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 .
Priority
The priority date of this CON case is determined to be 3/04/2021 as claims are directed to Fig 13-14 which was part of the disclosure of 17/191,965 filed on 3/04/2021.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,239,202. Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the patented claims 1, 9, 17 and instant claims 1, 10, 19 are minor and obvious from each other. Patented claims 1, 9, 17 pertain to species of the instant claims 1, 10, 19 and therefore anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would, necessarily, extend the rights of the species should the genus issue as a patent after the species. For example, instant claim 1 pertains to a product dispensing apparatus with a reusable product dispenser comprising a housing, a base that rotates, a telescope assembly and a refill cartridge. Patented claim 1 also pertains to a product dispensing apparatus with a reusable product dispenser comprising a housing, a base that rotates, a telescope assembly and a refill cartridge and how these parts function together. That is the only difference. Therefore, the instant claim 1 is a broader version of the patented claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the patented claim 1. Any infringement over the patented claim 1 would also infringe over the instant claim 1. Hence the instant claim 1 does not differ from the scope of the patented claim 1. In 214 USPQ 761, In re Van Ornum and Stang, broad claims in an application were held to be obvious double patenting over previous narrow claims.
Similarly, instant claim 10 pertains to a reusable product dispenser comprising a housing, a base that rotates, and a telescope assembly. Patented claim 9 also pertains to a reusable product dispenser comprising a housing, a base that rotates, and a telescope assembly with how these parts function together. That is the only difference. Therefore, the instant claim 10 is a broader version of the patented claim 9. Furthermore, in the instant claim 10, the claimed limitations can be found in the patented claim 9. Any infringement over the patented claim 9 would also infringe over the instant claim 10. Hence the instant claim 10 does not differ from the scope of the patented claim 9. In 214 USPQ 761, In re Van Ornum and Stang, broad claims in an application were held to be obvious double patenting over previous narrow claims.
Lastly, instant claim 19 pertains to a reusable product dispenser comprising a housing, a base that rotates, a telescope assembly and a resilient member. Patented claim 17 also pertains to a product dispensing apparatus with a reusable product dispenser comprising a housing, a base that rotates, a telescope assembly, a refill cartridge, and a resilient member that all function together. That is the only difference. Therefore, the instant claim 19 is a broader version of the patented claim 17. Furthermore, in the instant claim 19, the claimed limitations can be found in the patented claim 17. Any infringement over the patented claim 17 would also infringe over the instant claim 19. Hence the instant claim 19 does not differ from the scope of the patented claim 17. In 214 USPQ 761, In re Van Ornum and Stang, broad claims in an application were held to be obvious double patenting over previous narrow claims.
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.
Claim(s) 1-3, 5-6, 8-12, 14-15, 17-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Thulin et al (US 2021/0289919), hereinafter Thulin.
Regarding claim 1, Thulin teaches a product dispensing apparatus comprising: a reusable product dispenser (3) comprising: a housing (6 & 63, Fig 21) defining a longitudinal axis; a base (51 & 52) rotatably coupled to a proximal portion of the housing (¶ [235-236]) and configured to rotate about the longitudinal axis in a first direction and a second direction (¶ [272]); and a telescope assembly (53, 54, 55) including a proximal section (54) and a distal section (55) movable relative to the proximal section along the longitudinal axis defined by the housing between a collapsed condition (as shown in Fig 21) and an extended condition (as shown in Fig 27), at least one of the proximal section or the distal section operably coupled to the base (as shown in Fig 21, proximal section 54 is engaged to base at 52) such that rotation of the base about the longitudinal axis causes corresponding rotation of the telescope assembly about the longitudinal axis (¶ [274]; therefore the proximal section 54 rotates); and a refill cartridge (8) configured to releasably couple to the reusable product dispenser (¶ [96, 139, 161, 177-178]).
Thulin further teaches in claim 2 wherein the proximal section of the telescope assembly is configured to fit at least partially within the distal section of the telescope assembly (as shown in Fig 21, proximal section 54 fits inside distal section 55);
in claim 3 wherein the proximal section of the telescope assembly includes at least one of a guide (544, Fig 22) configured to slide along a rail of the distal section of the telescope assembly or a rail configured to slide along a guide of the distal section (552, Fig 23) of the telescope assembly;
in claim 5 wherein the refill cartridge is configured to releasably couple to the telescope assembly (¶ [271]);
in claim 6 wherein the refill cartridge is configured to releasably couple to housing (¶ [96, 139, 161, 177-178]);
in claim 8 wherein the housing is cylindrical in shape (as shown in Fig 5-6, 15, 34); and
in claim 9 wherein the telescope assembly is cylindrical in shape (as shown in Fig 21-28).
Regarding claim 10, Thulin teaches a reusable product dispenser for use with a product refill cartridge, the reusable product dispenser (3) comprising: a housing (6 & 63, Fig 21) defining a longitudinal axis; a base (51 & 52) rotatably coupled to a proximal portion of the housing (¶ [235-236]) and configured to rotate about the longitudinal axis in a first direction and a second direction (¶ [272]); and a telescope assembly (53, 54, 55) including a proximal section (54) and a distal section (55) movable relative to the proximal section along the longitudinal axis defined by the housing between a collapsed condition (as shown in Fig 21) and an extended condition (as shown in Fig 27), at least one of the proximal section or the distal section operably coupled to the base (as shown in Fig 21, proximal section 54 is engaged to base at 52) such that rotation of the base about the longitudinal axis causes corresponding rotation of the telescope assembly about the longitudinal axis (¶ [274]; therefore the proximal section 54 of the telescope assembly rotates).
Thulin further teaches in claim 11 wherein the proximal section of the telescope assembly is configured to fit at least partially within the distal section of the telescope assembly (as shown in Fig 21, proximal section 54 fits inside distal section 55);
in claim 12 wherein the proximal section of the telescope assembly includes at least one of a guide (544, Fig 22) configured to slide along a rail of the distal section of the telescope assembly or a rail configured to slide along a guide of the distal section (552, Fig 23) of the telescope assembly;
in claim 14 wherein the base includes a centrally-located protrusion (52) extending distally therefrom (as shown in Fig 21);
in claim 15 wherein the proximal section of the telescope assembly is disposed circumferentially around the protrusion of the base and the distal section of the telescope assembly (55) is disposed circumferentially around the proximal section (54) of the telescope assembly (as shown in Fig 21);
in claim 17 wherein the housing is cylindrical in shape (as shown in Fig 5-6, 15, 34); and
in claim 18 wherein the telescope assembly is cylindrical in shape (as shown in Fig 21-28).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 12,239,202 to Groffsky et al is directed to the state of the art as a teaching of personal care product with reusable product dispenser and replaceable cartridge.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C CHIANG whose telephone number is (571)270-5613. The examiner can normally be reached Mon-Fri 10 AM- 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Paul Durand can be reached at (571) 272-4459. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER C CHIANG/Primary Examiner, Art Unit 3754
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