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 .
The present application is a continuation of Application No. 18/429,771, which has been abandoned, which is a continuation of Application No. 17/941,673, which is now U.S. Patent No. 11,919,609, which is a continuation of Application No. 16/409,414, which is now U.S. Patent No. 11,465,714.
Drawings
The drawings were received on February 5, 2025. These drawings are acceptable.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,465,714. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 are generic to all that is recited in claims 1-25 of US 11,465,714. In other words, claims 1-25 of US 11,465,714 fully encompass the subject matter of claims 1-20 and therefore anticipate claims 1-20. Since claims 1-20 are anticipated by claims 1-25 of US 11,465,714, claims 1-20 are not patentably distinct from claims 1-25 of US 11,465,714, regardless of any additional subject matter present in claims 1-25 of US 11,465,714.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,919,609. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 are generic to all that is recited in claims 1-20 of US 11,919,609. In other words, claims 1-20 of US 11,919,609 fully encompass the subject matter of claims 1-20 and therefore anticipate claims 1-20. Since claims 1-20 are anticipated by claims 1-20 of 11,919,609, claims 1-20 are not patentably distinct from claims 1-20 of US 11,919,609, regardless of any additional subject matter present in claims 1-20 of US 11,919,609.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4, 8-9 and 15-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Russikoff (US 7,950,342).
Russikoff discloses the same bimini top device as claimed, as shown in Figures 1-6, which is comprised of a bimini assembly or device, defined as Part #10, that is movable or transformable between an open configuration, as shown in Figure 1, and a closed configuration, as shown in Figure 6, said bimini assembly including a frame, defined as Part #11, a cover, defined as Part #12, that is affixed to said frame, and a gathering system that includes a gathering mechanism in the form of a take-up roller, defined as Part #35, a torsion spring, defined as Part #36, and a guide tension strap, defined as Part #34, that is associated with said cover, as shown in Figure 2, where said gathering mechanism is movable in order to gather said cover into a boot, as shown in Figure 6, as said bimini assembly moves or transforms between said open configuration and said closed configuration. Said cover has a first end and a second end, as shown in Figure 2, and said guide tension strap extends between said first end and said second end. Movement of said gathering mechanism applies a force on said guide tension strap in order to gather said cover from said open configuration, as shown in Figure 2, to said closed configuration, as shown in Figure 6. Said frame of said bimini assembly is mounted to a mounting plate or support structure, defined as Part #13, of a watercraft or boat, defined as Part B, as shown in Figure 1.
Russikoff also discloses the same method of stowing a bimini top device as claimed, as shown in Figures 1-6, said method including the steps of moving or transforming a bimini assembly, defined as Part #10, from an open configuration, as shown in Figure 1, to a closed configuration, as shown in Figure 6, and gathering a cover, defined as Part #12, with a gathering mechanism, defined as Parts #35 and 36, as said bimini assembly moves or transforms from said open configuration to said closed configuration, as shown in Figures 1-6. Said gathering mechanism applies a force on a guide tension strap, defined as Part #34, which is connected to said gathering mechanism, as shown in Figure 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARS A OLSON whose telephone number is (571) 272-6685. The examiner can normally be reached Monday to Friday 8:00am - 4:00pm.
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, MARC JIMENEZ can be reached at 571-272-4530. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
October 9, 2026
/LARS A OLSON/Primary Examiner, Art Unit 3615B
Prosecution Insights