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
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.
**MPEP 804.01: The following are situations where the prohibition against nonstatutory double patenting rejections under 35 U.S.C. 121 does not apply:
(B) The claims of the application under examination and claims of the other application/patent are not consonant with the restriction requirement made by the examiner, since the claims have been changed in material respects from the claims at the time the requirement was made. For example, the divisional application filed includes additional claims not consonant in scope with the original claims subject to restriction in the parent. Symbol Technologies, Inc. v.Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991); Gerber Garment Technology, Inc. v. Lectra Systems, Inc., 916 F.2d 683, 16 USPQ2d 1436 (Fed. Cir. 1990). In order for consonance to exist, the line of demarcation between the independent and distinct inventions identified by the examiner in the requirement for restriction must be maintained. 916 F.2d at 688, 16 USPQ2d at 1440.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 11-16 of U.S. Patent No. 12268134. Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Regarding Claim 1, the ‘134 patent teaches a method of manufacturing a plant holder apparatus with integrated lighting fixture (Claim 1 lines 1-2), the method comprising:
forming a portable container capable of holding a plant (Claim 1 line 3), the container having at least one sidewall enclosing an interior space with an opening at a top of the container (Claim 1 lines 3-5), wherein the container, and the at least one sidewall of the container, are formed from a quantity of cast concrete (Claim 1 lines 5-7), wherein the at least one sidewall terminates at a rim of the container in a location proximate to the top of the container (Claim 1 lines 7-10), and wherein a top rim surface of the sidewall is positioned substantially horizontal (Claim 1 lines 10-11);
integrating at least one lighting device into at least a portion of the portable container (Claim 1 lines 12-13), wherein the at least one lighting device is capable of illuminating at least one of a central region above the container or an exterior surface of the sidewall of the container (Claim 1 lines 13-16);
supplying a quantity of electric power to the at least one lighting device (Claim 1 lines 17-18), the power supply having a solar power unit having a photovoltaic (PV) panel capable of generating an electric current from sunlight (Claim 1 lines 18-20) and a battery capable of storing electrical power generated from the PV panel (Claim 1 lines 20-22), wherein the solar power unit is positioned within the sidewall of the container proximate to the rim (Claim 1 lines 22-23), and wherein the PV panel is positioned fully recessed in a channel formed in the substantially horizontal top rim surface of the sidewall (Claim 1 lines 24-26), the channel being non-intersecting with an interior surface of the sidewall or the exterior surface of the sidewall (Claim 1 lines 26-28), wherein a planar face of the PV panel faces vertically outwards (Claim 1 lines 28-29), and wherein the planar face is located substantially coplanar with the substantially horizontal top rim surface of the sidewall (Claim 1 lines 29-32); and
activating the at least one lighting device, thereby illuminating a central region above the container (Claim 1 lines 12-15).
Regarding Claim 2, the ‘134 patent teaches the method of claim 1, wherein integrating the at least one lighting device into at least the portion of the container further comprises positioning the at least one lighting device on the interior surface of the sidewall of the container (Claim 2).
Regarding Claim 3, the ‘134 patent teaches the method of claim 1, wherein the at least one lighting device is positioned within a cavity formed within the interior surface of the sidewall (Claim 3).
Regarding Claim 4, the ‘134 patent teaches the method of claim 1, wherein the power supply further comprises at least one wire positioned within the sidewall of the container (Claim 5).
Regarding Claim 5, the ‘134 patent teaches the method of claim 1, further comprising directing a quantity of light upwards towards a central region above the container (Claim 1 lines 12-15).
