DETAILED ACTION
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 present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
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 – 6, 8 – 10 and 12 – 15 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.
Claims 1 and 9 have been amended to recited “wherein the individual packages are not connected prior to linking the parts of the flanges of the first and second shells”.
Whilst applicant asserts that paragraphs [0150] and [0153] of the PG-Publication provide support for the amendment paragraph ][0150] only recites that the “shells” (unassembled) or “shells assembled together” are positioned end to end. Paragraph [0153] does not recite that only completed packages would be connected but that the flanges of the shells themselves would be overlapping. With respect to applicant’s assertions of support regarding the drawings, figures 1 – 3 and 7 show only exploded views of individual shells that have not been assembled into finished completed individual packages that are connected to one another and not . Figure 4 appears to show an overlap of flanges but there is no indication that said flanges are physically connected or linked together. Figure 5 shows what appears to be a strip of packages that were formed together as a complete strip and not individual packages that have been further connected. Figure 6 shows what appears to be two shells or individual packages that are separated from one another and are not connected. Thus The Office is not able to find support in the application for the new amendment in claims 1 and 9 of “wherein the individual packages are not connected prior to linking the parts of the flanges of the first and second shells”. Therefore this amendment raises an issue of new matter and as such must be deleted.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 6, 8 – 10, and 12 – 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, line 13, there is no antecedent basis for the term “the individual packages”.
Regarding claim 1, line 13, there is no antecedent basis for the term “the parts of the flanges”.
Regarding claim 9, line 11, there is no antecedent basis for term “the parts of the flanges”.
Claims 2 – 6, 8, 10, and 12 – 15 are rejected by virtue of their dependence on a rejected base claim.
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.
Claims 1 – 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Diamant US 3,214,013.
Regarding claim 1, Diamant discloses a method for manufacturing a strip of packages (col. 1, ln 43 – 57), which method comprises the steps of providing a first shell comprising a first part of a first cavity (13) comprising a rim, and a flange (12) extending from the rim and surrounding the first part of the first cavity and providing a second shell comprising a first part of a second cavity (13a) comprising a rim and a flange (12a) extending from the rim and surrounding the first part of the second cavity. The first part of the first cavity and the first part of the second cavity are portions of individual packages (col. 3, ln 24 – 41).
The first part of the first cavity is positioned aside the first part of the second cavity with one part of the flange of the first shell overlapping one part of the flange of the second shell and the part of the flange of the first shell is linked to the part of the flange of the second shell to form the strip of packages ((col. 3, ln 24 – 41) and fig. 3).
Regarding the individual packages are not connected prior to linking the parts of the flanges of the first and second shells, selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP § 2144.04 IV.C.) and therefore it would have been an obvious matter of design and/or choice to have linked the parts of the flanges of the first and second shells prior to linking the packages to form the strip of packages.
Regarding claim 2, Diamant discloses the flange of each of the first shell (13) and second shell (13a) comprises a front surface, and the front surface of the flange of the first shell is linked to the front surface of the flange of the second shell (fig. 3).
Regarding claim 3, since there are no defined front surfaces and/or reverse surfaces Diamant is seen to disclose the flange of the first shell (13) comprises a reverse surface, (12) and the reverse surface of the flange of the first shell would be linked to a front surface of the flange of the second shell (12a) (fig. 3). Further, once it was known to contact, that is to link a first shell flange to a part of a second shell flange, it is not seen that patentability would be predicated on which surface of said flanges would be linked one to the other as the particular placement of the flanges would have been an obvious matter of design and/or choice, i.e., a rearrangement of parts (MPEP § 2144.04 VI.).
Regarding claims 4 and 5, Diamant discloses at least the first cavity would be closed (fig. 3) by providing a first complementary shell (13a) which would comprise a second part of the first cavity having a rim and a flange (12/12a) extending from said rim which surrounds the second part of the first cavity. The first cavity is formed by positioning the second part of the first cavity (13a) facing the first part of the first cavity (13) and thereafter the flange of the first complementary shell would be sealed to the first complementary shell (fig. 3).
Regarding claim 6 Diamant discloses the first shell would have a flange (12). Regarding the particular shape of the flange, i.e. that it would comprise a ring the configuration of the claimed flange would have been an obvious matter of choice and/or design which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed flange was significant. It is also seen that a “tab” would be considered an extension of said flange/ring, that is, a change of shape as with the ring which the ordinarily skilled artisan would have found obvious absent persuasive evidence that the particular configuration of said flange/ring would have been significant (MPEP 2144.04 IV.B.). Further once it was known to contact, that is to link a first shell flange/ring to a part of a second shell flange, it is not seen that patentability would be predicated on which surface of said flanges would be linked one to the other as the particular placement of the flanges would have been an obvious matter of design and/or choice, i.e., a rearrangement of parts (MPEP § 2144.04 VI.).
