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 .
Claim Rejections - 35 USC § 112
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.
Claim 12 is 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 12 recites the limitation "the indentation" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-8, 10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Welsh et al. (US 2004/0118737), in view of Hauser (US D651,476).
Regarding claim 1, Welsh teaches a container (figure 1, reference 12) capable of holding produce with ventilation for ethylene gas emitted from the produce within the container (figure 1, reference 12: This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Welsh is capable of performing the recited function), the container comprising: a bottom (figure 1, reference 20); at least one sidewall (figure 1, reference 22, 24, 26, 28) extending upwardly from the bottom (figure 1), the sidewall being oriented substantially along a first plane (figure 1 and 5: side walls are orientated substantially along a vertical plane), the bottom and the sidewall defining at least a portion of a cavity (figure 1, inside reference 12) for holding items therein (paragraph 1); and a rim (figure 1, reference 40) proximate to an upper portion of the sidewall (figure 1: rim 40 is proximate an upper portion of sidewalls 22, 24, 26, 28), the rim being substantially uninterrupted along a portion thereof (figure 1, reference 40); wherein the upper portion of the sidewall includes a first surface proximate and adjacent to the rim (figure 1 and 4, top horizontal surface of 24a, 28a and as shown in the annotated figure below), the first surface extending substantially along a second plane (figure 1 and 4, the first surface runs substantially along a horizontal plane), the second plane being transverse to the first plane (figure 1), the first surface including an aperture therethrough proximate the rim (figure 4, reference 36), the aperture having a shape (figure 4, reference 36), the aperture permitting fluid communication between an exterior of the container and the cavity (paragraph 25), the aperture being proximate to the rim providing an exit near a top of the container (figure 1, reference 36) capable of minimizing the amount of ethylene gas within the container naturally emitted from the produce held in the container (This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Welsh is capable of performing the recited function).
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Welsh does not explicitly teach the container for holding produce with ventilation for ethylene gas emitted from the produce within the container; the aperture having an elongated shape, the aperture being proximate to the rim providing an exit near a top of the container to minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container. However, Hauser does teach the container for holding produce with ventilation for ethylene gas emitted from the produce within the container (figure 1 and the title: The title of the application is “Collapsible Produce Keeper”. Since the container is a produce keeper with an aperture, the aperture provides ventilation for ethylene gas emitted from the produce within the container); the cavity for holding the produce therein (application title), the aperture having an elongated shape (figure 2, as shown in the annotated figure below), the aperture minimizing the amount of ethylene gas within the container naturally emitted from the produce held in the container (figure 2: Since the container is a produce keeper with an aperture, the aperture would minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container).
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It would have been obvious to one of ordinary skill in the art at the time of filing to modify the container of Welsh to include the container for holding produce with ventilation for ethylene gas emitted from the produce within the container; the aperture having an elongated shape, the aperture being proximate to the rim providing an exit near a top of the container to minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container, as disclosed by Hauser, because having the aperture with an elongated shape would be a change in shape of the aperture. To modify the aperture shape with an elongated shape as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. Furthermore, having the container holding produce with ventilation for ethylene gas emitted from the produce within the container would be based on the intended use of the container, as explained above.
Regarding claim 2, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Welsh teaches at least a portion of the first surface is oriented away from the bottom (figure 1, top of 24a, 28a: the first surface with apertures 36 are orientated away from the bottom 20).
Regarding claim 3, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Welsh teaches at least a portion of the first surface is disposed inwardly relative to an inner edge portion of the rim (figure 1, as shown on the annotated figure below).
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Regarding claim 4, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Welsh teaches the first surface is positioned below the upper surface of the rim (figure 1, as shown in the annotated figure above for claim 3).
Regarding claim 5, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Hauser teaches the aperture having an elongated shape (figure 2, as shown in the annotated figure above for claim 1). Welsh, in view of Hauser, do not explicitly teach the aperture being oval. However, to modify the aperture shape with an oval as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 6, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Hauser teaches the aperture having an elongated shape (figure 2, as shown in the annotated figure above for claim 1). Welsh, in view of Hauser, do not explicitly teach the aperture being oblong. However, to modify the aperture shape with an oblong shape as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 7, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Hauser teaches the aperture is at least in part curved (figure 2, as shown in the annotated figure above for claim 1).
