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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 10-14 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,787,326 (the ‘326 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claims 1-5, 10-14 and 19-20 are recited by, inherent to and/or obvious in view of claims 1-20 of the ‘326 patent.
Regarding claim 1, claim 2 of the ‘326 patent recites a first fresh oil tank containing a volume of oil at a first facility (the fourth tank recited in claim 2), a second fresh oil tank located at a second facility having at least 2 kitchens each having a fryer which can receive at least a portion of the oil from the first tank (the second fresh oil tank of claim 1; inherent that the tank is adapted to receive oil from the first tank); and a third fresh oil tank associated with a portable device at the second facility and adapted to receive a second volume of oil being less than the at least a portion of the volume of oil from the first tank from the second tank (the third fresh oil tank of claim 1 which can receive a second volume of oil less than the portion of oil from the second).
Regarding claim 2, claim 2 of the ‘326 includes piping is included for transferring the oil.
Regarding claim 3, claim 2 of the ‘326 includes an intermediary tank is used for transferring the oil (first fresh oil tank associated with a vehicle).
Regarding claim 4, claim 2 of the ‘326 includes transferring the oil via an over the road vehicle (recited in claim 1).
Regarding claim 5, claim 2 of the ‘326 includes the second fresh oil tank associated with an over the road vehicle prior to being located at the second facility (as the over the road vehicle is used for transferring oil to the second tank, the two are “associated” prior to being located at the second facility).
Regarding claim 10, claim 2 of the ‘326 recites a first fresh oil tank containing a volume of oil at a first facility (the fourth tank recited in claim 2), an over the road vehicle adapted to transfer a second quantity of oil to a second fresh oil tank located at a second facility having at least 2 kitchens each having a fryer which can receive at least a portion of the oil from the first tank (recited in claim 1; inherent that the tank is adapted to receive oil from the first tank); and a third fresh oil tank associated with a portable device at the second facility and adapted to receive a second volume of oil being less than the at least a portion of the volume of oil from the first tank from the second tank (the third fresh oil tank of claim 1 which can receive a second volume of oil less than the portion of oil from the second and can move between kitchens).
Regarding claims 11-12, the claim 2 of the ‘326 patent does not specify the second quantity of oil is less than the first and the third is less than the second. However, there are only 2 possibilities in each case (the quantities are the same or one is larger than the other). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the second quantity of oil less than the first and the third is less than the second as such a change requires only selecting one of a small number of identified and predictable solutions. As the oil is being moved from a production or storage facility to a location having multiple kitchens and finally to each individual kitchen, one of ordinary skill in the art would recognize the need for decreasing the quantity of oil being transferred.
Regarding claim 13, claim 2 of the ‘326 patent includes the second tank contains the second quantity of oil (the oil being transferred by the tank of the vehicle) when the vehicle is transferring the oil to the second facility (inherent to the use of the system of claim 2).
Regarding claim 14, claim 2 of the ‘326 the second fresh oil tank is located at the second facility during transfer of the second quantity of oil (inherent to the use of the system of claim 2).
Regarding claims 19-20, all of the limitations are recited by or inherent to claim 2 of the ‘326 patent for the same reasons set forth regarding claims 1 and 10.
Claims 1, 6-10, and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,330,547 (the ‘547 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of claims 1, 6-10, and 15-20 are recited by or inherent to claims 1-20 of the ‘547 patent. Therefore, in making or using the system of claim 1-20 of the ‘547 patent, one of ordinary skill in the art would likewise make or use the method of claims 1, 6-10, and 15-20. Claims 1, 10 and 19-20 are anticipated by claim 1 of the ‘547 patent. Claims 6-9 and 15-18 are anticipated by claims 2, 3, 7, and 8 of the ‘547 patent, respectively.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of the ‘326 patent in view of US Patent Application Publication 2002/0048503 to Fukushima (Fukushima) and separately, over claim 1 of the ‘547 patent in view of Fukushima. Regarding claim 21, neither claim 2 of the ‘326 patent or claim 1 of the ‘547 patent recite the portable receptacle propelled by a powered propulsion system. However, Fukushima teaches a portable receptacle propelled by a powered propulsion system (see [0020]) as an alternative to manually moving the portable receptacle. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified claim 2 of the ‘326 patent and separately, claim 1 of the ‘547 patent such that the portable receptacle is propelled by a powered propulsion system as taught by Fukushima such that the portable receptacle does not need to be manually pushed between kitchens.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure and claimed invention. US Patent 5,964,258 and US Patent 5,249,511 disclose cooking oil distribution systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLAS A ARNETT whose telephone number is (571)270-5062. The examiner can normally be reached on M- F, 8AM - 3PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth Rinehart can be reached on 571-272-4881. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLAS A ARNETT/Primary Examiner, Art Unit 3753 August 19, 2026
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