Regarding claim 8, Diamant discloses the packages of the strip of packages would be well suited to holding a portion of any solid, comminuted product (col. 1, ln 9 – 10) which would obviously include a portion of food or beverage precursor making it an obvious matter of choice and/or design to the ordinarily skilled artisan to have provided a portion of food or beverage precursor and placed said portion in the first part of the first cavity.
Claims 9, 10, and 12 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Magnani WO 2020/031096 in view of Kuss et al. US 2005/0268577 as further evidenced by Milligan US 96,605, Foss US 191,578, Remco US 2,495,132, Lohwasser US 3,908,828, and Price US 2,978,853.
Regarding claims 9 and 12, Magnani discloses a strip of packages (100) comprising at least a first package and a second package which is linked to the first package (fig. 1) and that the first package and the second package are individual packages.
Each package comprises a cavity, i.e., the first package comprises a first cavity, the second package comprises a second cavity (figure 1 and 3(a)), and which first and/or second package would comprise a beverage precursor (coffee) inside (page 4, ln 29 – page 5, ln 2, and fig. 1). Again as seen in figure 1, the first package comprises at least a first shell comprising a first part of the first cavity and, as is evident from figure 3(a), a flange would extend from the first part of the first cavity, and similarly the second package comprises at least a second shell comprising a first part of the second cavity and a flange extending from the first part of the second cavity since said second package is identical to said first package. Obviously, once produced said first package and said second package would be further packaged for distribution and sale. It is further noted that Magnani does not disclose the detachment of said packages one from the other, which is to say that Magnani is disclosing a package strip.
Claim 9 differs from Magnani in the package strip further comprising at least a bond between the first package and the second package which bond is linking said first and second package and would comprise one part of the flange of the first shell overlapping one part of the flange of the second shell.
Kuss discloses a first package and a second package each containing a beverage precursor (coffee) arranged in a strip arrangement, that is to say, in the form of a strip. as in a side-by-side arrangement, where the first package and the second package are linked in that one part of the flange of the first shell is overlapping one part of the flange of the second shell (paragraph [0012] and fig. 11). Kuss is linking the first package and the second package using an overlapping arrangement, that is comprising one part of the flange of the first shell overlapping one part of the flange of the second shell in order to arrange a compact packaging arrangement in a package for distribution and/or sale of said first and second packages which is believed to be one of applicant’s reasons for doing so as well. To therefore link first and second packages in a strip arrangement by overlapping one part of the flange of the first shell with one part of the flange of the second shell for a compact packaging arrangement as taught by Kuss would have been an obvious matter or choice and/or design to the ordinarily skilled artisan.
Milligan (lapping the said flanges) (fig. 1 and 2), Foss (the cups are united by their flanges) (left column, paragraph 5, fig. 1 and 2), Remco (col. 2, ln 13 – 16 and fig. 2), Lohwasser (one container will slide below the lid of the adjacent container) (col. 2, ln 53 – 54), and Price (col. 2, ln 45 – 47 and fig. 1E) all provide further evidence that it was old, conventional, and extremely well established in the art to provide a strip of packages comprising at least a first package and a second package which second package is linked to the first package comprising one part of a flange of the first package overlapping one part of the flange of a flange of the second package.
Claim 9 now further recites “the individual packages are not connected prior to linking the parts of the flanges of the first and second shells”. This is to say that the claim is attempting to claim a product by the process by which it would be made when the claims are directed to an article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113).
Regarding claim 10, Magnani discloses the first package comprises a first complementary shell comprising a second part of the first cavity and a flange extending from the second part of the first cavity (fig. 1 and 3(a), reference sign 3a) and since the second package is identical to said first package the second package also comprises a second complementary shell comprising a second part of the second cavity and a flange extends from the second part of the second cavity (fig. 1 and 3(a), reference sign 3a).
Regarding claim 13, Magnani as further evidenced by Milligan, Foss, Remco, Lohwasser, and Price discloses that one shell would be made of a paper-based material (cellulosic components) (‘096, page 2, ln 31). Price provides further evidence that the use of a paper-based structure material to make a package strip was old, common, and conventional in the art (col. 2, ln 15 – 18 and fig. 1A – 1E) and therefore it would have been an obvious matter of choice to the ordinarily skilled artisan to have employed a paper-based structure material.
Regarding claims 14 and 15, once it was known to link the first package to the second package it is not seen that patentability would be predicated on which surface of the flange of one shell, i.e., the first package, would be connected to which surface of the flange of the second package, i.e., a second shell since the designation of which surface of the respective flanges of the respective shells that would constitute the front and back thereof would be an obvious matter of choice to the ordinarily skilled artisan. i.e., a rearrangement of parts since the particular surface of the respective flanges that would be linked one to the other would not modify the operation of the respective packages (MPEP § 2144.04 VI.C.).
Claims 9, 10, and 12 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over Binacchi EP 1 705 122 in view of Kuss et al. US 2005/0268577 as further evidenced by Milligan US 96,605, Foss US 191,578, Remco US 2,495,132, Lohwasser US 3,908,828, and Price US 2,978,853.