Regarding claim 8, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Hauser teaches the aperture is quarter moon-shaped (figure 2, as shown in the annotated figure above for claim 1).
Regarding claim 10, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Welsh teaches the aperture having a size (figure 4, reference 36).
Welsh, in view of Hauser, do not explicitly teach the aperture is approximately 1 inch (25.4mm) long and approximately 0.2 inches (5mm) wide. However, it has been held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device is not patentably distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the container of modified Welsh to include the aperture being approximately 1 inch (25.4mm) long and approximately 0.2 inches (5mm) wide because having this size would allow for easy cleaning of the aperture.
Regarding claim 12, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Welsh teaches an indentation (figure 1 and 4, reference 24a, 28a) having a curved portion extending inwardly of the sidewall (figure 1 and 4), the curved portion includes soft geometrical edges configured to limit potential damage to the produce within the container (figure 4: the indentation 24a, 28a have soft geometrical edges).
Regarding claim 13, Welsh teaches a container (figure 1, reference 12) capable of holding produce with ventilation for ethylene gas emitted from the produce within the container (figure 1, reference 12: This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Welsh is capable of performing the recited function), the container comprising: a bottom (figure 1, reference 20); at least one sidewall (figure 1, reference 22, 24, 26, 28) extending upwardly from the bottom (figure 1), the bottom and the sidewall defining at least a portion of a cavity (figure 1, inside reference 12) for holding items therein (paragraph 1); and a rim (figure 1, reference 40) proximate to an upper portion of the sidewall (figure 1: rim 40 is proximate an upper portion of sidewalls 22, 24, 26, 28), the rim being substantially uninterrupted along a portion thereof (figure 1, reference 40); wherein the upper portion of the sidewall includes a first surface proximate and adjacent to the rim (figure 1 and 4, top horizontal surface of 24a, 28a and as shown in the annotated figure below), the first surface extending substantially along a plane (figure 1 and 4, the first surface runs substantially along a horizontal plane), the plane being transverse to a portion of the sidewall (figure 1), the first surface including an aperture therethrough proximate the rim (figure 4, reference 36), the aperture having a shape (figure 4, reference 36), the aperture having a length and a width (figure 4, reference 36), the aperture permitting fluid communication between an exterior of the container and the cavity (paragraph 25), the aperture being proximate to the rim providing an exit near a top of the container (figure 1, reference 36) capable of minimizing the amount of ethylene gas within the container naturally emitted from the produce held in the container (This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Welsh is capable of performing the recited function).
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Welsh does not explicitly teach the container for holding produce with ventilation for ethylene gas emitted from the produce within the container; the aperture being at least in part polygon shaped, the aperture having a length greater than a width, the aperture being proximate to the rim providing an exit near a top of the container to minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container. However, Hauser does teach the container for holding produce with ventilation for ethylene gas emitted from the produce within the container (figure 1 and the title: The title of the application is “Collapsible Produce Keeper”. Since the container is a produce keeper with an aperture, the aperture provides ventilation for ethylene gas emitted from the produce within the container); the cavity for holding the produce therein (application title), the aperture having a length greater than a width (figure 2, as shown in the annotated figure below), the aperture minimizing the amount of ethylene gas within the container naturally emitted from the produce held in the container (figure 2: Since the container is a produce keeper with an aperture, the aperture would minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container). Although Welsh, in view of Hauser, do not explicitly teach the aperture being at least in part polygon shaped, to modify the aperture shape with the aperture being at least in part polygon shaped as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
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It would have been obvious to one of ordinary skill in the art at the time of filing to modify the container of Welsh to include the container for holding produce with ventilation for ethylene gas emitted from the produce within the container; the aperture being at least in part polygon shaped, the aperture having a length greater than a width, the aperture being proximate to the rim providing an exit near a top of the container to minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container, as disclosed by Hauser, because having the aperture have a length greater than a width would be a change in shape of the aperture. To modify the aperture shape with an elongated shape as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. Furthermore, having the container holding produce with ventilation for ethylene gas emitted from the produce within the container would be based on the intended use of the container, as explained above.
