DETAILED ACTION
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 .
Response to Amendment
Claims 1-19 are pending. Claims 12-15 are withdrawn from considered as being directed to a nonelected group.
The amendment filed 08/25/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
Fig. 3: the definition of an upper portion (5) and lower portion (6)
Paragraph [2]: “with an upper portion (5) and a lower portion (6) of which the lower portion (6) is moveable relative to the cover”.
Paragraph [10]: “a flexible pouch (2) having an upper portion (5) and a lower (6)”.
Paragraph [14].
Paragraph [27]: the lower portion (6) of said flexible pouch is positioned inside a rigid body” and “the lower portion (6) of said flexible pouch (2) being detached from the bottom (7) of the rigid body”.
Paragraph [28]: “the lower portion (6)” and “the upper portion (5)”
Paragraph [29]: “the upper portion (5)”.
Paragraph [59]: “with the lower portion (6)”.
Paragraph [66].
Paragraph [67]: “lower portion (6)” and “upper portion (5).
The specification as originally filed does not support lower portion or upper portion. As originally filed the specification refers to the flexible pouch as a whole and not the interaction of certain portions of the flexible pouch with the rigid body. Additionally, there was no distinction that the portion held within the capsule would be considered the lower portion and the remaining portion would be considered the upper portion, thusly this is considered new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Drawings
The previous objection(s) to the drawings are withdrawn as a result of the amendment, however as stated above Fig.3 is objected to as new matter.
Applicant states that support for Fig. 3 is based “on at least paragraphs [0023]-[0025], [0029], [0059], and [0068]; and FIGS. 1-2 of the application as originally filed”, this is unclear. The specification as originally filed only has 62 paragraphs, thusly what support comes from paragraph [0068]? Applicant argues “the specification explains that the flexible pouch "detaches from the bottom of the rigid body (3) when its contents are suctioned" (present application, paragraph [0023]) while the flexible pouch "always remains attached to the rigid body of the capsule" (present application, paragraph [0024]), indicating that the upper portion remains fixed while the lower portion detaches”, it is unclear how that is indicated as the language is conflicting (the flexible pouch detaches but always remained attached). There was no previous distinction made between the flexible pouch and an upper portion of the flexible pouch and a lower portion of the pouch. The drawings as originally filed did not show the attachment relationship of the specific portions of the flexible pouch merely that the flexible pouch was between the rigid body and the cover. The new figures also do not show the attachment relationship between the component. Applicant states paragraph [0025] “specifies that the upper portion is “fixed by bonding between said rigid pouch (3) and the cover (1)””, this is not disclosed by the original specification. The use of “upper portion” was added to the specification, figures and the claim language and as such is new matter not supported by the specification as originally filed. Applicant alleges the “dual functionality of the fixation at the top and detachment at the bottom is inherent in the original disclosure and visually suggested by the position of the pouch in Figs 1-2”, examiner disagrees. The relationship lacks clarity as the specification recites conflicting language as stated above, and the final product with the interaction between the portions of the flexible pouch, cover and rigid body was and is not shown.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 16-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the flexible pouch includes an upper portion and a lower portion, wherein the lower portion of the flexible pouch detaches from a bottom of the rigid body”, “the flexible pouch is fixed at the upper portion” and “the upper portion of the flexible pouch always remains attached to the rigid body”. There is no support in the specification as originally filed for the use of “upper portion” and “lower portion” nor for the relationship of the specified portions to the rigid cover i.e. the upper portion remaining attached while the lower portion does not. The specification as filed refers to the flexible pouch and not portions of it. Thusly it is considered new matter.
Claim 5 recites “the flexible pouch is fixed by heat sealing or bonding at said upper portion”, as previously stated there is no support for the use of “upper portion”.
Claims not specifically mentioned are included due to their dependencies.
Claim Rejections - 35 USC § 112(b)
The 35 U.S.C. 112(b) rejections of claim(s) 1-11 and 16-1 are withdrawn as a result of the amendment.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4-5, 11 and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gueret US 6,474,890 B1, herein after referred to as Gueret.
Regarding claim 1 Gueret discloses a capsule (Figs. 1-15) capable of being perforated for packaging a component comprising:
a cover (5 end piece and 12 threaded cap), and comprising
a flexible pouch (4 flexible bag, Figs. 1-3) in which the component is packaged and in which the component remains therein before suction wherein the flexible pouch is movable relative to said cover (contents stay within the pouch until the applicator is removed which creates suction in the pouch, Col. 4 lines 6-11), and which is positioned inside a rigid body (2 tubular body, Figs. 103) constituting the outside of the capsule,
said flexible pouch being characterized in that the flexible pouch includes an upper portion (Flanged portion between 3 and 7, Figs. 1-3) and a lower portion (portion within the body Figs. 2-3), wherein the lower portion of the flexible pouch detaches from a bottom of the rigid body when the component is suctioned from the flexible pouch (Fig. 3 the lower portion of the flexible bag is detached from the body when the contents are being removed), and the flexible pouch is fixed at the upper portion between the rigid body of the capsule and the cover (Figs. 2-3), wherein at least the upper portion of the flexible pouch always remaining attached to the rigid body of the capsule (Figs. 2-3).
Regarding claim 2 Gueret discloses the capsule according to claim 1 and further discloses that said flexible pouch (4) is made of plastic and/or polyethylene and/or polyvinyl chloride and/or aluminum (Col. 4, line 42).
