DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. 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.
3. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 14 of U.S. Patent No. 11,970,314 (“the ‘314 patent”) in view of US 2020/0017264 (Scott).
Instant claim 1
Claims 6 and 14 of the ‘314 patent
A storage container comprising:
6. A storage container comprising:
a frame structure having a hinge with a pivot axis, a first frame component, and a second frame component;
a frame structure having a hinge with a pivot axis, a first frame component, and a second frame component;
the hinge coupling the first frame component and the second frame component and configured to facilitate rotation about the pivot axis (i) of the first frame component away from the second frame component to achieve an open configuration or (ii) of the first frame component toward the second frame component to achieve a closed configuration;
the hinge coupling the first frame component and the second frame component and configured to facilitate rotation about the pivot axis (i) of the first frame component away from the second frame component to achieve an open configuration or (ii) of the first frame component toward the second frame component to achieve a closed configuration;
a first shell that is secured by the first frame component, and a second shell that is secured by the second frame component;
a first shell that is configured to be releasably secured by the first frame component, and a second shell that is configured to be releasably secured by the second frame component;
whereas, when the storage container is in a closed configuration, an interior volume bounded by the frame structure, first shell and second shell is isolated from a space exterior to the interior volume; and
wherein, when the first shell is secured by the first frame component, the second shell is secured by the second frame component, and the storage container is in the closed configuration, an interior volume bounded by the frame structure, the first shell and the second shell is isolated from a space exterior to the interior volume; and
one or more securing structures configured to facilitate (x) isolation of the interior volume from the space exterior to the interior volume (Examiner notes that while such is not explicitly claimed in the corresponding limitation, the ‘314 patent teaches the first and second shell create an interior volume isolated from a space exterior to the volume in the box immediately above this one, and the securing structure inherently promotes this by closing the container, and is thus asserted to teach the claimed limitation) and (y) maintenance of the storage container in a closed configuration; wherein
a securing structure configured to facilitate maintenance of the storage container in a closed configuration;
the frame structure comprises a material having a Shore A durometer of about 50 to about 80, and wherein at least one of the first shell or the second shell comprise a food-grade silicone (not explicitly taught in the claim) having a Shore A durometer of about 35-45.
14. The storage container of claim 6, wherein the frame structure comprises a material having a Shore A durometer of about 50 to about 80, and wherein at least one of the first shell or the second shell comprises a material having a Shore A durometer of about 25-60.
Regarding instant claim 1, the ‘314 patent fails to teach the first and second shell comprise a food-grade silicone.
Scott, analogous to covering food, teaches the covering can be formed of a food grade silicone (para. [0020]) having a Shore A durometer in the range of 25-70, and preferably in the range of 30-50 (para. [0021]). The reference further teaches the film is stretchable over the food item and provides a substantially airtight seal (para. [0019]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the first and second shells of the ‘314 patent of silicone, as taught by Scott to be a suitable material for storing food and of a suitable Shore A durometer, motivated by the use of a material suitable for stretching over food and providing a substantially airtight seal, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
4. Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 7 of U.S. Patent No. 11,970,314 (“the ‘314 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘314 patent anticipates the instant claimed invention – see analysis table below:
Instant claims 8-15 and 17-20
Claim 6-17 of the ‘314 patent
8. A storage container comprising:
6. A storage container comprising:
a frame structure having a hinge with a pivot axis, a first frame component, and a second frame component;
a frame structure having a hinge with a pivot axis, a first frame component, and a second frame component;
the hinge coupling the first frame component and the second frame component and configured to facilitate rotation about the pivot axis (i) of the first frame component away from the second frame component to achieve an open configuration or (ii) of the first frame component toward the second frame component to achieve a closed configuration;
the hinge coupling the first frame component and the second frame component and configured to facilitate rotation about the pivot axis (i) of the first frame component away from the second frame component to achieve an open configuration or (ii) of the first frame component toward the second frame component to achieve a closed configuration;
a first shell that is secured by the first frame component, and a second shell that is secured by the second frame component;
a first shell that is configured to be releasably secured by the first frame component, and a second shell that is configured to be releasably secured by the second frame component;
whereas, when the storage container is in a closed configuration, an interior volume bounded by the frame structure, the first shell and the second shell is isolated from a space exterior to the interior volume; and
wherein, when the first shell is secured by the first frame component, the second shell is secured by the second frame component, and the storage container is in the closed configuration, an interior volume bounded by the frame structure, the first shell and the second shell is isolated from a space exterior to the interior volume;
one or more securing structures configured to facilitate (x) isolation of the interior volume from the space exterior to the interior volume (Examiner notes that while such is not explicitly claimed in the corresponding limitation, the ‘314 patent teaches the first and second shell create an interior volume isolated from a space exterior to the volume in the box immediately above this one, and the securing structure inherently promotes this by closing the container, and is thus asserted to teach the claimed limitation) and (y) maintenance of the storage container in a closed configuration;
a securing structure configured to facilitate maintenance of the storage container in a closed configuration;
wherein the first shell and the second shell comprise a food-grade silicone.
7. The storage container of claim 6, wherein the first shell and the second shell comprise a food-grade silicone.
Claim Interpretation
5. 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.
6. 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.
7. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“one or more securing structures” in claim 1, which are defined in Specification as “a raised protrusion disposed in the first frame component and a corresponding receiving aperture in the second frame component, wherein the raised protrusion and the corresponding receiving aperture are configured to form, when engaged, a compression fit that releasably secures the first frame component to the second frame component” (para. [0009]) and “a slidable locking member that is actuatable in either a locked or unlocked position; wherein, in the locked position, the slidable locking member engages locking members of both the first frame component and the second frame component to prevent them from being separated; and wherein, in the unlocked position, the slidable locking member does not engage both the locking members, thereby allowing the first frame component and second frame component to be separated” (para. [0010]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Allowable Subject Matter
8. Claims 1-18 will be allowable upon the filing of a terminal disclaimer as above under Double Patenting.
9. The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 1 and 8, from which the remaining claims depend, none of the cited prior art teaches forming the shells of a food-grade silicone. The closest reference the Examiner was able to locate was US 5,855,766 (Mamiye; embodiment of Figures 3A-3E), which teaches a storage container comprising:
a frame structure (30) having a hinge (48) with a pivot axis (56), a first frame component (30), and a second frame component (30’); a first shell (54) and a second shell (54’), and one or more securing structures (50, 50’), but at least fails to teach the first shell being configured to be releasably secured by the first frame component, and the second shell being configured to be releasably secured by the second frame component, and forming the shells of a food grade silicone.
No motivation could be found to modify the reference in order to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES N SMALLEY/Examiner, Art Unit 3733
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