Regarding Claim 6, the ‘134 patent teaches a method of manufacturing a cast concrete plant holder apparatus with integrated lighting fixture (Claim 11 lines 1-2), the method comprising:
forming a container from a quantity of cast concrete (claim 11 line 3), the container having at least one sidewall enclosing an interior space with an opening at a top of the container (claim 11 lines 5-7), wherein the at least one sidewall terminates at a rim of the container in a location proximate to the top of the container (claim 11 lines 9-11), and wherein a top rim surface of the sidewall is positioned substantially horizontal (claim 11 lines 12-13);
integrating at least two lighting devices into the at least one sidewall of the container (claim 11 lines 14-15);
supplying a quantity of electric power to the at least one of the at least two lighting devices (claim 11 lines 24-25), the power supply having a solar power unit having a photovoltaic (PV) panel capable of generating an electric current from sunlight (claim 11 lines 25-27) and a battery capable of storing electrical power generated from the PV panel (claim 11 lines 27-29), wherein the solar power unit is positioned within the sidewall of the container proximate to the rim (claim 11 lines 29-31), and wherein the PV panel is positioned fully recessed in a channel formed in the substantially horizontal top rim surface of the sidewall (claim 11 lines 31-33), the channel being non-intersecting with an interior surface of the sidewall or the exterior surface of the sidewall (claim 11 lines 33-35), wherein a planar face of the PV panel faces vertically outwards (claim 11 lines 35-36), wherein the planar face is positioned substantially coplanar with the substantially horizontal top rim surface of the sidewall (claim 11 lines 36-39); and
activating the at least one of the at least two lighting devices, thereby:
directing with a first of the at least two lighting devices, a quantity of light upwards towards a central region above the container, thereby illuminating a plant positionable within the container (claim 11 lines 15-19); and
directing, with a second of the at least two lighting devices, a quantity of light from the exterior surface of the sidewall of the container (claim 11 lines 19-23).
Regarding Claim 7, the ‘134 patent teaches the method of claim 6, wherein integrating the at least two lighting devices into the at least one sidewall of the container further comprises positioning the first of the at least two lighting devices on the interior surface of the sidewall of the container (Claim 12).
Regarding Claim 8, the ‘134 patent teaches the method of claim 6, wherein integrating the at least two lighting devices into the at least one sidewall of the container further comprises positioning the first of the at least two lighting devices within a cavity formed within the interior surface of the sidewall (Claim 13).
Regarding Claim 9, the ‘134 patent teaches the method of claim 6, wherein integrating the at least two lighting devices into the at least one sidewall of the container further comprises positioning the second of the at least two lighting devices into an aesthetic feature positioned on the exterior surface of the sidewall of the container, wherein the second of the at least two lighting device illuminates the aesthetic feature (Claim 14).
Regarding Claim 10, the ‘134 patent teaches the method of claim 9, wherein forming the container from the quantity of cast concrete further comprises casting the aesthetic feature at least partially into the at least one sidewall of the container when the cast concrete is cast (Claim 15).
Regarding Claim 11, the ‘134 patent teaches the method of claim 9, wherein the aesthetic feature is applied separately to the exterior surface of the sidewall of the container after the cast concrete is cast (Claim 16).
Regarding Claim 12, the ‘134 patent teaches the method of claim 6, wherein the at least two lighting devices are integrated into an aesthetic feature positioned on the exterior surface of the sidewall of the container, wherein the second of the at least two lighting devices illuminates the aesthetic feature (Claim 14).
Regarding Claim 13, the ‘134 patent teaches the method of claim 12, wherein the aesthetic feature is cast at least partially into the at least one sidewall of the container when the cast concrete is cast (Claim 15).
Regarding Claim 14, the ‘134 patent teaches the method of claim 12, wherein the aesthetic feature is applied separately to the exterior surface of the sidewall of the container after the cast concrete is cast (Claim 16).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. McRae (US 2018/0275330), Sanford Jr. (US 8974071), Canino et al. (US 2010/0141156), and Tabarelli De Fatis (US 2009/0034244) are considered relevant prior art as they pertain to similar planters with integrated lighting systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALANNA PETERSON whose telephone number is (571)272-6126. The examiner can normally be reached M-F 8-5 EST.
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/A.K.P./ Examiner, Art Unit 3642 /JOSHUA D HUSON/Supervisory Patent Examiner, Art Unit 3642