DETAILED ACTION
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,612,264. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed subject matter found in claim 1 of the instant application is found in claim 1 of U.S. Patent No. 11,612,264.
Claim 1 is additionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,085,582. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the subject matter of claim 1 of the instant application is found in claim 1 of U.S. Patent No. 10,085,582.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “said second C-shaped ring comprising a second extension to form a second” This appears to be a typographic error and should read “said second C-shaped ring comprising a second extension to form a second G-shaped ring”. Appropriate correction is required.
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 1 is rejected under 35 U.S.C. 102a1 as being anticipated by MacFarlane et al. (US 4,015,310) (hereinafter MacFarlane).
Regarding claim 1, MacFarlane discloses an article of manufacture, comprising: a curtain (Figure 1, considered assembled combination of elements including at least 16, 18, 20, 36, 38, 40, 30, 32, 34); said curtain comprising a first opening and a second opening (Figure 1, considered “opening” in element 18 in which elements 10 and 12 are received, Examiner notes that multiple element 18 are required for functionality of the curtain, and therefore at least a first and second opening are provided); said first opening comprising a first C-shaped ring (Figure 1, element 18); said second opening comprising a second C-shaped ring (Figure 1, element 18); said first opening and said second opening being in communication such that there is an open path in said curtain between said first opening and said second opening (See Figure 1, Examiner notes that openings in multiple element 18 are aligned along elements 10 and 12 such that an “open path” is provided); said first C-shaped ring comprising a first extension (Figure 1, element 16) to form a first G- shaped ring, and said second C-shaped ring comprising a second extension to form a second G-shaped ring (Figure 1, element 16).
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Zahner (US 6,866,082) in view of Palmer (US 3,881,218)
Regarding claim 1, Zahner discloses an article of manufacture, comprising: a curtain (See Abstract); said curtain comprising a first opening and a second opening (Figure 1, elements 6 and 8); said first opening comprising a first C-shaped ring (Figures 9A-9B, elements 60 and 62 are considered to be C-shaped due to “slit” (element 26)); said second opening comprising a second C-shaped ring (Figures 9A-9B, elements 60 and 62 are considered to be C-shaped due to “slit” (element 26). Examiner notes that each of elements 6 and 8 would receive interlocking rings 60 and 62 in an assembled state); said first opening and said second opening being in communication such that there is an open path (Figure 1, element 7) in said curtain between said first opening and said second opening. Zahner lacks wherein said first C-shaped ring comprises a first extension to form a first G- shaped ring, and said second C-shaped ring comprises a second extension to form a second G-shaped ring.
Palmer, however, teaches that it is known in the art to configure an article of manufacture, comprising: a curtain (See Abstract); said curtain comprising a first C-shaped ring (Figure 1, element 28, column 3, lines 24-26, “The portion 28 of the component 25 extends in the shape of a "C" around the front of the rail 10 to simulate the curtain rings of an old curtain suspension arrangement”) comprising a first extension to form a first G- shaped ring (Figure 1, elements 26 and 27), and said second C-shaped ring (Figure 1, element 28) comprising a second extension to form a second G-shaped ring (Figure 1, elements 26 and 27). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the curtain system of Zahner such that the first and second curtain rings of Zahner feature an extension to convert the first and second C-shaped rings of Zahner into first and second G- shaped rings, as taught by Palmer, since a G-shaped ring of this nature would feature an engagement element (i.e. elements 26 and 27) for engaging directly with the support rail. This would be found desirable to various users, since a sliding engagement feature of this nature would provide increased functionality with improved stability, as the sliding engagement structure between the ring and rail would serve as an anti-rotation feature while also preventing unintended disengagement between the ring and rail, which would be found desirable to various consumers. Additionally, all the claimed elements were known in the prior art as evidenced above, and one of ordinary skill in the art could have combined the elements as claimed, or substituted one known element for another, using known methods with no change in their respective functions. Such a combination or substitution would have yielded predictable results to one of ordinary skill in the art at the time the invention was made, since the elements perform as expected and thus the results would be expected. MPEP 2143
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN B REPHANN whose telephone number is (571)270-7318. The examiner can normally be reached Monday-Friday 8:00am-4:30pm.
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/JUSTIN B REPHANN/Examiner, Art Unit 3634
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