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 .
Applicant's election with traverse of Species A in the reply filed on January 30, 2026 is acknowledged. The traversal is on the grounds that the subject matter of all the pending claims including respective container and method of manufacturing claims are closely related and should be examined together. This is not found persuasive because container claims are handled in B65D and the method of manufacturing claim is handled in B31B, and the elements of the container in the container claims and the elements of the apparatus employed in the method of manufacturing comprise discrete inventions comprising discrete components and as such would require individual consideration and search.
The requirement is still deemed proper and is therefore made FINAL.
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, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 1, 1, 1, 7, 7, 7, 7, 7, 7, 7, and 7, respectively, of U.S. Patent No. 10,717,578 in view of McCullough et al. (4,696,840). The previous patent claims a container (201) comprising an outer shell (212) made of paperboard material, the outer shell comprising a pair of side wall elements (218, 220) and a base element (222), the side wall elements each including an elongate, cylindrical main body portion (218 or 220 below 256) having a first, larger diameter, an elongate, cylindrical neck portion (248) having a second, smaller diameter, and a tapered or curved shoulder portion (256) extending between the neck portion and the main body portion, and an inner pouch or lining (214), the pouch being secured to a fitment (216) to form a pouch assembly, and the pouch being supported within the shell by the fitment engaged with the neck portion of the shell so that the pouch extends into the main body portion of the shell, wherein the side wall is formed from two blanks (286 and 288) each including a single main body panel (264) forming the cylindrical main body portion of the shell and a plurality of neck panels (258, 260 and 262) extending from the main body panel forming the cylindrical neck portion of the shell. Slack et al. disclose multiple discrete elements to form the side wall. However, McCullough et al. disclose a similar container (10) comprising an outer shell (12) made of paperboard material, the outer shell comprising side wall elements (22a-d) and a base element (24a-d), and an inner pouch (14), the outer shell comprising a single blank (30), the blank being formed from a flat sheet of paperboard. It would have been obvious to one of ordinary skill in the art before the effective filing date of the patented invention to provide the container of Slack et al. from side wall elements formed from a single integral blank in the manner of McCullough et al. as claimed, as such a modification would predictably provide a patently equivalent construction. It has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. See Howard v. Detroit Stove Works, 150 U.S. 164 (1893)
As to claim 2, the container (201) is disclosed to comprise a bottle.
As to claims 3 and 4, the pouch or inner lining (14) is disclosed to comprise plastics material (see column 5, lines 46-53).
As to each of claims 5-8, claim 7 of the patent defines the pouch assembly retained in engagement with the outer shell by lugs.
As to claims 9-12, the lugs are further disclosed to be disposed on opposite sides of the fitment, and claim 7 claims each of the lugs protrudes through apertures.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Orlando Aviles, can be reached on (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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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG