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.
Claims 8-10 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-14 of prior U.S. Patent No. 12,371,230. 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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,371,230 in view of Wilfong (US 4,981,216).
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) 1-7 and 11-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilfong (US 4,981,216).
Regarding claim 1, Wilfong discloses a film bag comprising: a front film layer (13); a rear film layer (14); a left side gusset (15) and a right side gusset (other side), each comprising a front side gusset part (front of 15) and a rear side gusset part (back of 15); wherein the front film layer and the rear film layer and the two side gussets are connected to one another at a bottom edge (17); and wherein the film bag is provided with a set of continuous suspension openings (at 20, 21), each comprising four perforation openings (20, 21) through the front film layer, the front side gusset part, the rear side gusset part and the rear film layer, so that the film bag is designed to be suspended from a set of carrier pegs (26); wherein the four perforation openings of each continuous suspension opening are provided as slits. See Figs. 1-17.
Wilfong discloses apertures (20) provided as slits in the front wall portion (13), the rear wall portion (14) and the front and rear sections of the gusseted side wall portions (15) of the bag 11 (Figs.1-17). Wilfong further discloses the apertures (20) of the front wall portion (13) and the front section of the gusseted side wall portions (15) have an additional cut (21) therein (Figs. 1-17), which meets the recitation "wherein the front slits of the front perforation openings in the front film layer are longer than the rear slits of the rear perforation openings in the rear film layer.”
Regarding claim 2, the front slits of the front perforation openings in the two front side gusset parts are longer than the rear slits of the rear perforation openings in the two rear side gusset parts, as Wilfong discloses the apertures (20) of the front wall portion (13) and the front section of the gusseted side wall portions (15) having an additional cut (21) therein (Figs. 1-17). See Figs. 1-5.
Regarding claim 3, the front slits of the front perforation openings in the front film layer are the same as the front slits of the front perforation openings in the two front side gusset parts, as Wilfong discloses the apertures (20) of the front wall portion (13) and the front section of the gusseted side wall portions (15) having an additional cut (21) therein (Figs. 1-17). See Figs. 1-5.
Regarding claim 4, the rear slits of the rear perforation openings in the two rear side gusset parts are the same as the rear slits of the rear perforation openings in the rear film layer. See Figs. 1-17
Regarding claim 5, the slits of the perforation openings extend as a straight line. See Figs. 1-12.
Regarding claim 6. The film bag as claimed in claim 1, wherein the slits of the perforation openings extend substantially horizontally. See Figs. 1-9.
Regarding claim 7, the angle between the slits of the perforation openings and the horizontal direction lies in a range from −10 to +10 degrees. See Figs. 1-9.
Regarding claim 11, a spot connection is provided between the front film layer and the front side gusset part. See Figs. 1, 9, 11 and 14.
Regarding claim 12, Wilfong discloses a method for producing a film bag (11) as claimed in claim 1 for use in a bundle on a set of carrier pegs (Figs. 4-16), comprising the steps: forming a film bag with side gussets from a tubular flexible film; introducing punch plates into the two side gussets from the outside; creating perforation openings as front slits in the front film layer and in the two front side gusset parts; and creating perforation openings as rear slits in the rear film layer and in the two rear side gusset parts. See Figs. 22-24.
Regarding claim 13, the perforation openings are created as horizontally extending straight slits. See Fig. 23.
Regarding claim 14, Wilfong discloses the front slits of the front perforation openings in the front film layer and in the two front side gusset parts are longer than the rear slits of the rear perforation openings in the rear film layer and in the two rear side gusset parts, as Wilfong discloses the apertures (20) of the front wall portion (13) and the front section of the gusseted side wall portions (15) having an additional cut (21) therein. See Figs. 1-17.
Regarding claim 15, Wilfong discloses the step of creating a spot connection between the front film layer and the two front side gusset parts.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK J BATTISTI whose telephone number is (571)270-5709. The examiner can normally be reached 9:00 am - 5:00 pm M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEREK J BATTISTI/Primary Examiner, Art Unit 3734
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