Regarding claim 4 Gueret discloses the capsule according to claim 1. Gueret discloses substantially all the limitations of the claim(s) except for the material the cover is made from. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a cover made from plastic, since 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. Additionally, plastic is a well-known material that is widely used for makeup packaging.
Regarding claim 5 Gueret discloses the capsule according to claim 1 and further discloses that said flexible pouch (4) is fixed by heat sealing or bonding at said upper portion between said rigid body and the cover (the flexible pouch is bonded/between the rigid body and the cover, Figs. 2-3 and Col. 4 lines 54-58).
Regarding claim 11 Gueret discloses the capsule according to claim 1 and further discloses in that it can be perforated by a mechanical perforation and suction system (the flexible pouch is made from materials that are capable of being perforated by mechanical means and the contents are capable of being removed via suction. The cover body/rigid body additionally has an orifice that would allow access to the flexible pouch). Additionally, regarding intended use it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 16 Gueret discloses the capsule according to claim 1. Gueret discloses substantially all the limitations of the claim(s) except for the material of the covering being composes of a lamination of aluminum and polyethylene. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a material of laminated aluminum and polyethylene, since 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. Additionally, the use of a lamination of aluminum and polyethylene is not critical to the instant invention as the specification recites the cover can be made from a variety of different materials and function just as well (paragraph 21).
Regarding claim 17 Gueret discloses the capsule according to claim 1. Gueret discloses substantially all the limitations of the claim(s) except for the volume of the component in the flexible pouch. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the component between 0.3 and 0.5 mL, since it has been held that a change in size is generally recognized as being within the level of ordinary skill in the art and since such a modification would have involved a mere change in the size of components. Additionally, Gueret discloses that the flexible pouch that the volume can vary and has such the amount of contents within the pouch can vary.
Regarding claim 18 Gueret discloses the capsule according to claim 1and further discloses in that the component is a cosmetic ingredient in aqueous cream or serum form (the capsule is for holding fluid makeup and both aqueous cream and serum are fluid makeup products).
Regarding claim 19 Gueret discloses the capsule according to claim 1 and further discloses in that it can be perforated by a hollow needle and suction means (the flexible pouch is made from materials that are capable of being perforated by a hollow needle and the contents are capable of being removed via suction. The cover body/rigid body additionally has an orifice that would allow access to the flexible pouch). Additionally, regarding intended use it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
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.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Gueret in view of James et al. US 2014/0231453 A1, herein after referred to as James.
Regarding claim 3 Gueret discloses the capsule according to claim 1 and further discloses the flexible pouch (4) can be made from laminates (Col. 4 lines 45). Gueret discloses substantially all the limitations of the claim(s) except for the thickness of the material being between 50 µm to 200 µm. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have a laminate between 50 µm to 200 µm thick, since 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. Additionally, James teaches a flexible pouch (10 pouch, Figs. 1-3) made from a multilayered film (laminate) ranging from 50 to 200 microns (paragraph [0039]). Thus, showing a pouch made from a laminate being between 50 µm to 200 µm thick is well known in the art and would yield predictable results.
Claim(s) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gueret in view of Gueret US 2012/0093566 A1, herein after referred to as L’Oreal.
Regarding claim 6 Gueret discloses the capsule according to claim 1. Gueret is silent to the volume of the flexible pouch. L’Oreal teaches a container for makeup to hold between 3.5mL and 4ml of component (paragraph [0029].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the volume of the flexible pouch to comprise between 0.1 and 5 mL of the component as taught by L’Oreal as doing so is well known in the art and would yield predictable results. Additionally, a change in size is generally recognized as being within the level of ordinary skill in the art
Regarding claim 7 Gueret as modified discloses the capsule according to claim 1 and further discloses that the capsule is characterized in that the component has a dynamic viscosity of 0.001 Pa.s to 500 Pa.s at 20 C (the capsule is capable of holding various liquids for cosmetic purposes. Cosmetic serums range from 0.23 Pa.s to 1.15 Pa.s and as the purpose of the capsule of Gueret is to hold cosmetic liquids/fluid it can hold liquid in the required viscosity range). Additionally, regarding intended use it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
Regarding claim 8 Gueret as modified discloses the capsule according to claim 6 and further discloses in that said component is chosen from sauces, paint, syrup, honey, oil, spread, butter, jam, alcohols, perfumed liquids and/or cosmetic ingredients (holding liquid makeup i.e. cosmetic ingredients Col. 1 line 36).
Regarding claim 9 Gueret as modified discloses the capsule according to claim 8 and further discloses in that the component is a cosmetic ingredient (holding liquid makeup i.e. cosmetic ingredients Col. 1 line 36).
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gueret in view of Tereschouk WO 2013132351 A2, herein after referred to as Tereschouk.
Regarding claim 10 Gueret as modified discloses the capsule according to claim . Gueret is silent to any indicia (identification code) on the capsule. Tereschouk discloses a capsule with indicia on the outside for a user to identify the product within (page 6 lines 19-21).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include at least one identification code (indicia) as taught by Tereschouk as doing so is well known in the art and would yield predictable results. The indicia also allows the user to easily confirm the contents of the packaging. Further where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product (i.e. capsule), the content of the printed matter will not distinguish the claimed product from the prior art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 and 16-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner again suggests a continuation-in-part may be helpful to address the new matter issues and further describe the structure of the flexible pouch and the attachment relationship between the components.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lauren Kmet whose telephone number is (313)446-4834. The examiner can normally be reached M-F 9am-6pm.
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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.
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/L KMET/ Examiner, Art Unit 3735
/Anthony D Stashick/ Supervisory Patent Examiner, Art Unit 3735