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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/04/2026 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 8 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. (US 2017/0021994) in view of Bourgoin et al. (US 2019/0144197) and Gotoh et al. (US 4,117,199).
Regarding claim 8, Sebastian teaches a moisture barrier coated paper material (Paragraph [0007]). The paper material may be provided in the form of a blank which may be shaped into a box for cigarettes having a main body and a top lid which hinges in relation to the main body (“a container for consumer goods, the container comprising: a package comprising a box portion and a lid portion, the package defining a housing for the consumer goods, the lid portion being hinged to the box portion by a hinge line, an opening line separating the box portion and the lid portion outside the hinge line, the box portion and the lid portion being formed by folding a first multi-layer blank”) (Paragraphs [0032]-[0035]; Figs. 3-5). The papers include a paper-based substrate having a thickness of at least 0.25 mm (250 microns) and a basis weight of between 190 and 230 gsm (“a first cellulose based layer”) (Paragraph [0020]; Fig. 1-2). The base substrate may have a first and second coating applied thereto which provides heat and pressure sealability capabilities to the paper material (“a first polymeric layer provided on an outer side of the first cellulose based layer” & “wherein the first polymeric layer is a heat sealable layer”) (Paragraphs [0021]; [0024]).
With respect to the limitation of “wherein the first polymeric layer is optimised for bonding with the second polymeric layer,” it is noted that the limitation does not specify any particular method or property which achieves the claimed optimised bonding. As such, as long as the coatings on the bas substrate are capable of bonding to an additional polymeric layer, they may be optimised for bonding.
Furthermore, applicant’s specification describes the optimised bonding being achieved such that the first polymeric layer has heat sealant properties (PGPUB, Paragraph [0024]). This is taught by Sebastian above wherein the first and second coatings have heat and pressure sealability capabilities. As such, one of ordinary skill in the art would recognize that the first and second coatings may be optimised for bonding with other layers, such as a second polymeric layer.
Sebastian is silent with respect to the boxes further comprising an outer wrapper wrapped and sealed on the package and covering at least partly the opening line, the outer wrapper comprising a second cellulose-based layer, a second polymeric layer provided on an inner side of the second cellulose-based layer, wherein the polymeric layer is a moisture barrier layer.
Bourgoin teaches a container for consumer goods (Paragraph [0001]). The containers are formed from blanks and form the shape of a hinge-lid container (Paragraphs [0060]; [0065]-[0071]; [0080]). The containers may further include an outer wrapping layer which may be a cellulose film and may include tear tape (Paragraph [0061]).
Gotoh teaches a process for producing a moisture and waterproof repulpable paper which are suitable as wrapping papers which do not allow water to permeate therethrough (Col. 1, Lines 5-10; Col. 2, Lines 43-45; Col. 2, Lines 52-55). The papers are formed by coating at least one side of a paper substrate (“second cellulose-based layer”) with an aqueous emulsion containing a synthetic rubber latex and a wax emulsion in an amount of the solid wax of 5 to 200 parts by weight per 100 parts by weight of the solid synthetic rubber, and, then, drying said coated paper at an elevated temperature the same as or higher than the melting point of said wax (“second polymeric layer”) (Col. 3, Lines 1-9).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the containers of Sebastian with the outer wrapper of Bourgoin, which may be a cellulose film, as the moisture proof paper formed from a paper substrate coated with the aqueous emulsion taught by Gotoh which does not allow water to permeate therethrough as taught by Gotoh. One of ordinary skill in the art would recognize that the aqueous emulsion coating would teach the second polymeric layer being a moisture barrier layer. Furthermore, one of ordinary skill in the art would recognize that the teaching of applying the aqueous emulsion to at least one surface of the paper substrate would include applying the emulsion to both sides wherein at least one of those layers would teach a layer being on an inner side of the paper substrate as required by the claim.
Regarding claim 15, Sebastian teaches the papers as discussed above with respect to claim 8. As discussed above, the base substrate may have a basis weight of 190 to 230 gsm.
Regarding claim 16, Sebastian teaches the papers as discussed above with respect to claim 8. Gotoh further teaches the paper substrates as having a weight of 40 to 200 grams per meter squared, overlapping with the claimed range (Col. 4, Lines 38-43).
Regarding claim 17, Sebastian teaches the papers as discussed above with respect to claim 8. Gotoh further teaches the aqueous emulsion, being equivalent to the second polymeric layer, as having a weight of 1 to 30 grams per meter squared, overlapping with the claimed range (Col. 4, Lines 65-66).
Regarding claim 18, Sebastian teaches the papers as discussed above with respect to claim 8. As discussed above, the thickness of the paper-based substrate is at least 0.25 mm (250 microns).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. (US 2017/0021994) in view of Bourgoin et al. (US 2019/0144197) and Gotoh et al. (US 4,117,199) as applied to claim 8 above, and further in view of Nishimura et al. (JP 2001-096670).
Regarding claims 9-10, Sebastian teaches the papers as discussed above with respect to claim 8
Sebastian and Gotoh are silent with respect to the wrapping papers further including a third polymer layer which is a heat seal layer.
Nishimura teaches a heat sealable cellophane film having excellent blocking resistance for packaging (Paragraph [0004]; Abstract). The films include a base layer of cellophane with a heat sealable layer of polyester provided on both sides of the base layer wherein the heat sealable layers are further provided with fine particles in order to increase the blocking resistance (Paragraphs [0006]; [0011]). The heat sealable films are suitable for packaging applications and may be combined with various other materials while providing suitable heat-sealing properties (Paragraphs [0011]-[0017]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the outer wrappers of Sebastian, Bourgoin and Gotoh to further include the heat-sealing layers of Nishimura which is used in combination with cellulose-based base layers and packaging applications in order to sufficiently heat seal the wrappers of Gotoh to the containers of Bourgoin.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Sebastian et al. (US 2017/0021994) in view of Bourgoin et al. (US 2019/0144197) and Gotoh et al. (US 4,117,199) as applied to claim 8 above, and further in view of Lewis et al. (US 2021/0300656).
