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 .
DETAILED ACTION
This Office action has an attached requirement for information under 37 CFR 1.105. A complete reply to this Office action must include a complete reply to the attached requirement for information. The time period for reply to the attached requirement coincides with the time period for reply to this Office action.
The amendment dated 19 August 2024 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the vent (claim 31) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
Independent claims 1, 28, and 34 limit the delivery package to be “configured to send the disposal container from a subject prescribed the unwanted pharmaceutical formulation, or an agent thereof, to a remote location for disposal of the unwanted pharmaceutical formulation” Examiner interprets this as requiring the package to be capable of being sent.
Claim 27 limits the delivery package to be “pre-addressed and pre-paid for delivery to a remote location capable of disposing of pharmaceutical formulations.” Examiner interprets this “pre-addressed..” limitation as Nonfunctional Descriptive Material per MPEP2111.05. In this case, the address and payment functions do not pertain to the structure of the apparatus and are instead drawn to the method or process of delivering. Therefore the “pre-addressed and pre-paid” limitations are given weight as intended use.
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) 18, 19, 22, 23, 26, and 27 is/are rejected under 35 U.S.C. 102a1 as being anticipated by public use, sale, or other availability as admitted in papers filed 19 February 2025 and interview dated 6 March 2025 in related application 18/929,114.
Prior to 30 September 2020 the “Gone for Good™ campaign included a “Deterra LP pouch and a postcard were placed in clear sealed packaging. The sealed package was mailed via United States Postal Services (USPS) Marketing Mail1.” The Deterra LP pouch included two water soluble pods containing activated carbon 2. Also, as it was admitted to be “mailed”, it was plainly capable of being sent3 .
Thus the system for disposing (i.e. Gone for Good™) including pharmacological agent activity mitigation component (activated carbon) disposal container (pouch) and liquid impermeable delivery package (clear sealed packaging) as called for in claim 18 was in public use, sale, or otherwise available to the public.
Regarding claim 19: the pouch having two water soluble pods containing activated carbon amount to “pre-loaded” as claimed.
Regarding claim 22 “activated carbon” is admitted.
Regarding claim 23 “two water soluble pods containing activated carbon” is admitted.
Regarding claim 26 “pouch” is admitted.
Regarding claim 27: the Gone for Good™ system is plainly capable of being pre addressed and paid.
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 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) 18, 22, 24, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over public use, sale, or other availability as admitted in papers filed 19 February 2025 and interview dated 6 March 2025 in related application 18/929,114 in view of US20090180936 ANDERSON
Prior to 30 September 2020 the “Gone for Good™ campaign included a “Deterra LP pouch and a postcard were placed in clear sealed packaging. The sealed package was mailed via United States Postal Services (USPS) Marketing Mail.” The Deterra LP pouch included two water soluble pods containing activated carbon. Also, as it was admitted to be “mailed”, it was plainly capable of being sent .
Thus the system for disposing (i.e. Gone for Good™) including pharmacological agent activity mitigation component (activated carbon) disposal container (pouch) and liquid impermeable delivery package (clear sealed packaging) was in public use, sale, or otherwise available to the public.
The Gone for Good™ system differed from the invention of claim 24 in the feature of the free-form carbon, and from claim 25 in the feature of the sequestering agent.
ANDERSON described a system for disposing pharmaceutical including mitigation component (carbon) container (18/12) and sequestering agent (gelling agent )
Gone for Good ™ represents a “base” system which differs from the claimed invention in the substitution of mitigation component/container/sequestering agent combination for the mitigation component/container. The substituted components and their functions were known in the art as shown by ANDERSON; one of ordinary skill in the art could have substituted the ANDERSON system for the Deterra LP pouch, and the results of the substitution would have been predictable. Therefore the invention of claim 18 is unpatentable in view of KSR B Simple Substitution of One Known Element for Another To Obtain Predictable Results.
Regarding claim 22: ANDERSON fig 2. Substitution of the ANDERSON system for the Deterra LP pouch would necessarily include the components of ANDERSON.
Regarding claim 24: ANDERSON ¶0038. Substitution of the ANDERSON system for the Deterra LP pouch would necessarily include the components of ANDERSON.
Regarding claim 25: gelling agent ( fig 2) amounts to sequestering agent. Substitution of the ANDERSON system for the Deterra LP pouch would necessarily include the components of ANDERSON.
Claim(s) 21 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over public use, sale, or other availability as admitted in papers filed 19 February 2025 and interview dated 6 March 2025 in related application 18/929,114 in view of US20120024724 BEARDSALL.
