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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 14, 15, 18, 30 and 31 of U.S. Patent No. 12,383,494. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Patent ‘494 (claim 1) discloses the claimed subject matter.
Regarding claim 2, Patent ‘494 (claim 2) discloses the claimed subject matter.
Regarding claim 3, Patent ‘494 (claim 4) discloses the claimed subject matter.
Regarding claim 4, Patent ‘494 (claim 1) discloses the claimed subject matter.
Regarding claim 5, Patent ‘494 (claim 14) discloses the claimed subject matter.
Regarding claim 6, Patent ‘494 (claim 15) discloses the claimed subject matter.
Regarding claim 7, Patent ‘494 (claim 30) discloses the claimed subject matter.
Regarding claim 8, Patent ‘494 (claim 31) discloses the claimed subject matter.
Regarding claim 9, Patent ‘494 (claim 18) discloses the claimed subject matter.
Regarding claims 10-11, Patent ‘494 (claim 18) discloses the claimed subject matter except for the curved sections. However, 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 the side wall sections to be curved in order to accommodate contents of a certain shape. To modify the sidewall sections as claimed would entail a mere change in shape of the sidewall sections and yield only predictable results. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 12, Patent ‘494 (claim 1) discloses the claimed subject matter.
Regarding claim 13, Patent ‘494 (claim 14) discloses the claimed subject matter.
Regarding claim 14, Patent ‘494 (claim 15) discloses the claimed subject matter.
Regarding claim 15, Patent ‘494 (claim 30) discloses the claimed subject matter.
Regarding claim 16, Patent ‘494 (claim 31) discloses the claimed subject matter.
Regarding claim 17, Patent ‘494 (claim 1) discloses the claimed subject matter.
Regarding claim 18, Patent ‘494 (claim 14) discloses the claimed subject matter.
Regarding claim 19, Patent ‘494 (claim 15) discloses the claimed subject matter.
Regarding claim 20, Patent ‘494 (claim 1) discloses the claimed subject matter.
Allowable Subject Matter
Claims 1-20 would be allowable upon filing of proper terminal disclaimer to overcome the double patenting rejections set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A REYNOLDS whose telephone number is (571)272-9959. The examiner can normally be reached M-F 9am-5pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEVEN A. REYNOLDS/Primary Examiner, Art Unit 3735
Prosecution Insights