Regarding claim 11, Sebastian teaches the papers as discussed above with respect to claim 8.
Sebastian and Bourgoin are silent with respect to the tear tape of the outer wrapper to be formed on the opening line between the lid and box portion of the containers.
Lewis teaches a container including a tear tape feature which may be attached to an outer wrapper such that when the tear tape includes a line of weakness, aligned with the opening area, in order to illustrate a temper evident feature (Paragraphs [0001]; [0005]-[0006]; [[0045]-[0048]; Figs. 1-2B).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the outer wrappers of Sebastian and Bourgoin to further include a tear tape feature aligned with the opening of the container in order to provide the containers with a temper evident feature as taught by Lewis.
Double Patenting
The nonstatutory double patenting rejection 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. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); 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); 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) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . 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) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See 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 actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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.
Claims 8-11 and 15-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-15 of U.S. Patent 12,521,957 in view of Sebastian et al. (US 2017/0021994), Bourgoin et al. (US 2019/0144197) and Gotoh et al. (US 4,117,199)
Claim 12 of U.S. Patent ‘957 teaches a container for consumer goods which includes the limitations of instant claim 8.
Claim 12 of U.S. Patent ‘957 is silent with respect to the blank comprising a first cellulose-based layer further comprising a first polymeric layer and the first polymeric layer being optimised for bonding with the second polymeric layer.
Sebastian teaches the papers as discussed above with respect to the 35 U.S.C 103 rejections of claims 8-11 and 15-18. The papers include a paper-based substrate which includes a first and second coating on both sides of the substrate which provide improved heat and pressure sealability (Paragraphs [0021]; [0024]).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form blanks of U.S. Patent ‘957 to further include a first and second coating layer on both sides of the blanks which provide improved heat and pressure sealability as taught by Sebastian.
Furthermore, applicant’s specification describes the optimised bonding being achieved such that the first polymeric layer has heat sealant properties (PGPUB, Paragraph [0024]). This is taught by U.S. Patent ‘957 and Sebastian above wherein the first and second coatings have heat and pressure sealability capabilities. As such, one of ordinary skill in the art would recognize that the first and second coatings may be optimised for bonding with other layers.
Claim 12 of U.S. Patent ‘957 is silent with respect to the outer wrapper further including a moisture barrier layer.
Gotoh teaches a process for producing a moisture and waterproof repulpable paper which are suitable as wrapping papers which do not allow water to permeate therethrough (Col. 1, Lines 5-10; Col. 2, Lines 43-45; Col. 2, Lines 52-55). The papers are formed by coating at least one side of a paper substrate (“second cellulose-based layer”) with an aqueous emulsion containing a synthetic rubber latex and a wax emulsion in an amount of the solid wax of 5 to 200 parts by weight per 100 parts by weight of the solid synthetic rubber, and, then, drying said coated paper at an elevated temperature the same as or higher than the melting point of said wax (“second polymeric layer”) (Col. 3, Lines 1-9).
Therefore, it would have been obvious to one of ordinary skill in the art before the filing of the invention to form the outer wrapper of U.S. Patent ‘957 to include the aqueous emulsion taught by Gotoh which does not allow water to permeate therethrough as taught by Gotoh.
Additionally, claims 9-11 and 15-18 are taught by the combination of U.S. Patent ‘957 and the references as discussed above with respect to the 35 U.S.C 103 rejections of claims 8-11 and 15-18.
Response to Arguments
Applicant's arguments filed 05/04/2026 have been fully considered but they are not persuasive.
On pages 7-10, applicant argues that the combination of Sebastian, Bourgoin, and Gotoh fails to teach each of the limitations of claim 8. Specifically, none of the cited references teach a first polymeric material being optimised for bonding to a second polymeric layer being on an outer wrapper.
The examiner is not persuaded by applicant’s arguments and submits that this feature would be taught by Sebastian. Firstly, the claim does not describe what method is performed in order to achieve the optimised bonding. As such, as long as a first polymeric layer is capable of being bonded to a second polymeric layer, through either a method or through the use of another layer, the limitation would be met. This is the case such that the combination teaches Sebastian having a first and second coating layers, deemed to be equivalent to the first polymeric layer, having heat and pressure sealable properties (Paragraphs [0021];[0024]). Bourgoin and Gotoh teach the application of waterproof wrappers applied to the containers of Sebastian which include a coating of an aqueous emulsion, deemed equivalent to the second polymeric layer (See Rejection above). As such, the application of the wrappers of Gotoh on the containers of Sebastian would ultimately render obvious the two coating layers being optimised for bonding to each other.
Furthermore, applicant’s specification teaches this optimisation being achieved through the first polymeric layer having heat sealing properties (Instant Specification, PGPUB, Paragraph [0024]). This is taught by Sebastian such that the first and second coating layers have heat and pressure sealing properties as discussed above. Therefore, the first and second coating layers are capable of being optimised for bonding to other layers, including a second polymeric/coating layer.
Ultimately, the examiner contends that each of the limitations of claim 8 are still taught by the combination of Sebastian, Bourgoin and Gotoh.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL P DILLON whose telephone number is (571)270-5657. The examiner can normally be reached Mon-Fri; 8 AM to 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MARIA V EWALD can be reached at 571-272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL P DILLON/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
Prosecution Insights