Regarding claim 14, Welsh, in view of Hauser, teach all of the claim limitations of claim 13, as shown above. Furthermore, Welsh teaches at least a portion of the first surface is oriented away from the bottom (figure 1, top of 24a, 28a: the first surface with apertures 36 are orientated away from the bottom 20).
Regarding claim 15, Welsh, in view of Hauser, teach all of the claim limitations of claim 13, as shown above. Furthermore, Welsh teaches at least a portion of the first surface is disposed inwardly relative to an inner edge portion of the rim (figure 1, as shown on the annotated figure below).
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Regarding claim 16, Welsh, in view of Hauser, teach all of the claim limitations of claim 13, as shown above. Furthermore, Welsh teaches the first surface is positioned below the upper surface of the rim (figure 1, as shown in the annotated figure above for claim 15).
Regarding claim 17, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Hauser teaches the aperture having an elongated shape (figure 2, as shown in the annotated figure above for claim 13). Welsh, in view of Hauser, do not explicitly teach the aperture being quadrilateral. However, to modify the aperture shape with quadrilateral as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 18, Welsh teaches a container (figure 1, reference 12) capable of holding produce with ventilation for ethylene gas emitted from the produce within the container (figure 1, reference 12: This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Welsh is capable of performing the recited function), the container comprising: a bottom (figure 1, reference 20); at least one sidewall (figure 1, reference 22, 24, 26, 28) extending upwardly from the bottom (figure 1), the bottom and the sidewall defining a cavity (figure 1, inside reference 12) for holding items therein (paragraph 1); and a rim (figure 1, reference 40) proximate to an upper portion of the sidewall (figure 1: rim 40 is proximate an upper portion of sidewalls 22, 24, 26, 28), the rim being substantially uninterrupted along a portion thereof (figure 1, reference 40); wherein the upper portion of the sidewall includes a first surface proximate and adjacent to the rim (figure 1 and 4, top horizontal surface of 24a, 28a and as shown in the annotated figure below), the first surface protruding into the cavity (figure 1 and 4), the first surface including an aperture therethrough proximate the rim (figure 4, reference 36), the aperture being at least in part curved (figure 4, reference 36), the aperture having a length and a width (figure 4, reference 36), the aperture permitting fluid communication between an exterior of the container and the cavity (paragraph 25), the aperture being proximate to the rim providing an exit near a top of the container (figure 1, reference 36) capable of minimizing the amount of ethylene gas within the container naturally emitted from the produce held in the container (This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Welsh is capable of performing the recited function).
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Welsh does not explicitly teach the container for holding produce with ventilation for ethylene gas emitted from the produce within the container; the aperture having a length greater than a width, the aperture being proximate to the rim providing an exit near a top of the container to minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container. However, Hauser does teach the container for holding produce with ventilation for ethylene gas emitted from the produce within the container (figure 1 and the title: The title of the application is “Collapsible Produce Keeper”. Since the container is a produce keeper with an aperture, the aperture provides ventilation for ethylene gas emitted from the produce within the container); the cavity for holding the produce therein (application title), the aperture having a length greater than a width (figure 2, as shown in the annotated figure below), the aperture minimizing the amount of ethylene gas within the container naturally emitted from the produce held in the container (figure 2: Since the container is a produce keeper with an aperture, the aperture would minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container).
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It would have been obvious to one of ordinary skill in the art at the time of filing to modify the container of Welsh to include the container for holding produce with ventilation for ethylene gas emitted from the produce within the container; the aperture having a length greater than a width, the aperture being proximate to the rim providing an exit near a top of the container to minimize the amount of ethylene gas within the container naturally emitted from the produce held in the container, as disclosed by Hauser, because having the aperture have a length greater than a width would be a change in shape of the aperture. To modify the aperture shape with an elongated shape as claimed would entail a mere change in shape of the aperture and yield only predictable results. "[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. Furthermore, having the container holding produce with ventilation for ethylene gas emitted from the produce within the container would be based on the intended use of the container, as explained above.
Regarding claim 19, Welsh, in view of Hauser, teach all of the claim limitations of claim 18, as shown above. Furthermore, Welsh teaches the rim includes a complete perimeter of the container (figure 1, reference 40).
