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 .
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 3, 8 and 9 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. When describing that the two paper layers are connected applicant’s specification states that “not connected” specifically means “that they are not glued or tacked together ...” See pg. 4, ll. 14-22. Moreover, it appears that applicant’s invention would not function if the two paper layer were completed disconnected at all times. It appears that, at most, the two paper layers are only disconnected until the two layers are separated to a certain point. See Fig. 4. Further clarification is required.
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 3, 8 and 9 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. Applicant claims that “the two paper layer are not connected to each other to form connected paper layers” - this unclear as paper layers (4) and (8) appear to be at least eventually connected as shown in applicant’s Fig. 4. Further clarification is required.
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.
Claims 3, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by David (US 2021/0061519).
Regarding claim 3, David discloses a paper sack (20) comprising: a first open end (of sleeve 26; Fig. 1-A); and a closed second end (36 of receptacle 30) opposite the first open end (Fig. 1-A), the first open end and the second closed end being spaced apart from each other by a length of the paper sack (Fig. 1-A), wherein the paper sack is configured such that the second closed end is moveable away from the first open end to increase the paper sack to a second length (Fig. 1-B), further comprises two paper layers ([0041]) arranged such that two paper layers are slidable inside one another, wherein the first open end is formed by a first paper layer (26) of the two paper layers and the second closed end (36) is formed by a second paper layer (30) of the two or more paper layers, the two paper layer (26, 30) are not connected (insofar as disclosed - not tacked or glued) to each other to form connected paper layers (Figs. 1-A and 1-B).
Regarding claim 8, David discloses a first end of the each of the two paper layers face the first open end of the paper sack (Fig. 1-A), and are different distance from the first open end of the paper sack (Fig. 1-B).
Regarding claim 9, David discloses the two paper layers (26, 30) are arranged such that one of the two paper layers (30) is further inside the paper sack than a second of the two paper layers (26; Fig. 1-B), and wherein a first end of the one of the two paper layers (30) is relatively further away from the first open end of the paper sack than a first end of the second of the two paper layers (26; Fig. 1-B).
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive. Applicant argues that David does not disclose “the two paper layer are not connected to each other to form connected paper layers.” The Office respectfully disagrees as it appears that applicant’s invention would not function if the two paper layer were completed disconnected at all times. It appears that, at most, the two paper layers are only disconnected until the two layers are separated to a certain point. See applicant’s Fig. 4. Moreover, applicant’s specification defines “not connected” as “not glued or tacked together ...” See pg. 4, ll. 14-22. As such, it is the Office’s position that David sufficiently discloses the claimed invention.
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 DEREK J BATTISTI whose telephone number is (571)270-5709. The examiner can normally be reached 9:00 am - 5:00 pm M-F.
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, Nathan Newhouse can be reached at 571-272-4544. 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.
/DEREK J BATTISTI/Primary Examiner, Art Unit 3734
Prosecution Insights