Prior to 30 September 2020 the “Gone for Good™ campaign included a “Deterra LP pouch and a postcard were placed in clear sealed packaging. The sealed package was mailed via United States Postal Services (USPS) Marketing Mail.” The Deterra LP pouch included two water soluble pods containing activated carbon. Also, as it was admitted to be “mailed”, it was plainly capable of being sent .
Thus the system for disposing (i.e. Gone for Good™) including pharmacological agent activity mitigation component (activated carbon) disposal container (pouch) and liquid impermeable delivery package (clear sealed packaging) was in public use, sale, or otherwise available to the public.
The Gone for Good™ system differed from the invention of claims 20-21 in the features of the superabsorbent and sheet of porous material impregnated.
BEARDSALL—in the same field of endeavor-described a system for disposing liquid medicine including, inter alia, an absorbent component (¶0041) including sheet of porous material (airlaid cellulose) impregnated with absorbent (superabsorbent polymer). The BEARDSALL system is disclosed as being beneficial for disposing of spray medicines.
It would have been obvious to one of ordinary skill in the art to have modified the Gone for Good™ system to have included –additionally, in the same mailed system—the system of BEARDSALL—including the absorbent component as called for in claim 21 ; and including sheet of porous material impregnated with superabsorbent as called for in claim 20. One would have been motivated to make the combination in order to enable the customer to process nasal sprays in addition to other medicines such as pills.
Claim(s) 34-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over public use, sale, or other availability as admitted in papers filed 19 February 2025 and interview dated 6 March 2025 in related application 18/929,114 in view of US20120024724 BEARDSALL.
Prior to 30 September 2020 the “Gone for Good™ campaign included a “Deterra LP pouch and a postcard were placed in clear sealed packaging. The sealed package was mailed via United States Postal Services (USPS) Marketing Mail.” The Deterra LP pouch included two water soluble pods containing activated carbon. Also, as it was admitted to be “mailed”, it was plainly capable of being sent .
Thus the system for disposing (i.e. Gone for Good™) including pharmacological agent activity mitigation component (activated carbon) disposal container (pouch) and liquid impermeable delivery package (clear sealed packaging) was in public use, sale, or other available to the public.
The Gone for Good™ system differed from the invention of claim 34 in the feature of the absorbent component, and from claims 35-36 in the features of the superabsorbent and sheet of porous material impregnated.
BEARDSALL—in the same field of endeavor-described a system for disposing liquid medicine including, inter alia, an absorbent component (¶0041) including sheet of porous material (airlaid cellulose) impregnated with absorbent (superabsorbent polymer). The BEARDSALL system is disclosed as being beneficial for disposing of spray medicines.
It would have been obvious to one of ordinary skill in the art to have modified the Gone for Good™ system to have included –additionally, in the same mailed system—the system of BEARDSALL—including the absorbent component as called for in claim 34 ; including superabsorbent as called for in claim 35 and/or including sheet of porous material impregnated with absorbent as called for in claim 36. One would have been motivated to make the combination in order to enable the customer to process nasal sprays in addition to other medicines such as pills.
Claim(s) 34, 35, and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over public use, sale, or other availability as admitted in papers filed 19 February 2025 and interview dated 6 March 2025 in related application 18/929,114 in view of US11141763 BAREFOOT
Prior to 30 September 2020 the “Gone for Good™ campaign included a “Deterra LP pouch and a postcard were placed in clear sealed packaging. The sealed package was mailed via United States Postal Services (USPS) Marketing Mail.” The Deterra LP pouch included two water soluble pods containing activated carbon. Also, as it was admitted to be “mailed”, it was plainly capable of being sent .
Thus the system for disposing (i.e. Gone for Good™) including pharmacological agent activity mitigation component (activated carbon) disposal container (pouch) and liquid impermeable delivery package (clear sealed packaging) was in public use, sale, or other available to the public.
The Gone for Good™ system differed from the invention of claim 34 in the feature of the absorbent component, and from claims 35 and 37 in the features of the superabsorbent and the absorbent contained in water soluble film or paper.
BAREFOOT described a system for disposing pharmaceutical including mitigation component (denaturing agent col. 5 line 48 “The denaturing agent acts to deactivate the medications rendering them unfit for consumption”) container (18) and an absorbent component, being superabsorbent (col. 4 line 5) and absorbent contained in water soluble film or paper (col. 5 lines 41-43).
