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 .
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.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-6 of U.S. Patent No. 12,371,227. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of ‘227 are more specific than the broader claims of the instant application. The claims of ‘227 include all the structure of the current claims plus additional structure. The corresponding claims from ‘227 that read on the claims from the instant application are as follows:
claims 19/250,450
are anticipated by claims of 12,371,221
1
1
2
1
3
1, 2
4
1,6
5
1, 2
6
1
7
1, 3, 4
8
1, 3, 5
9
1
10
1, 3
11
1
12
1
13
1, 6
14
1, 3, 5
15
1, 3, 5
16
1, 3
17
1
Claim Objections
Claim 12 is objected to because of the following informalities:
claim 12 has a typo: “a strap channels”
Appropriate correction is required.
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 15 and 16 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.
Regarding claim 15, it is not clear if applicant intends to claim that the recess is capable of holding all three accessories because of the word “and” or intends the claim to mean that the recess is capable of retaining one of a bottle opener, a beverage holder, or a container.
Regarding claim 16, claim 1 recites “… an upper surface of each said base is substantially flush with said lid…” claim 16 depends from claim 10 which depends from claim 1 and recites, “an upper surface of said latch base is substantially flush with an exterior surface of said lid.” With this in mind, claim 16 is indefinite.
First, an upper surface is already introduced in claim 1, then another upper surface is introduced in claim 16, and For the purposes of examination, is interpreted as a typo and should be “the” upper surface.
Second, although claim 1 does not recite what specific aspect of the lid that upper surface of the latch base is flush with, it is inherent that the upper portion of the base must be flush with an external surface of the lid, as no other interpretation would make sense. What, other than an external surface of the lid, would the upper portion of the base be flush with? With this in mind, claim 16 is redundant and does not provide any further structure beyond claim 1 and should be canceled or amended to depend from claim 11 if the dependency from claim 10 is a typographical error.
Claim Rejections - 35 USC § 102
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.
Claim(s) 11-15 and 17 are rejected under 35 U.S.C. 35 U.S.C. 102(a)(1) as being anticipated by Holderness et al. (US 2015/0375918).
Regarding claim 11, Holderness discloses a cooler, comprising, fig. 5:
a base 12 and a lid 14 connected to said base at 34;
said base having a bottom and a plurality of sides extending upwardly from said bottom to define an interior basin 16 of said base;
said lid and said base connected by a hinge 34 along one side of said plurality of sides;
at least a first aperture and a second aperture in said lid (within protrusions 48, there is an aperture) on a side of said plurality of sides that is opposite from said hinge, fig. 5 and 6, [0022]
a first lid latch 40 extending through said first aperture and a second lid latch 40 extending through said second aperture;
each of said first lid latch and said second lid latch comprising a latch base (portion of the lid latch held by anchor member 48) and a latch strap;
wherein as seen in fig. 5, each said latch strap extends through a respective said aperture and each said base is retained in a respective said aperture, see annotated fig. 5;
a catch (cleat at 46) disposed on a front surface of said base beneath each of said first aperture and said second aperture;
wherein a latch aperture (not numbered but mounted over the cleat at 46 as seen in fig. 5, [0022]) in each of said first lid latch and said second lid latch is configured to engage said catch to retain said lid in a closed position.
Regarding claim 12, Holderness discloses a strap channels 58 on said lid to locate straps of an accessory, fig. 5, [0024].
Regarding claim 13, neither the straps nor the accessory of claim 12 are positively claimed, only that the channels locate straps. With this in mind, further defining the accessory as a cushion is interpreted as intended use. The strap channels of Holderness are capable of locating straps that may be attached to a cushion.
Regarding claim 14, Holderness discloses a recess in the base at 66, that is capable of retaining one or more accessories (a tie down strap, [0026]).
Regarding claim 15, claim 14 recites that the base recess is capable of retaining one or more accessories. With this in mind, the accessories are not positively claimed, they are introduced as the intended use of the base recess. As seen in fig. 3 of Holderness, a strap 68 can be inserted into the recess 66 and enter the passageway 70, any accessory including a bottle opener, a beverage holder, or a container can be attached to the strap such that the recess is capable of holding an accessory with a bottle opener, a beverage holder, or a container.
Regarding claim 17, Holderness further discloses lid grips, two bosses extending from a front of the lid, see annotated fig. 5, each of said aperture extending through a respective said lid grip.
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Allowable Subject Matter
Claims 1-10 and 16 are rejected by nonstatutory double patenting, but would be allowable with a properly filed terminal disclaimer.
Claim 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: claim 1 includes the limitations of previously allowed claims of the parent. No further prior art teaching the claimed latches was discovered upon further search and consideration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOLLIE L IMPINK whose telephone number is (571)270-1705. The examiner can normally be reached Monday-Friday (7:30-3:30).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOLLIE IMPINK/Primary Examiner, Art Unit 3799
MOLLIE LLEWELLYN IMPINK
Primary Examiner
Art Unit 3799
Prosecution Insights