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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/9/25 has been entered.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 10, 12, 14 and 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over Fortini (US 11,117,694) in view of Moore (US 2,120,898) further in view of Focke (US 4,300,676) and Shina (US 2,339,656).
Regarding claim 1 Fortini (figs. 1-8) discloses a box-in-box package comprising:
a rigid outer box 2 having a hinged lid 4 configured to provide access to an inner volume of the rigid outer box 2,
the rigid out box made from an outer box blank (fig. 6 and col. 3, lines 10-13), the outer box blank including:
a first front wall 7, a first back wall 8, a first top wall 10, a first bottom wall 6, and a first plurality of side walls 9, 13, the first plurality of side walls 9, 13 including at least a first side wall having an angle relative to a first respective fold line of about -50 degrees, and at least a second side wall 9 having an angle relative to the first respective fold line of about -140 degrees; and
an inner box 14 blank including a second front wall 15, a second back wall 17, a second top wall 18, a second bottom wall 19, a second plurality of side walls 16,
a single opening 20 extending across the second top wall 18 and part way down the second front wall 15, the single opening 20 capable of providing access to unwrapped consumer goods in an inner volume of the rigid inner box 14, the single opening 20 in the rigid inner box including, a cut-out; and
a connection flap 22.
Fortini fails to disclose:
the outer box 2 blank and the inner box 14 blank made of a foil lined paperboard including a foil layer adhered to a paper layer and a paperboard layer, an outer surface of the paper layer adhered to an inner surface of the foil layer by a first adhesive layer, and an inner surface of the paperboard layer adhered to an outer surface of the foil layer by a second adhesive layer;
the second plurality of side walls including at least two first side walls having angles relative to second and third respective fold lines of about 45 degrees and at least two second side walls having angles relative to the second and third respective fold lines of about 135 degrees; and
the single opening 20 being free from a re-sealable or removable label and wrapper.
Moore teaches a blank 30 comprising a layer of foil 31 interposed between layers of paper 32, the layers being secured together by adhesive 33 (fig. 10 and page 3, lines 50-55).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have made the blanks of the inner and outer boxes of Fortini, of layers and paper and foil, to provide a structure comprising layers of materials of different qualities or characteristics mutually supplementing each other, as taught by Moore in page 3, lines 13-18, to provide moisture resistance and strength.
Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Further, Focke teaches an inner container having the second plurality of side walls including at least two first side walls having angles relative to second and third respective fold lines of about 45 degrees and at least two second side walls having angles relative to the second and third respective fold lines of about 135 degrees (fig. 18).
It would have been obvious to one of ordinary skill in the art to substitute angled side walls as, for example, taught by the Focke reference for the side walls of the modified Fortini for easy assembly of the inner container. Also, it has been held that when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result. KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (citing United States v. Adams, 383 U.S. 50-51, 148 USPQ 479, 483 (1966)).
Further, Shina teaches a box having an inner container C with a single top opening free from a re-sealable label and wrapper (fig. 1A).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the opening of the modified Fortini free from a re-sealable label and wrapper, as taught by Shina, to reduce the cost of the packaging and manufacturing complexity, where the outer box already provides sufficient protection and containment for the cigarettes.
Regarding claim 10, Fortini further discloses the inner box 14 being formed from an inner box blank which includes a front panel corresponding to the second front wall 15, a top panel corresponding to the second top wall 18, a back panel corresponding to the second back wall 17, and a bottom panel corresponding to the second bottom wall 19 (fig. 8).
Regarding claim 12, Fortini further discloses the front panel includes a top front panel 15’ and a bottom front panel 15” (fig. 8).
Regarding claim 14, Fortini further discloses the inner box 14 is formed from an inner box blank which includes a top front panel 15’ corresponding to an upper portion of the second front wall 15 separated from a top panel corresponding to the second top wall 18 by a first transverse fold line, a back panel corresponding to the second back wall 17 separated from the top panel by a second transverse fold line, a bottom panel corresponding to the second bottom wall 19 separated from the back panel by a third transverse fold line, and a bottom front panel 15” corresponding to a lower portion of the second front wall 15 separated from the bottom panel by a fourth transverse fold line (fig. 8).
Regarding claim 23, Fortini further discloses the first plurality of side walls 9,13 further includes at least a third side wall having an angle relative to a fourth respective fold line of about -45 degrees (figs 1-6).
