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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/23/2025 has been entered.
Claim Rejections - 35 USC § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 41, 43, 48, and 57 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barreto (US 2005/0099475) in view of Obrams et al. (WO 2004/070501 A2).
Regarding claim 41 and 43, Barreto discloses that traditional methods of marking pharmaceutical products does little to facilitate control of counterfeit products and fraudulent dispensing and discloses that marking products with an edible invisible ink containing a compound such as quinine (i.e. a stokes shift taggant, 0031) that fluoresces in the visible spectrum when illuminated with UV light. The invisible ink can use water as a solvent and contain starch (i.e. corn starch, 0031). Starches inherently contain dextrose (i.e. a biopolymer of d-glucose).
Barreto does not disclose that the consumer product is a pouched tobacco product. However, it would have been obvious to mark oral pouched tobacco products in similar ways to pharmaceutical products. Both products are controlled by the US Food and Drug Administration and one of ordinary skill would understand and reasonably expect the ink of Barreto would be predictably be able to covertly label a pouched tobacco product. It is known to be obvious to use known technique to improve similar devices (pharmaceuticals, tobacco products) in the same way (product tracking).
Barreto discloses using a stokes shift taggant but does not disclose that the organic taggant is indocyanine green. However, Obrams et al. disclose a similar system for tracking and preventing counterfeiting products and disclose using luminescent compounds such as indocyanine green (page 7, 24-34). It would have been obvious to one of ordinary skill in the art at the time of filing/invention to use the compounds disclosed by Obrams et al. including indocyanine green, in place of the quinine taggant in the invention of Barreto. Replacing the taggant would have been within the ability of one of ordinary skill and the results would have been predictable (i.e. the absorption and emission of indocyanine green is known). In addition, it is considered to be obvious to perform a simple substitution of one known element (i.e. quinine) with another known element to obtain a predictable result.
Regarding claim 48, indocyanine green is inherently water soluble. properties of chemical compounds are inherent and as such, the indocyanine green of the prior art must have the same properties as the compound claimed because the compounds are the same.
Regarding claim 57, Barreto discloses using up to 1% by weight organic fluorescent taggant (0035).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FELTON whose telephone number is (571)272-4805. The examiner can normally be reached on Monday, Thursday-Friday 7:00-4:30, Wednesday 7:00-1:00.
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/Michael J Felton/ Primary Examiner, Art Unit 1747