle that defines a central opening (aperture 26) and that the annular receptacle defines a volume (interior area 32) receiving an elongated tube of flexible material (flexible tubing 34) radially outward of the central opening. Moreover, it is apparent that the flexible material is intended to be pulled out of the volume of the annular receptacle (through gap 40) by a free end of the tubing and passed through the central opening of the annular receptacle. See also the prior art of record illustrating how cassette and waste disposal systems of the kind in Mowers are used.
It is also apparent from Fig 13 that the cassette is intended to be seated against an interfering member (an alignment feature 604) of a cassette holder. Regarding the final claim limitation of claim 1 (the interfering member having a shape complementary to that of a chamfer) it’s indefiniteness as found above is noted once again. However, assuming that what the claim limitation encompasses is a shape of the interfering member that is flat, refer to the other noted embodiments of cassette (other than Figs 1 and 2). It is apparent that a step or raised portion 142 (Fig 4) is intended to seat against an interfering member having a complementary shape that is a flat shape (since raised portion 142 has a flat shape on a bottom thereof similar to the top of step 144). Likewise, the interfering member of a waste disposal system against which a key portion 544 of Figs 11-12 would be seated would also be flat to complement the shape of key portion 544. And so on.
Regarding the knotting of the material as claimed in claim 4 this would also have been an obvious step to use the apparatus of Mowers as is known in the art. Note the prior art cited herein. Same for removing a lid of the pail as required in claims 7-8.
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