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 .
Applicant's submission filed on 4/9/26 has been entered. Claims 1-20 are canceled and new claims 21-40 are pending examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 29 and 30 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “rough surface” in claim 29 is a relative term which renders the claim indefinite. The term “rough” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no threshold articulated for determining what surfaces are considered rough versus not rough. Is it inclusive of any surface above atomically flat, or requisite of exhibiting a particular abrasive grit or RMS roughness threshold value? For purposes of examination “rough surface” will be interpreted as at least inclusive of any such scenario.
The term “smooth surface” in claim 30 is a relative term which renders the claim indefinite. The term “smooth” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. There is no threshold articulated for determining what surfaces are considered smooth versus not smooth. Is it only inclusive of an atomically flat surface, or requisite of exhibiting a particular abrasive grit or RMS roughness / smoothness threshold value? For purposes of examination “smooth surface” will be interpreted as at least inclusive of any such scenario.
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.
Claims 21-25, 31, 33-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,383,927. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 21: refer to claim 1 of US 12,383,927 wherein adding is achieved by loading, and the chamber is the container.
Claim 22: refer to claim 2
Claim 23: refer to claim 3
Claim 24: refer to claim 4
Claim 25: refer to claim 5
Claim 31: refer to claim 6
Claim 33: refer to claim 12
Claim 34: refer to claim 13
Claim 35: refer to claim 15
Claim 36: refer to claim 19 wherein adding is achieved by loading, and the chamber is the container.
Claims 27 and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,383,927 in view of Arneson et al (BR8506568; citations directed to machine translation provided herein; hereafter Arneson).
Claims 27 and 38: Claim 1 /19 of US 12,383,927 refers to insertion of articles (sports balls) into a chamber for the articles to receive treatment via agitation in a treatment medium, it is silent as to further details thereof, so it does not explicitly teach it as a bag. Arneson similarly teaches a method of treating articles by loading said articles into a chamber with treatment medium (see, for example, figures, pg 1-4). Arneson further teaches wherein a bag serves predictably to contain both the article and treatment medium during periods of agitation to effectively treat the articles therein (see, for example, pg 4, 10-11. Fig 1, Fig 17). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a bag as the chamber / container since a bag is known to act predictably to contain both articles and treatment medium during periods of agitation to effectively treat the articles therein, and since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
Claims 26 and 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,383,927 in view of Arneson as applied to claims 27 and 38 above, and further in view of Rusert et al (US2002/0021844; hereafter Rusert).
Claims 26 and 37: The combination of claims 1-19 of US 12,383,927 and Arneson have taught wherein the container is bag (see rejection of claims 27 and 38 above), but it does not explicitly teach the bag comprises a zip seal. Rusert teaches a method of manufacturing bags, and further teaches bags suitable for containing baseballs (See, for example, abstract, [0062]). Rusert further teaches wherein zip lock seals are well known and suitable means for bag closure (see, for example, [0021]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a zip seal for the bag as such a sealing means is well known and conventional in the art to achieve bag closure and as one of ordinary skill would readily appreciate that zip seal closures possess the ability to be reopened and resealed repeatedly to achieve the intended function of treatment as desired.
Claims 28-30 and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,383,927 in view of Arneson as applied to claims 27 and 38 above, and further in view of Taylor (US 2010/0199451; hereafter Taylor).
Claims 28 and 39: The combination of claims 1-19 of US 12,383,927 and Arneson have taught wherein the container is bag (see rejection of claims 27 and 38 above), but it does not explicitly teach the bag comprises leather. Taylor teaches a method of manufacturing bags, and further teaches bags suitable for containing and treating sports balls (such as golf balls) (See, for example, abstract, figures). Taylor further teaches wherein the bag is formed from leather as it possesses requisite durability and further can comprise bumps for more grip (See, for example, abstract [0013], [0027]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a bag comprising leather as such a material is well known and conventional in the art to achieve bag suitable for containing sporting balls and further providing enhanced durability and grip.
Claim 29-30: refer to claim 28, and further per the interpretation of claims 29-30, as no finite threshold for rough / smooth has been established, the particular RMS roughness / smoothness requisite to be considered rough/ smooth as claimed would be interpreted as the that of the interior material of the bag of claim 28.
Claim 40: Refer to the rejection of claim 38 above, wherein Taylor teaches the bag 12 is leather (see, for example, abstract, [0009], Figures). As the leather bag 12 comprises both an exterior surface and an interior surface, the inner surface of the container comprises leather.
Claim 32 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,383,927 in view of Egerton (US 2015/0297956; hereafter Egerton).
Claim 32: Claim 1 of US 12,383,927 teaches agitation of the chamber, but is silent as to the particular mode of agitation, therefore it does not explicitly teach shaking. Egerton is directed to a method of treating sport balls within an agitated container (See, for example, abstract). Egerton further teaches wherein the agitation during treatment is predictable achieved via shaking (See, for example, [0008], [0020], [0029]). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated agitation via shaking since shaking of a container during of sports balls is well known and predictable to achieve surface treatment of the balls therein, and since when a primary reference is silent as to a certain detail, one of ordinary skill would be motivated to consult a secondary reference which satisfies the deficiencies of the primary reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/ Primary Examiner, Art Unit 1712
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