Regarding claims 9 and 12, Binacchi discloses a strip of packages (100) (fig. 1) comprising at least a first package and a second package which is linked to the first package at least at figure 1 reference sign 15, each package comprises a cavity, i.e., the first package comprises a first cavity and the second package comprises a second cavity as seen in figure 4, and which first and/or second package are individual packages and would each comprise a beverage precursor (coffee powder) inside (paragraph [0024], fig. 1).
Again as seen in figure 1, the first package comprises at least a first shell comprising a first part of the first cavity and as is evident from figure 2, a flange would extend from the first part of the first cavity, and similarly the second package comprises at least a second shell comprising a first part of the second cavity and a flange extending from the first part of the second cavity (paragraph [0046]). Obviously, once produced said first package and said second package would be further packaged for distribution and sale.
Claim 9 differs from Binacchi in the package strip further comprising at least a bond between the first package and the second package which bond is linking said first and second package and would comprise one part of the flange of the first shell overlapping one part of the flange of the second shell.
Kuss discloses a first package and a second package each containing a beverage precursor (coffee) arranged in a strip arrangement, that is to say, in the form of a strip. as in a side-by-side arrangement, where the first package and the second package are linked in that one part of the flange of the first shell is overlapping one part of the flange of the second shell (paragraph [0012] and fig. 11). Kuss is linking the first package and the second package using an overlapping arrangement, that is comprising one part of the flange of the first shell overlapping one part of the flange of the second shell in order to arrange a compact packaging arrangement in a package for distribution and/or sale of said first and second packages which is believed to be one of applicant’s reasons for doing so as well. To therefore link first and second packages in a strip arrangement by overlapping one part of the flange of the first shell with one part of the flange of the second shell for a compact packaging arrangement as taught by Kuss would have been an obvious matter or choice and/or design to the ordinarily skilled artisan.
Milligan (lapping the said flanges) (fig. 1 and 2), Foss (the cups are united by their flanges) (left column, paragraph 5, fig. 1 and 2), Remco (col. 2, ln 13 – 16 and fig. 2), Lohwasser (one container will slide below the lid of the adjacent container) (col. 2, ln 53 – 54), and Price (col. 2, ln 45 – 47 and fig. 1E) all provide further evidence that it was old, conventional, and extremely well established in the art to provide a strip of packages comprising at least a first package and a second package which second package is linked to the first package comprising one part of a flange of the first package overlapping one part of the flange of a flange of the second package.
Claim 9 now further recites “the individual packages are not connected prior to linking the parts of the flanges of the first and second shells”. This is to say that the claim is attempting to claim a product by the process by which it would be made when the claims are directed to an article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113).
Regarding claim 10, Binacchi discloses the first package comprises a first complementary shell comprising a second part of the first cavity and a flange extending from the second part of the first cavity (fig. 4, reference sign 17) and since the second package is identical to said first package the second package also comprises a second complementary shell comprising a second part of the second cavity and a flange extends from the second part of the second cavity (fig. 4, reference sign 17).
Regarding claim 13, Binacchi discloses the package strip would comprise a permeable film but does not disclose that said film would be a paper-based structural material. As further evidenced by Price the use of a paper-based structure material to make a package strip was old, common, and conventional in the art (col. 2, ln 15 – 18 and fig. 1A – 1E) and therefore it would have been an obvious matter of choice to the ordinarily skilled artisan to have employed a paper-based structure material.
Regarding claims 14 and 15, once it was known to link the first package to the second package it is not seen that patentability would be predicated on which surface of the flange of one shell, i.e., the first package, would be connected to which surface of the flange of the second package, i.e., a second shell since the designation of which surface of the respective flanges of the respective shells that would constitute the front and back thereof would be an obvious matter of choice to the ordinarily skilled artisan. i.e., a rearrangement of parts since the particular surface of the respective flanges that would be linked one to the other would not modify the operation of the respective packages (MPEP § 2144.04 VI.C.).
Response to Arguments
Applicant’s arguments filed 22 June 2026 with respect to claims 1 – 6 and 8 have been fully and carefully 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.
Applicant's arguments regarding claims 9, 10, and 12 - 15 have been fully considered but they are not found persuasive.
Applicant urges that the prior art of record, that is Magnani in view of Kuss as further evidenced by Milligan, Foss, Remco, Lohwasser, and Price or Binacchi in view of Kuss as further evidenced by Milligan, Foss, Remco, Lohwasser, and Price does not teach “the individual packages are not connected prior to linking the parts of the flanges of the first and second shells”. This urging is not deemed persuasive.
As set forth above in the rejections in reciting “the individual packages are not connected prior to linking the parts of the flanges of the first and second shells” claim 9 is attempting to claim a product by the process by which it would be made when the claims are directed to an article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
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 CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 02 September 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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