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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,089,733 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
The reissue declaration submitted May 2, 2025 is acceptable.
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 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/987,217 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the method of the ‘217 application requires the apparatus claimed in this application and the apparatus of claim 10 can only perform the method claimed in the ‘217 application’s claim 10. It is noted that the ‘217 claim 10 was restricted from apparatus claims in the parent application (17/946,444). As stated in the restriction (10/08/2024), “the method in claim 21 can be practiced with another materially different product, such as a net wrap removal device that does not include a three-point mount, a net wrap pickup roller with a plurality of rubber fingers, a frame with first and second legs or a first arm and a second arm.” The current claim 10 does not claim the three point mount, the plurality of rubber fingers or the second arm or leg. Such broadening makes current claim 10 no longer patentably distinct from claim 10 of the ‘217 application. Claim 10 claims only the structure required to implement the method of the ‘217, the net wrap spool, the net wrap pickup roller and the ability to move the net wrap roller away from the hale bale so that the net wrap engages the net wrap recovery spool so the net wrap is removed from the bale onto the storage spool.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. RE50,454. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims claim the same invention but are broader than the claims of the ‘454 reissue. The new claims do not claim the plurality of rubber fingers on the pickup roller. The new broader claims would dominate the earlier patented claims. To avoid this and to avoid the possibility of licensing the same invention to different parties who are unaware of the other set of claims, a terminal disclaimer is proper.
Allowable Subject Matter
Claims 10-20 would be allowable with the submission of a terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach a net wrap removal device comprising collecting a net wrap with a pickup roller configured for moving the pickup roller away from the hay bale so the wrap engages a wrap recovery storage spool and then removing the wrap with the recovery storage spool. WO 2015/091377 shows a system for removing wrapping from hay bales that uses support parts 106 with pins 107 to remove the wrapping, but the wrapping is stored on the support parts and not on a separate recovery spool.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Marom (US 5,318,399) shows a system for removing wrapping from bales. But similar to WO’377 it does not use a recovery spool for the removed wrapping.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM C DOERRLER whose telephone number is (571)272-4807. The examiner can normally be reached M-F, 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached at (571) 272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C DOERRLER/Reexamination Specialist, Art Unit 3993
Conferees: /WILLIAM E DONDERO/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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