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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 1 recites:
Claim 1: A wallet, comprising: a top plate having a top-plate back, a top-plate front, and top-plate sides, and being characterized by a top-plate thickness; the top plate comprising a top-band recess of reduced thickness and a cutout along the top-plate back that forms paired top tabs adjacent each top-plate side; wherein the top-plate thickness of the paired top tabs is tapered toward the top-plate back to form a top inner inclined surface that is thinnest at the top-plate back; a bottom plate having a bottom-plate back, a bottom-plate front, and bottom-plate sides, and being characterized by a bottom-plate thickness; the bottom plate comprising a bottom-band recess of reduced thickness and a cutout along the bottom-plate back that forms paired bottom tabs adjacent each bottom-plate side; wherein the bottom-plate thickness of the paired bottom tabs is tapered toward the bottom-plate back to form a bottom inner inclined surface that is thinnest at the bottom-plate back; and an elastic band that is disposed around the top plate and the bottom plate, in the top-band recess and the bottom-band recess, wherein the elastic band biases the top plate and the bottom plate toward each other; wherein the top inner inclined surface and the bottom inner inclined surface face each other and are configured such that opposing forces applied normally to the paired top tabs and the paired bottom tabs cause the top plate and the bottom plate to pivot relative to each other, increasing a separation between the top-plate front and the bottom-plate front.
While Patent Application No. 19/183,572 Claim 1 requires:
Claim 1: An assembly comprising: a carry bag having an exterior surface; a cut-out panel having a front surface and a rear surface; a mounting system that joins said cut-out panel to said carry bag, wherein said mounting system includes a first mounting strap connected to said carry bag, therein forming a first loop, and a second mounting strap connected to said rear surface of said cut-out panel, therein forming a second loop, wherein said first loop is interlinked with said second loop and enables said cut-out panel to move through a range of motion relative to said carry bag while remaining attached to said carry bag, and wherein at least some of said cut-out panel covers at least some of said exterior surface of said carry bag at some positions within said range of motion.
This is an obviousness-type double patenting rejection.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 2 recites:
Claim 2: wherein said cut-out panel is configured as a character.
While Patent Application No. 19/183,572 Claim 2 requires:
Claim 2: wherein said cut-out panel is configured as a character.
This is an obviousness-type double patenting rejection.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 4 recites:
Claim 4: wherein said range of motion enables at least some of said cut-out panel to extend out of said pocket.
While Patent Application No. 19/183,572 Claim 3 requires:
Claim 3: wherein said range of motion enables at least some of said cut-out panel to extend out of said pocket.
This is an obviousness-type double patenting rejection.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 5 recites:
Claim 5: wherein said range of motion enables all of said cut-out panel to be moved into said pocket.
While Patent Application No. 19/183,572 Claim 4 requires:
Claim 4: wherein said range of motion enables all of said cut-out panel to be moved into said pocket.
This is an obviousness-type double patenting rejection.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 6 recites:
Claim 6: wherein said pocket has a closure for sealing said cut-out panel into said pocket.
While Patent Application No. 19/183,572 Claim 5 requires:
Claim 5: wherein said pocket has a closure for sealing said cut-out panel into said pocket.
This is an obviousness-type double patenting rejection.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 10 recites:
Claim 10: An assembly comprising: a carry bag having an exterior surface; a pocket extension extending from said carry bag, wherein said pocket extension has an interior surface and an access opening; a cut-out panel having a front surface and a rear surface; a mounting system that joins said cut-out panel to said interior surface of said pocket extension, wherein said mounting system includes a slot formed in said interior surface of said pocket extension and a mechanical connector that extends from said cut-out panel and engages said slot, therein joining said cut-out panel to said interior surface of said pocket extension and enabling said cut-out panel to move through a range of motion relative said pocket extension, wherein at least some of said cut- out panel extends out of said pocket extension through said access opening when moved through said range of motion.
While Patent Application No. 19/183,572 Claim 8 requires:
Claim 8: An assembly comprising: a carry bag having an exterior surface; a pocket extension extending from said carry bag, wherein said pocket extension has an interior surface, an access opening and an internal slot; a cut-out panel having a front surface, a rear surface and an extension; wherein said internal slot receives said extension and joins said cut-out panel to said interior surface of said pocket extension, wherein said internal slot enables said cut-out panel to move through a range of motion relative said pocket extension, wherein at least some of said cut- out panel extends out of said pocket extension through said access opening when moved through said range of motion.