Regarding claim 24, Fortini further discloses the first plurality of side walls 9, 13 further includes at least a fourth side wall having an angle relative to a fifth respective fold line of about -135 degrees (figs. 1-6).
Regarding claim 25, Fortini further discloses the first plurality of side walls 9, 13 further includes at least a third side wall having an angle relative to a fourth respective fold line of about -135 degrees (figs. 1-6).
Regarding claim 26, Fortini further discloses the first plurality of side walls 9, 13 further includes at least a third side wall having an angle relative to a fourth respective fold line of about -39 degrees (figs. 1-6).
Regarding claim 27, Fortini further discloses the first plurality of side walls 9,13 further includes at least a third side wall having an angle relative to a fourth respective fold line of about -129 degrees (figs 1-6).
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fortini (US 11,117,694) in view of Moore (US 2,120,898), Focke (US 4,300,676) and Shina (US 2,339,656) as applied to claim 1 above, further in view of Cailleaux (US 2018/0265373).
Regarding claims 3-6 the modified Fortini fails to disclose:
a polypropylene film on an outer surface the paperboard layer; or a metallized polyester layer on an outer surface of the foil lined paperboard.
However, Cailleaux teaches an over layer of a cigarettes packaging being made of polypropylene or polyester layers (paragraph 0038).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have provided the modified device of Fortini an outer layer of the claimed materials, for providing abrasion resistance as taught by Cailleaux in paragraph 0038.
Also, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fortini (US 11,117,694) in view of Moore (US 2,120,898), Focke (US 4,300,676) and Shina (US 2,339,656) as applied to claim 1 above, further in view of Huffman (US 6,688,515).
Regarding claim 7, the modified Fortini fails to disclose the foiled lined paperboard comprising solid bleached sulfate (SBS) board stock.
However, Huffman teaches a moisture control packaging material having a paperboard made of solid bleached sulfate (col. 4, lines 44-47).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made the paperboard of the modified Fortini, of SBS, for providing a rigid container that doesn’t deform if stacked with other containers.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Fortini (US 11,117,694) in view of Moore (US 2,120,898), Focke (US 4,300,676) and Shina (US 2,339,656) as applied to claim 1 above, further in view of Babinsky (US 8,389,079).
Regarding claim 8, the modified Fortini discloses all elements of the claimed invention except for the first and second adhesive layers comprising sodium silicate.
However, Babinski teaches an adhesive layer 28 including sodium silicate (col. 6, lines 58-64).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have included sodium silicate to the adhesive layer of the modified Fortini, for aiding in binding and curing of the binder by rapidly increasing viscosity of the binder during the drying processes as taught by Babinski in col. 6, lines 58-64.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Fortini (US 11,117,694) in view of Moore (US 2,120,898), Focke (US 4,300,676) and Shina (US 2,339,656) as applied to claim 1 above, further in view of Bertuzzi (US 2011/0062037).
Regarding claim 13, the modified Fortini further discloses the rigid inner box contains cigarettes in direct contact with a paper layer of the rigid inner box but fails to disclose a portion of the paper layer of the rigid outer box being in direct contact with ends of cigarettes located in the single opening in the rigid inner box.
However, Bertuzzi teaches a portion of an inner layer of the rigid outer box being in direct contact with tobacco articles located in the single opening in a rigid inner box (fig. 5 and paragraph 0023).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to have made a portion of outer box of the modified Fortini, in direct contact with the contents, as taught by Bertuzzi, for cutting manufacturing cost by eliminating the flexible cover. Also, it is noted that omission of an element (i.e., the flexible cover) and its function is obvious if the function of the element is not desired (MPEP 2144.04 II A).
Response to Arguments
Applicant's arguments filed 10/9/25 have been fully considered but they are not persuasive. The motivation to reduce material cost is a well-recognized and routine design consideration in packaging art and reflects ordinary creativity of a person of ordinary skill in the art. Such motivating need not be expressly stated in the prior art or derived from applicant’s disclosure. The rational is based on ordinary economic considerations and not on applicant’s specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BLAINE GIRMA NEWAY whose telephone number is (571)270-5275. The examiner can normally be reached Monday - Friday 9:00 AM- 5:00PM.
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/BLAINE G NEWAY/Examiner, Art Unit 3735
/Anthony D Stashick/Supervisory Patent Examiner, Art Unit 3735