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 .
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 4 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. 11,771,222. 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.
Claims 1, 2, 3, 8, 16, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, and 8 of U.S. Patent No. 11,771,222. Although the claims at issue are not identical, they are not patentably distinct from each other because the required limitation that an inner surface of the front wall extending past a front face of a cabinet (the limitation recited in this application’s claim 1), would imply that the front face positioned in front of said inner surface would also extend forward of the front face of the cabinet, thus the additional recitation of the of the patent does not make a patentable distinction.
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.
Claim(s) 1-5, 9-10, 12, 13, 17-22, and 25 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Booth et al. (US 2017/0138030 A1).
Re: Claim 1, Booth discloses the claimed invention including a sink comprising:
a plurality of walls (142, 122, 123, 124) cooperatively defining at least one basin, wherein a front wall (142) of the plurality of walls includes an inner surface and an outer surface, wherein the inner surface defines part of the at least one basin (110) (Fig. 1),
wherein at least a portion (131) of the inner surface of the front wall is configured to be positioned forward of a front face (209) of a cabinet (200) when installed in an opening in the front face of the cabinet (Fig 4, a portion of the inner surface extends forward of mount surface 154, 164, 174 which represents where the front face of the cabinet would reside).
Re: Claim 2, Booth discloses the claimed invention including the front wall further comprises a first lateral portions (152) extending outwardly past a first side wall of the plurality of walls and a second lateral portion (162) extending outwardly past a second side wall of the plurality of walls (Fig. 2)
Re: Claim 3, Booth discloses the claimed invention including the first lateral portion and the second lateral portion cooperatively define a rear surface (192) configured to engage the front face of the cabinet (Depicted in Fig. 9).
Re: Claim 4, Booth discloses the claimed invention including the entire front wall is configured to be positioned in front of the front face of the cabinet when the sink is installed in the cabinet, such that the at least one basin extends forward past the front face (Depicted in Fig. 9).
Re: Claim 5, Booth discloses the claimed invention including the plurality of walls includes a first side wall (122), a second side wall (123), and a rear wall (124), the sink further comprising a rim (130) extending outwardly in a substantially horizontal orientation along an upper periphery of the first side wall, the rear wall, and the second side wall (Depicted in Fig. 1).
Re: Claim 9, the rejection of claim 1 above covers the limitations recited in this claim, and Booth further disclosing the outer surface of the front wall defines an outer facing surface of the sink that is configured to be exposed in front of an opening (214) in a front face of a cabinet (Depicted in Figs. 7 and 9)
Re: Claim 10, Booth discloses the claimed invention including the plurality of walls further includes a first side wall (122), a second side wall (123), a rear wall (124), and a bottom wall (110) (Fig. 1), wherein the front wall further comprises a first lateral portions (152) extending outwardly past a first side wall of the plurality of walls and a second lateral portion (162) extending outwardly past a second side wall of the plurality of walls (Fig. 2), wherein the first lateral portion and the second lateral potion portion are each configured to at least partially overlap the front face of the cabinet adjacent the opening, such that the front wall of the sink substantially conceals edges that define the opening (Depicted in Fig. 9).
Re: Claim 12, Booth discloses the claimed invention including the first lateral portion and the second lateral portion cooperatively define a rear surface (192) configured to engage the front face of the cabinet (Depicted in Fig. 9).
Re: Claim 13, Booth discloses the claimed invention including the sink further comprising a rim (130) extending outwardly in a substantially horizontal orientation along an upper periphery of the first side wall, the rear wall, and the second side wall (Depicted in Fig. 1).
Re: Claim 17, the device of Booth as evidenced in the rejection of claim of claim 1 above is capable of performing the claimed method of installing said sink into a cabinet as depicted in Fig. 9.
Re: Claim 18, the device of Booth as evidenced in the rejection of claim of claim 1 above is capable of performing the claimed method of the front wall further comprises a first lateral portions (152) extending outwardly past a first side wall of the plurality of walls and a second lateral portion (162) extending outwardly past a second side wall of the plurality of walls (Fig. 2), he first lateral portion and the second lateral portion cooperatively define the rear surface that engages the front face of the cabinet (Depicted in Fig. 9).
Re: Claim 19, the device of Booth as evidenced in the rejection of claim of claim 1 above is capable of performing the claimed method of an entirety of the front wall is positioned in front of the front face of the cabinet when the sink is installed in the cabinet such that the at least one basin extends forward past the front face (Depicted in Fig. 9).
Re: Claim 20, the device of Booth as evidenced in the rejection of claim of claim 1 above is capable of performing the claimed method of the plurality of walls includes a first side wall (122), a second side wall (123), and a rear wall (124), the sink further comprising a rim (130) extending outwardly in a substantially horizontal orientation along an upper periphery of the first side wall, the rear wall, and the second side wall (Depicted in Fig. 1).
Re: Claim 21, Booth discloses the claimed invention including the plurality of walls further comprises a bottom wall, and wherein the outer surface of the front wall extends gradually away from the bottom wall toward an upper portion (Depicted in Figs. 3-4, bottom positions the front face gradually away due to the slope).
Re: Claim 22, Booth discloses the claimed invention including the outer surface of the front wall is configured to be exposed in front of the opening in the front face of the cabinet (Depicted in Fig. 9).
Re: Claim 25, Booth discloses the claimed invention including the plurality of walls are integrally formed (Depicted in Fig. 1, Para. 58, one piece).
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) 8, 16, 23, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Booth et al. (US 2017/0138030 A1 herein after Booth).
Re: Claim 8 and 16, Booth discloses the claimed invention except for the front surface being at an acute angle. Instead, Booth discloses Figs. 3-4 depicts the front wall curving at but silent to the angle. The Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would no perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Booth by causing the angle of the front surface to be acute. Applicant appears to have placed no criticality on any particular angle (see Specification wherein it is required simply that the angle be “generally acute”) and it appears that the device of Booth would work appropriately if made within the claimed range of angle.
Re: Claim 23, the first lateral portion and the second lateral portion each extend from the outer surface of the front wall, and wherein the outer surface of the front wall has some curvature at portion of the lateral portions except for expressly oriented at an angle relative to a vertical plane. However, the Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would no perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Booth by causing the lateral portions to be at an angle to the vertical plane. Applicant appears to have placed no criticality on any particular angle (see Specification wherein it is required simply that the angle be “generally acute”) and it appears that the device of Booth would work appropriately if made within the claimed range of angle.
Re: Claim 24, Booth discloses the claimed invention including the plurality of walls may be made out of any suitably rigid material except for the plurality of walls are constructed of a composite stone material. However, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date to include use a stone composite as material for construction, since Booth states in para. 58 any suitable material may be used, and further it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References cited on the PTO-892 show additional examples of sinks with exposed front faces.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES P. CHEYNEY whose telephone number is (571)272-9971. The examiner can normally be reached Monday - Friday, 8:00 am - 4:30 pm.
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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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/CHARLES P. CHEYNEY/Primary Examiner, Art Unit 3754
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