This is an obviousness-type double patenting rejection.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 11 recites:
Claim 11: wherein said cut-out panel is configured as a character with a theme.
While Patent Application No. 19/183,572 Claim 9 requires:
Claim 9: wherein said cut-out panel is configured as a character with a theme.
This is an obviousness-type double patenting rejection.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 12 recites:
Claim 12: wherein said exterior surface of said carry bag contains graphics in said theme.
While Patent Application No. 19/183,572 Claim 10 requires:
Claim 10: wherein said exterior surface of said carry bag contains graphics in said theme.
This is an obviousness-type double patenting rejection.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 13 recites:
Claim 13: wherein said range of motion enables all of said cut-out panel to be moved into said pocket.
While Patent Application No. 19/183,572 Claim 10 requires:
Claim 11: wherein said range of motion enables all of said cut-out panel to be moved into said pocket extension.
This is an obviousness-type double patenting rejection.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. U.S. Patent No. 12290154 B2.
Here U.S. Patent No. 12290154 B2 claim 14 recites:
Claim 14: wherein said pocket has a closure on said access opening for sealing said cut-out panel into said pocket extension.
While Patent Application No. 19/183,572 Claim 10 requires:
Claim 12: wherein said pocket extension has a closure on said access opening for sealing said cut-out panel into said pocket extension.
This is an obviousness-type double patenting rejection.
Allowable Subject Matter
Claim 1-13 would be allowable if rewritten or amended to overcome the double patenting rejections, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: .
Regarding Claim 1, Thorne et al. (US 5803331 A), in view of Educational Insights (https://www.amazon.com/Educational-Insights-PaperCraft-Boutique-Fashion/dp/B08WJJPR52), is considered the most relevant prior art of record. The prior art of record does not teach:
An assembly comprising: a carry bag having an exterior surface, wherein a pocket is disposed on said exterior surface; an elongated slot disposed within said pocket; a cut-out panel having a front surface and a rear surface, wherein a connector extends from said cut-out panel and engages said slot, therein joining said cut-out panel to said carry bag and enables said cut-out panel to move through a range of motion relative to said carry bag while remaining attached to said carry bag, wherein at least some of said cut-out panel covers at least some of said exterior surface of said carry bag at some positions within said range of motion.
Since the prior art of record does not teach wherein a connector extends from said cut-out panel and engages said slot, therein joining said cut-out panel to said carry bag and enables said cut-out panel to move through a range of motion relative to said carry bag while remaining attached to said carry bag, the prior art does not anticipate the claimed subject matter. Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Regarding Claim 8, Thorne et al. (US 5803331 A), in view of Educational Insights (https://www.amazon.com/Educational-Insights-PaperCraft-Boutique-Fashion/dp/B08WJJPR52), is considered the most relevant prior art of record. The prior art of record does not teach:
An assembly comprising: a carry bag having an exterior surface; a pocket extension extending from said carry bag, wherein said pocket extension has an interior surface, an access opening and an internal slot; a cut-out panel having a front surface, a rear surface and an extension; wherein said internal slot receives said extension and joins said cut-out panel to said interior surface of said pocket extension, wherein said internal slot enables said cut-out panel to move through a range of motion relative said pocket extension, wherein at least some of said cut- out panel extends out of said pocket extension through said access opening when moved through said range of motion.
Since the prior art of record does not teach wherein a connector extends from said cut-out panel and engages said slot, therein joining said cut-out panel to said carry bag and enables said cut-out panel to move through a range of motion relative to said carry bag while remaining attached to said carry bag, the prior art does not anticipate the claimed subject matter. Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Levy (GB 2570720 A), teaches a carrying system.
Smith (GB 2504296 A), teaches a bag with a pocket.
Mohammad et al. (US 20120205408 A1), teaches a multi-purpose article carrier.
Baumann (US 20180263311 A1), teaches a combination hand muff.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R CAUDILL whose telephone number is (303)297-4349. The examiner can normally be reached on Monday-Friday 8:30-5:30 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NATHAN JENNESS can be reached on (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN CAUDILL/Examiner, Art Unit 3733
/NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733
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