Regarding claim 20, Welsh, in view of Hauser, teach all of the claim limitations of claim 18, as shown above. Furthermore, Welsh teaches at least a portion of the first surface is oriented away from the bottom (figure 1, top of 24a, 28a: the first surface with apertures 36 are orientated away from the bottom 20).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Welsh et al. (US 2004/0118737), in view of Hauser (US D651,476), as applied to claim 1 above, and further in view of Laib et al. (US 20010047997).
Regarding claim 9, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above.
Welsh, in view of Hauser, do not explicitly teach the first surface includes a single aperture. However, Laib does teach the first surface includes a single aperture (paragraph 40).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the container of modified Welsh to include the first surface includes a single aperture, as disclosed by Laib, because include a single aperture is based on the intended use of the container. By having one large aperture, more gas transfer could occur, as explained by Laib (paragraph 40).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Welsh et al. (US 2004/0118737), in view of Hauser (US D651,476), as applied to claim 1 above, and further in view of DeHart (US 5,076,459).
Regarding claim 11, Welsh, in view of Hauser, teach all of the claim limitations of claim 1, as shown above. Furthermore, Welsh teaches the at least one sidewall comprises a first sidewall portion (figure 1, reference 22) and second sidewall portion (figure 1, reference 24) and a corner formed at the juncture of at least the first sidewall portion and the second side wall portion (figure 1).
Modified Welsh does not explicitly teach wherein the container includes at least one opening in a corner formed at the juncture of at least the first sidewall portion and the second side wall portion. However, DeHart does teach wherein the container (figure 1 and 5, reference 50) includes at least one opening (figure 5, reference 58) in a corner formed at the juncture of at least the first sidewall portion and the second side wall portion (figure 5: the corner is formed by a junction between two wall portions 50).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the container of modified Welsh, to include the container includes at least one opening in a corner formed at the juncture of at least the first sidewall portion and the second side wall portion, as disclosed by DeHart, because including the corner aperture allows for increased air flow to pass in and out of the container, as explained by DeHart (column 4, lines 43-46).
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 1-20 of U.S. Patent No. 12,227,350. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, USP ‘350 (claim 1) teaches all of the claim limitations of claim 1.
Regarding claim 2, USP ‘350 (claim 2) teaches all of the claim limitations of claim 2.
Regarding claim 3, USP ‘350 (claim 3) teaches all of the claim limitations of claim 3.
Regarding claim 4, USP ‘350 (claim 4) teaches all of the claim limitations of claim 4.
Regarding claim 5, USP ‘350 (claim 5) teaches all of the claim limitations of claim 5.
Regarding claim 6, USP ‘350 (claim 6) teaches all of the claim limitations of claim 6.
Regarding claim 7, USP ‘350 (claim 7) teaches all of the claim limitations of claim 7.
Regarding claim 8, USP ‘350 (claim 8) teaches all of the claim limitations of claim 8.
Regarding claim 9, USP ‘350 (claim 9) teaches all of the claim limitations of claim 9.
Regarding claim 10, USP ‘350 (claim 10) teaches all of the claim limitations of claim 10.
Regarding claim 11, USP ‘350 (claim 11) teaches all of the claim limitations of claim 11.
Regarding claim 12, USP ‘350 (claim 12) teaches all of the claim limitations of claim 12.
Regarding claim 13, USP ‘350 (claim 13) teaches all of the claim limitations of claim 13.
Regarding claim 14, USP ‘350 (claim 14) teaches all of the claim limitations of claim 14.
Regarding claim 15, USP ‘350 (claim 15) teaches all of the claim limitations of claim 15.
Regarding claim 16, USP ‘350 (claim 16) teaches all of the claim limitations of claim 16.
Regarding claim 17, USP ‘350 (claim 17) teaches all of the claim limitations of claim 17.
Regarding claim 18, USP ‘350 (claim 18) teaches all of the claim limitations of claim 18.
Regarding claim 19, USP ‘350 (claim 19) teaches all of the claim limitations of claim 19.
Regarding claim 20, USP ‘350 (claim 20) teaches all of the claim limitations of claim 20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER A PAGAN whose telephone number is (571)270-7719. The examiner can normally be reached Monday - Thursday: 6:30am-4:30pm.
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/JAVIER A PAGAN/Primary Examiner, Art Unit 3735