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 .
Election/Restrictions
Applicant’s election without traverse of Group II, Species I (claims 47-63) in the reply filed on 4/10/26 is acknowledged.
Claims 31-46 and 64-80 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 47-63 are 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.
In claims 47: the phrase “arranged to at least partly overlap” is confusing, since it is unclear what the term, “partly”, intends to encompass; and the phrase “and to not fully overlap” is confusing, since it is unclear what the term, “fully”, intends to encompass.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 47, 49, and 53-59 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Wimer (US 2009/0236035).
For claim 47, Wimer teaches an apparatus, comprising:
a first wall-forming member (10a) formed at least in part of biodegradable material comprising fiber webs (see [0025],[0021],[0006],[0018]); and
a second wall-forming member (10b) formed at least in part of the biodegradable material comprising fiber webs, the second wall-forming member arranged to at least partly overlap the first wall-forming member in a longitudinal direction, and to not fully overlap the first wall-forming member in a transverse direction,
wherein the first wall-forming member and the second wall-forming member are fixed to each other along a bonding line to delimit a plurality of pockets (10c) and a plurality of spacer areas (area where (16a) is located) in an alternating arrangement along the longitudinal direction such that a top side of each pocket is open with the first wall-forming member extending past the second wall-forming member in the transverse direction to facilitate insertion of at least one unrooted cutting from a plurality of unrooted cuttings, wherein the apparatus is configured to facilitate production, without use of a substrate, of a plurality of rooted cuttings from the plurality of unrooted cuttings in the plurality of pockets (see Figure 6C for example).
Furthermore, it is noted that the claim language uses functional language of “configured to”, so as long as the apparatus of Wimer has a plurality of pockets (10c) similar to those of Applicant’s, which it does, then it is configured to (or capable of) perform such function which is “to facilitate production, without use of a substrate, of a plurality of rooted cuttings from the plurality of unrooted cuttings in the plurality of pockets”.
For claim 49, Wimer teaches wherein the first wall-forming member (10a) and the second wall-forming member (10b) being fixed along the bonding line such that each portion of the second wall-forming member used in forming each pocket (10c) is spaced apart from each portion of the first wall-forming member used in forming each corresponding pocket (10c) (see Figure 6C).
For claim 53, Wimer teaches wherein the first wall-forming member and the second wall-forming member are fixed to each other along the bonding line (16a) by at least one of adhesively bonding, crimping, and stitching or sewing.
For claim 54, Wimer teaches wherein the first wall-forming member and the second wall-forming member are fixed to each other along the bonding line such that the top side of each pocket is open and a bottom side of each pocket is at least partially open (by holes (20), see Figure 6C).
For claim 55, Wimer teaches wherein the bonding line is a continuous bonding line, the first wall-forming member and the second wall-forming member being fixed to each other along the continuous bonding line (16a) such that the top side of each pocket (10c) is open, a bottom side of each pocket is closed, and a top side of each spacer area is closed (17) (see Figure 6C).
For claim 56, Wimer teaches wherein a bottom side of each spacer area is open (by holes (20), see Figure 6C, 6D).
For claim 57, Wimer teaches wherein the closed top side of each spacer area (17) is between the open top sides of a corresponding pair of pockets (10c)(see Figure 6C).
For claim 58, Wimer teaches wherein the biodegradable material comprising fiber webs further comprises paper fiber webs (see [0022]).
For claim 59, Wimer teaches wherein each spacer area comprises a perforation line running along the transverse direction (see [0009], [0014] for example).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 48, 50, and 60-63 are rejected under 35 U.S.C. 103 as being unpatentable over Wimer (US 2009/0236035).
For claim 48, as described above, Wimer discloses most of the claimed invention except for mentioning wherein, in the longitudinal direction, a length of each portion of the second wall-forming member used in forming each pocket exceeds a length of each portion of the first wall-forming member used in forming each corresponding pocket in a range of 1% to 30%.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Wimer so as to include wherein, in the longitudinal direction, a length of each portion of the second wall-forming member used in forming each pocket exceeds a length of each portion of the first wall-forming member used in forming each corresponding pocket in a range of 1% to 30%, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
For claim 50, as described above, Wimer discloses most of the claimed invention except for mentioning wherein a shape of each pocket is one of essentially rectangular and essentially square. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pocket of Wimer to whatever form or shape was desired or expedient, wherein applicant did not provide a reason or a stated problem is solved by having the specific shape as claimed versus the shape taught by the prior art. Note that a change in form or shape is generally recognized as being well known within the level to one of ordinary skill in the art depending on one’s intended use.
For claims 60 and 63, as described above, Wimer discloses most of the claimed invention except for mentioning wherein each of the first wall-forming member and the second wall-forming member has a tensile strength of at least 10.0 N/15 mm in the longitudinal direction and at least 7.0 N/15 mm in the transverse direction.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Wimer so as to include each of the first wall-forming member and the second wall-forming member has a tensile strength of at least 10.0 N/15 mm in the longitudinal direction and at least 7.0 N/15 mm in the transverse direction, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claims 61 and 63, as described above, Wimer discloses most of the claimed invention except for mentioning wherein each of the first wall-forming member and the second wall-forming member has an air permeability of at least 1100 1/m²s.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Wimer so as to include each of the first wall-forming member and the second wall-forming member has an air permeability of at least 1100 1/m²s, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
For claims 62 and 63, as described above, Wimer discloses most of the claimed invention except for mentioning wherein each of the first wall-forming member and the second wall-forming member has a liquid retaining capacity of at least about 100 g liquid per 100 g of biodegradable material dry weight.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the apparatus of Wimer so as to include each of the first wall-forming member and the second wall-forming member has a liquid retaining capacity of at least about 100 g liquid per 100 g of biodegradable material dry weight, since it has been held that where routine testing and general experimental conditions are present, discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claims 51 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Wimer (US 2009/0236035) in view of Greenbaum (US 3739522).
