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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
claim 1, line 7, “movement mechanism”;
Claim 1, line 13, “movement mechanism”;
claim 4, line 1, “divider movement mechanism”;
Claim 8, lines 1 and 2, “movement mechanism”;
claim 14, lines 1 and 2, “divider movement mechanism”; and
Claim 16, line 3, “divider movement mechanism”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-11, 13-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11, 13-18, and 3, respectively, of U.S. Patent No. 12,280,913. Although the claims at issue are not identical, they are not patentably distinct from each other because.
Independent claim 1 of the instant application and independent claim 1 of the related patent each disclose a container comprising: a frame having an open face; dividers (plurality of dividers) extending from a first side of the frame to a second side of the frame, wherein the dividers are movable to create a plurality of compartments for items (parcels); a panel (first or second panel) movably coupled to the frame and positioned to at least partially cover the open face; a movement mechanism (first or second movement mechanism) coupled to the panel and operable to move the panel with respect to the frame; and a tote disposed within the frame, the tote having a first tote side with first lateral grooves therein and a second tote side with second lateral grooves therein, and each of the dividers is slidingly supported along at least one of the first lateral grooves and at least one of the second lateral grooves, wherein the panel covers the open face on the frame and the movement mechanism is configured to move the panel to expose an area of the open face corresponding to a selected compartment of the plurality of compartments containing an item of the items.
Dependent claims 2-10 of the instant application clearly read on dependent claims 2-10, respectively, of the related patent.
Independent claim 11 of the instant application and independent claim 11 of the related patent each disclose a container comprising: a frame having an open face; dividers (plurality of dividers) extending from a first side of the frame to a second side of the frame, wherein the dividers are movable to create a plurality of compartments for items (parcels) ; a panel (first or second panel) movably coupled to the frame and positioned to at least partially cover the open face; and a motor coupled to the panel and operable to move the panel with respect to the frame, wherein the panel covers the open face, the motor moves the panel to expose an area of the open face corresponding to a selected compartment of the plurality of compartments containing an item of the items, and at least some of the dividers are stored adjacent to one another at an end of the frame as stored dividers that are available to create additional compartments.
Dependent claims 13-18 of the instant application clearly read on dependent claims 13-18, respectively, of the related patent.
Independent claim 20 of the instant application and dependent claim 3 of the related patent each disclose a container comprising: a frame (claim 1); dividers (plurality of dividers, claim 1) extending from a first side of the frame to a second side of the frame, wherein the dividers are movable to create a plurality of compartments for items (parcels, claim 1); and a tote (claim 3) disposed within the frame, the tote having a first tote side with first lateral grooves therein and a second tote side with second lateral grooves therein, wherein each of the dividers is slidingly supported along at least one of the first lateral grooves and at least one of the second lateral grooves, and at least some of the dividers are stored adjacent to one another at an end of the frame as stored dividers that are available to create additional compartments.
Claim 12 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,280,913 in view of Mountford et al. (US#2020/0128992).
Regarding claim 12 of the instant application, claim 11 of the related patent fails to specifically disclose the frame including a track for movement of the panel therein. However, as evidenced by Mountford, such a configuration is known in the analogous art, see the container comprising a frame 104 and panels 152 and 154 for covering an open face of the frame, wherein portion 114 of the frame includes a track 118 for movement of the panels therein. Therefore, as taught by Mountford, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 11 of the related patent such that the frame included a track for movement of the panel therein. The inclusion of the track would ensure proper movement of the panel.
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 13 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.
It is unclear if the “first container side” and the “second container side” recited in claim 13, lines 1-2, are referencing and/or include the “first side of the frame” and the “second side of the frame” previously recited in claim 11, line 3.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mountford et al. (US#2020/0128992).
Regarding claim 11, Mountford discloses a container 100 comprising: a frame 104 having an open face (see open front face in Fig. 2); dividers 130 extending from a first side of the frame to a second side of the frame, wherein the dividers are movable (via tracks 118) to create a plurality of compartments for items 106 ; a panel 152 or 154 movably coupled to the frame and positioned to at least partially cover the open face; and a motor 142 ([0051], lines 18-22) coupled to the panel and operable to move the panel with respect to the frame, wherein the panel covers the open face (Fig. 5), the motor moves the panel to expose an area of the open face corresponding to a selected compartment of the plurality of compartments containing an item of the items (see Figs. 1, 2, 4, and 6), and at least some of the dividers (lowermost two of the three dividers shown in Fig. 2) are stored adjacent to one another at an end 116 (bottom end) of the frame as “stored” dividers that are available to create (do create) additional compartments.
Regarding claim 12, wherein the frame 104 includes opposing side panels 114 each including a track 118, and the panel 152 or 154 is movably held within (between) the panels 114 and thus movably held within (between) the tracks 118.
Regarding claim 13, further comprising a first container side 114 and a second container side 114 spaced from (opposing) the first container side, the first container side and the second container side having “lateral” grooves 118 therein (grooves/tracks 118 are uniformly spaced along the lateral direction of the side 114), and the dividers are slidingly supported along the lateral grooves.
Claims 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vallee et al. (US#4779752).
Regarding claim 20, Vallee discloses a container 1 comprising: a frame 3; dividers 43 extending from a first side 5 of the frame to a second side 7 of the frame, wherein the dividers are movable (during removal and insertion) to create a plurality of compartments 45 for items (e.g. papers) ; and a tote 20 disposed within the frame, the tote having a first tote side 23 with first “lateral” grooves 41 (grooves 41 are uniformly spaced along the lateral direction of the side 23) therein and a second tote side 25 with second “lateral” grooves therein 41 (grooves 41 are uniformly spaced along the lateral direction of the side 25), wherein each of the dividers is slidingly supported along at least one of the first lateral grooves and at least one of the second lateral grooves, and at least some of the dividers are stored (inserted) adjacent to one another at an end of the frame (dividers near frame end panel 27 or 29) as “stored” dividers that are available to create (do create) additional compartments.
Allowable Subject Matter
Upon filing of an approved terminal disclaimer overcoming the above double patenting rejection, claims 1-10 would be allowable.
Upon filing an approved terminal disclaimer overcoming the above double patenting rejection, claims 14-18 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 19 is 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.
Regarding independent claim 1, the following is a statement of reasons for the indication of allowable subject matter: Although Vallee et al. (US#4779752), as discussed above in detail, does disclose a panel 59 movably coupled (hinged) to the frame and positioned to at least partially cover the open face (open top) thereof, Vallee fails to disclose or suggest a movement mechanism coupled to the panel and operable to move the panel with respect to the frame, wherein the movement mechanism is configured to move the panel to expose an area of the open face corresponding to a selected compartment of the plurality of compartments containing an item of the items. Mountford et al. (US#2020/0128992), as discussed above in detail, fails to disclose or suggest a tote disposed within the frame. It would not have been obvious to one of ordinary skill in the art to combine the teachings of Vallee and Mountford to cure these deficiencies. Therefore, neither Vallee or Mountford, alone or in combination, meet the limitations of claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM L MILLER whose telephone number is (571)272-7068. The examiner can normally be reached 9:30 - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677