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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 3 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,258,253. This is a statutory double patenting rejection.
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.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,258,253. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the ‘253 patent discloses all limitations of instant claim 18.
Claim Rejections - 35 USC § 103
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, 5, 7, and 10-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 5,523,112 (Carns) in view of US Patent 5,791,385 (Stahlecker).
In Re claim 1 Carns discloses a system for introducing an additive into a container, the system comprising an automated device for transporting the container along a trajectory in a horizontal plane (Conveyor 12), the system further comprising a static microdoser having a nozzle (18) from which a jet of an additive issues upon passage of an opening of the container in proximity to the nozzle to introduce the additive into said container (Column 6, lines 1-16).
Carns doesn’t disclose a nozzle which is inclined relative to a direction orthogonal to a horizontal plane.
Stahlecker discloses a fluid filling operation in which a nozzle (917) is oriented at an inclination relative to an axial direction of a container (Shown in Figure 9), in order to direct the fluid dispensed from the nozzle along the side of the container.
Therefore, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to modify the Carns apparatus by orienting the nozzle at an angle relative to the vertical axis of the containers (an axis which is at a right angle to the direction of travel of the containers), in order to prevent a portion of the aroma substance from being directed against the bottom of the container and potentially splashing out.
In Re claim 2 Carns discloses a nozzle (18) oriented such that a portion of a jet of an additive is directed against the inner wall of a container (Column 6, lines 1-16).
In Re claim 5 Carns discloses a transport device which transports a container along a linear trajectory (conveyor 12).
In Re claim 7 Stahlecker discloses nozzle (917) which is inclined at an acute angle to an axis which is perpendicular to a horizontal axis (angle of nozzle 917 shown in figure 9).
In Re claim 10 Stahlecker discloses a nozzle which is inclined at an angle to project a filling fluid against a sidewall of a container. The determination of the precise angle at which the nozzle should be inclined to provide fluid flow characteristics desired by a user would require only ordinary skill in the art, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In Re claim 11 Stahlecker discloses a nozzle which is inclined at an angle to project a filling fluid against a sidewall of a container. The determination of the precise angle at which the nozzle should be inclined to provide fluid flow characteristics desired by a user would require only ordinary skill in the art, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
In Re claim 12 Carns discloses a container having an inner wall having a rounded or cylindrical shape (cylindrical containers 10). Stahlecker discloses a fluid nozzle (917 in Figure 9) which is inclined relative to a vertical axis of a container in order to direct a fluid flow along a sidewall of a container. However, neither reference discloses a fluid jet which crosses an opening of the container at a distance from the central axis of the container. It would have been obvious to position the fluid nozzle in such a way that a fluid jet crossed the opening of the container at a distance from a central axis of the container, since the determination of the position and angle of the nozzle which provided the desired fluid flow, given the teaching of Stahlecker, would require only ordinary skill in the art.
In Re claim 13 Carns discloses many limitations, but doesn’t disclose a plurality of microdosing nozzles. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to equip the Carns apparatus with additional microdosing nozzles, in order to permit a plurality of containers to be dosed simultaneously. Furthermore, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
In Re claim 14 Carns discloses many limitations, but doesn’t disclose a group of 2 to 6 microdosing nozzles. It would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to equip the Carns apparatus with additional microdosing nozzles, in order to permit a plurality of containers to be dosed simultaneously. Furthermore, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
In Re claims 15 Carns discloses a bottle having a mouth opening (container 10).
In Re claim 16 Carns discloses many limitations, but doesn’t disclose a container containing water, soda, lemonade, or soup. It would have been an obvious to one of ordinary skill in the art at the effective filing date of the invention that the Carns apparatus could be advantageously used to treat containers for any desired food material.
In Re claim 17 Carns discloses many limitations, but doesn’t disclose an additive comprising edible flavoring concentrate, a mineral concentrate, or a functional concentrate. It have been an obvious to one of ordinary skill in the art at the effective filing date of the invention that the Carns apparatus could be advantageously used to treat containers of food material with any desired additive.
Carns in view of Stahlecker as applied to claim 1 above performs the method of claim 18 during ordinary use and operation.
Allowable Subject Matter
Claims 4, 6, 8 and 9 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US PGPub 2004/0261893 discloses a device for microdosing a preservative into a filled container.
US Patent 4,840,014 discloses a filling machine having a purge gas nozzle oriented at an inclination to an angle of travel of a container.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON KAROL NIESZ whose telephone number is (571)270-3920. The examiner can normally be reached M-F 9-5 EST.
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, Craig Schneider can be reached at 571 272 3607. 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.
/JASON K NIESZ/Primary Examiner, Art Unit 3753