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 base (21)d 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 base (21)d 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-base (21)d 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 1-24, are rejected on the ground of nonstatutory double patenting as being unpatentable over issued claims of U.S. Patent No. 12,291,003. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued parent appears to defined all of the current claimed applications structure.
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- 3, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SEKIGUCHI HIROKI, Published as: (JP H08230862A) HEAT-INSULATIVE PAPER CUP CONTAINER. (copy supplied by applicant, 6 pages on 06/12/26)
With respect to claim 1, Sekiguchi Hiroki shows a method of forming a container (10) for containing a fluid, comprising; obtaining a base (21) container having an inner side wall (12), the inner side wall (12) extending at least partially around an interior that defines an interior volume of the container; forming a plurality of annular bands (13&15) on the inner side wall (12) of the base (21) container; the forming the plurality of annular bands (13&15) comprises applying a first layer (13) of material to the inner side wall (12) and a second layer (15) of material to the first layer (13) of material; obtaining an outer sleeve (16); attaching the outer sleeve (16) to the inner side wall (12) to form a sidewall construct (11) of the container with insulating features (the space and layers are a feature) defined between the inner side wall (12) and the outer sleeve (16).
With respect to claim 2, Sekiguchi Hiroki shows wherein the attaching the outer sleeve (16) comprises pressing the outer sleeve (16) against the plurality of annular bands (13&15) to adhesively secure the outer sleeve (16) to the inner side wall.
With respect to claim 3, Sekiguchi Hiroki shows wherein the insulating features comprise a cavity (14) between the inner side wall (12) and the outer sleeve (16), the plurality of annular bands (13&15), and a plurality of pockets (14 are voids or pockets) in the cavity (14) formed between adjacent annular bands, the insulating features are for maintaining a desired temperature of the fluid in the interior volume of the container.
Allowable Subject Matter
Claims 8-24 allowed.
Claims 4-7, are 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.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements (double patenting) or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN M BRADEN whose telephone number is (571)272-8026. The examiner can normally be reached M-F 8am-5pm.
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, Orlando E Aviles-Bosques can be reached at 571 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAWN M BRADEN/ Primary Examiner, Art Unit 3736
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