OFFICE ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s Response
Acknowledgement is here made of Applicant’s Remarks and Amendment of 07/13/2026. The merits of the application have been carefully reconsidered in view of Applicant’s Remarks and Amendment of 07/13/2026.
Specification
The amended descriptions for Reproductions 1.6, 1.7, 2.6, 2.7, 3.6, 3.7, 4.6, 4.7, 5.6, 5.7 overcome the specification objection.
Applicant has added a color statement to the specification following the Description of the Reproductions.
Claim Refusal – Non-Statutory Double Patenting: 35/524,853
The nonstatutory double patenting refusal has not been overcome. Applicant has not filed a terminal disclaimer.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.
Therefore, the claim is again refused, and is made final. It remains the Examiner's position that the claim is provisionally refused on the grounds of non-statutory double patenting of the claim of copending Application No. 35/524,853 in view of U.S. Patent Application Publication 2013/0037441, to Pacheco.
Claim Refusal – Non-Statutory Double Patenting: 35/524,829
The nonstatutory double patenting refusal has not been overcome. Applicant has not filed a terminal disclaimer.
A complete response to a nonstatutory double patenting (NSDP) rejection is either a reply by applicant showing that the claims subject to the rejection are patentably distinct from the reference claims, or the filing of a terminal disclaimer in accordance with 37 CFR 1.321 in the pending application(s) with a reply to the Office action (see MPEP § 1490 for a discussion of terminal disclaimers). Such a response is required even when the nonstatutory double patenting rejection is provisional.
As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Therefore, an application must not be allowed unless the required compliant terminal disclaimer(s) is/are filed and/or the withdrawal of the nonstatutory double patenting rejection(s) is made of record by the examiner. See MPEP § 804.02, subsection VI, for filing terminal disclaimers required to overcome nonstatutory double patenting rejections in applications filed on or after June 8, 1995.
Therefore, the claim is again refused, and is made final. It remains the Examiner's position that the claim is provisionally refused on the grounds of non-statutory double patenting of the claim of copending Application No. 35/524,829 in view of U.S. Patent Application Publication 2013/0037441, to Pacheco.
Claim Refusal – Non-Statutory Double Patenting: 35/524,853 FINAL
The nonstatutory double patenting refusal 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. See 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) may be used to overcome an actual or provisional refusal based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). 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) refusal. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP refusal is provisional, the reply must be complete. 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 filing date of the application will determine what form 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.
The claim is provisionally and FINALLY refused on the grounds of non-statutory double patenting of the claim of copending Application No. 35/524,853 in view of U.S. Patent Application Publication 2013/0037441, to Pacheco. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to change the shape of the crimped end of 35/524,853 to be straight, as demonstrated by Pacheco. This is a provisional non-statutory double patenting refusal because the conflicting claims have not in fact been patented.
This modification of the primary reference in light of the secondary reference is proper because the applied references are visually similar to that of the claimed design. It would have been obvious to a designer of ordinary skill in the art to modify 35/524,853 with Pacheco by substituting the curved crimped end of 35/524,853 with the straight crimped end of Pacheco, because such a modification is no more than a simple substitution of one known design element for another. Such a substitution of one known design element for another known design element in the same field would have been within the skill of an ordinary skilled designer. Moreover, there is prevalence in the prior art that adding a straight crimped end to the 35/524,853 design would be an obvious design choice. This creates the same visual appearance as the claimed toothpaste tube. Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
Claim Refusal – Non-Statutory Double Patenting: 35/524,829 FINAL
The nonstatutory double patenting refusal 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. See 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) may be used to overcome an actual or provisional refusal based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.131(c). 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) refusal. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP refusal is provisional, the reply must be complete. 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 filing date of the application will determine what form 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.
The claim is provisionally and FINALLY refused on the grounds of non-statutory double patenting of the claim of copending Application No. 35/524,829 in view of U.S. Patent Application Publication 2013/0037441, to Pacheco. At the time applicant made the design, it would have been obvious to a designer of ordinary skill in the art to change the shape of the tube of 35/524,829 to be long, as demonstrated by Pacheco. This is a provisional non-statutory double patenting refusal because the conflicting claims have not in fact been patented.
This modification of the primary reference in light of the secondary reference is proper because the applied references are visually similar to that of the claimed design. It would have been obvious to a designer of ordinary skill in the art to modify 35/524,829 with Pacheco by substituting the short tube of 35/524,829 with the long tube of Pacheco, because such a modification is no more than a simple substitution of one known design element for another. Such a substitution of one known design element for another known design element in the same field would have been within the skill of an ordinary skilled designer. Moreover, there is prevalence in the prior art that adding a longer proportioned tube to the 35/524,829 design would be an obvious design choice. This creates the same visual appearance as the claimed toothpaste tube. Where the only substantial difference between a design and the prior art is one of obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens, 81 USPQ 362 (CCPA 1949). Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. See In re Antle, 444 F.2d 1168,170 USPQ 285 (CCPA 1971) and In re Nalbandian, 661 F.2d 1214, 211 USPQ 782 (CCPA 1981).
Conclusion
The claim is FINALLY refused on the grounds of non-statutory double patenting, as set forth above. The claimed design is patentable over the references cited. However, a final determination of patentability will be made upon resolution of the above refusal.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Applicant may view and obtain copies of the cited references by visiting https://ppubs.uspto.gov/basic/ and pressing the “Patent Number Search” button.
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Teddy Falloway whose telephone number is (571)270-0207. The Examiner can normally be reached on Monday - Friday, 9:00 AM to 3:00 PM EST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Wendy Arminio, can be reached at (571) 270-0221. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/W. A. Teddy Falloway/Primary Examiner, Art Unit 2923
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