For claim 51, as described above, Wimer discloses most of the claimed invention except for mentioning wherein the top side of each pocket has an upper width and a bottom side of each pocket has a lower width different from the upper width of each pocket.
Greenbaum teaches that it is old and well known in the art to provide the top side of each pocket (130) has an upper width (124) and a bottom side of each pocket has a lower width (122) different from the upper width of each pocket.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pocket of Wimer so as to include the top side of each pocket has an upper width and a bottom side of each pocket has a lower width different from the upper width of each pocket, in a similar manner as taught in Greenbaum, since a change in form or shape is generally recognized as being well known within the level to one of ordinary skill in the art depending on one’s intended use.
For claim 52, Wimer as modified by Greenbaum (emphasis on Greenbaum) further teach wherein a top side of each spacer area has an upper width (126) and a bottom side of each spacer area has a lower width (area around (128)) different from the upper width of each spacer area.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 47-63 are rejected on the ground of nonstatutory double patenting over claims 1-30 of U. S. Patent No. 12,349,635 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “a first wall-forming member formed at least in part of biodegradable material comprising fiber webs; and a second wall-forming member formed at least in part of the biodegradable material comprising fiber webs, the second wall-forming member arranged to at least partly overlap the first wall-forming member in a longitudinal direction, and to not fully overlap the first wall-forming member in a transverse direction, wherein the first wall-forming member and the second wall-forming member are fixed to each other along a bonding line to delimit a plurality of pockets and a plurality of spacer areas in an alternating arrangement along the longitudinal direction such that a top side of each pocket is open with the first wall-forming member extending past the second wall-forming member in the transverse direction to facilitate insertion of at least one unrooted cutting from a plurality of unrooted cuttings, wherein the apparatus is configured to facilitate production, without use of a substrate, of a plurality of rooted cuttings from the plurality of unrooted cuttings in the plurality of pockets”.
Claims 47-63 are rejected on the ground of nonstatutory double patenting over claims 1-30 of U. S. Patent No. 12,520,771 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “a first wall-forming member formed at least in part of biodegradable material”, “a second wall-forming member formed at least in part of the biodegradable material”, “the second wall-forming member arranged to at least partly overlap the first wall-forming member in a longitudinal direction, and to not fully overlap the first wall-forming member in a transverse direction, wherein the first wall-forming member and the second wall-forming member are fixed to each other along a bonding line to delimit a plurality of pockets and a plurality of spacer areas in an alternating arrangement along the longitudinal direction such that a top side of each pocket is open with the first wall-forming member extending past the second wall-forming member in the transverse direction to facilitate insertion of at least one unrooted cutting from a plurality of unrooted cuttings”, “wherein the apparatus is configured to facilitate production, without use of a substrate, of a plurality of rooted cuttings from the plurality of unrooted cuttings in the plurality of pockets”.
Claims 47-63 are rejected on the ground of nonstatutory double patenting over claims 1-30 of U. S. Patent No. 12,349,635 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “a first wall-forming member formed at least in part of biodegradable material comprising fiber webs; and a second wall-forming member formed at least in part of the biodegradable material comprising fiber webs, the second wall-forming member arranged to at least partly overlap the first wall-forming member in a longitudinal direction, and to not fully overlap the first wall-forming member in a transverse direction, wherein the first wall-forming member and the second wall-forming member are fixed to each other along a bonding line to delimit a plurality of pockets and a plurality of spacer areas in an alternating arrangement along the longitudinal direction such that a top side of each pocket is open with the first wall-forming member extending past the second wall-forming member in the transverse direction to facilitate insertion of at least one unrooted cutting from a plurality of unrooted cuttings, wherein the apparatus is configured to facilitate production, without use of a substrate, of a plurality of rooted cuttings from the plurality of unrooted cuttings in the plurality of pockets”.
Claims 47-63 are rejected on the ground of nonstatutory double patenting over claims 31-60 of Application No. 19/415,272 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
The subject matter claimed in the instant application is fully disclosed in the patent and is covered by the patent since the patent and the application are claiming common subject matter, as follows: “the second wall-forming member arranged to at least partly overlap the first wall-forming member in a longitudinal direction, and to not fully overlap the first wall-forming member in a transverse direction, wherein the first wall-forming member and the second wall-forming member are fixed to each other along a bonding line to delimit a plurality of pockets and a plurality of spacer areas in an alternating arrangement along the longitudinal direction such that a top side of each pocket is open with the first wall-forming member extending past the second wall-forming member in the transverse direction to facilitate insertion of at least one unrooted cutting from a plurality of unrooted cuttings”, “wherein the apparatus is configured to facilitate production, without use of a substrate, of a plurality of rooted cuttings from the plurality of unrooted cuttings in the plurality of pockets”.
Furthermore, there is no apparent reason why applicant was prevented from presenting claims corresponding to those of the instant application during prosecution of the application which matured into a patent. See In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968). See also MPEP § 804.
Conclusion
Note, although the examiner recites certain excerpts for the prior art, MPEP 2141.02 VI states “PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS”.
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/TRINH T NGUYEN/Primary Examiner, Art Unit 3644
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