Gone for Good ™ represents a “base” system which differs from the claimed invention in the substitution of mitigation component/container/absorbent component combination for the mitigation component/container. The substituted components and their functions were known in the art as shown by BAREFOOT; one of ordinary skill in the art could have substituted the BAREFOOT system for the Deterra LP pouch, and the results of the substitution would have been predictable. Therefore the invention of claim 34 is unpatentable in view of KSR B Simple Substitution of One Known Element for Another To Obtain Predictable Results.
Furthermore, the BAREFOOT system includes the superabsorbent (col. 4 line 5) and the absorbent contained in water soluble film or paper(col. 5 lines 41-43) as called for in claims 35 and 37. Substitution of the BAREFOOT system for the Deterra LP pouch would necessarily include the components of BAREFOOT.
Claim(s) 28-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over FOWLER US8979724 in view of HAGIHARA US20030071059 and public use, sale, or other availability as admitted in papers filed 19 February 2025 and interview dated 6 March 2025 in related application 18/929,114 in view of US20120024724 BEARDSALL.
FOWLER described a system for disposing pharmaceutical comprising mitigation component (carbon-abstract) container comprising a sealable pouch (col. 3 line 49) but differs from the claimed invention in the features of the removable cap for sealing the container and the delivery package. FOWLER describes a vent (col. 6 lines 50-54) as being desirable.
HAGIHARA is analogous art because it is concerned with containers; and describes a sealable pouch with vent integrated in the cap.
One of ordinary skill in the art could have substituted the sealable pouch with vent integrated in the cap for the sealable container having vent of FOWLER and the results would have been predictable, therefore the modification of FOWLER to have sealable pouch with vent integrated in the cap would have bene obvious in view of KSR B.
The system of FOWLER-as modified-still lacks the delivery package.
Thus system of FOWLER-as modified-amounts to a "base" device upon which the claimed invention can be seen as an "improvement;"
The prior art (i.e. Gone for Good™) contained a "comparable" device (i.e. Deterra LP) that has been improved in the same way as the claimed invention (i.e. combined with a postcard and placed in clear sealed packaging); one of ordinary skill in the art could have applied the known "improvement" technique in the same way to the "base" device and the results would have been predictable to one of ordinary skill in the art; Therefore the invention of claim 28 us unpatentable in view of KSR C Use of Known Technique To Improve Similar Devices (Methods, or Products) in the Same Way.
Regarding claim 29: see FOWLER at e.g. col. 8 lines 29-30 where liquid is disclosed. Moreover, the container would plainly house some volume of fluid in the form of air.
Regarding claim 30: FOWLER col. 3 lie 66 and as the HAGIHARA container is designed to hold liquid, it is inherently impermeable.
Regarding claim 31: modification of the FOWLER system to have the container taught by HAGIHARA would include the cap having a vent.
Regarding claim 32-33: FOWLER describes the adsorbing agent (carbon) and the activated carbon pod (130/140/150—col. 6 lines 65-67)
Requirement for Information Under 37 CFR 1.105
As shown above at 6, Applicant has admitted prior activity which Examiner has found to be anticipatory to at least some claims.
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
Prior to 24 May 2023 did Applicant advertise, sell, or otherwise make available to the public:
A system for disposing unwanted pharmaceutical including delivery package?
A system for disposing unwanted pharmaceutical including a sheet of porous material impregnated with superabsorbent?
A delivery package with absorbent component?
A system for disposing unwanted pharmaceutical including sequestering agent?
A system for disposing unwanted pharmaceutical including container having removable cap?
A system for disposing unwanted pharmaceutical including removable cap having a vent.
If yes to any of a-f above, did any such advertising, sale, or other activity take place prior to 12 September 2022?
24 May 2022?
12 September 2021?
24 May 2021?
In response to this requirement, please provide the names of any products or services that have incorporated the claimed subject matter.
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
The timing fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to the requirement. This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Janine M KRECK whose telephone number is (571)272-7042. The examiner can normally be reached telework: M-F 0600-1530 EST.
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, Nicole Coy can be reached on 5712725405. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Janine M Kreck/Primary Examiner, Art Unit 3672
1 papers filed 19 February 2025 in related application 18/929,114, page 2 at 9b.
2 Interview 6 March 2025 in related application 18/929,114
3 Moreover, although the “send the disposal container from a subject prescribed the unwanted pharmaceutical formulation, or an agent thereof, to a remote location” is given minimal weight as noted above; the Gone for Good™ was mailed from an agent of the subject (i.e. Deterra or other mailer was acting as agent) to a remote location for disposal (i.e. the customer’s house)