DETAILED ACTION
Status of the Application
Receipt is acknowledged of Applicant’s claimed invention, filed 26 October 2023, in the matter of Application N° 18/384,195. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
No additions, amendments, or cancellations have been made to the originally-filed claims. No new matter has been added.
Thus, claims 1-14 represent all claims currently under consideration.
Information Disclosure Statement
No Information Disclosure Statements (IDS) have been filed for consideration.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by THC & CBD Gummy Molds | Custom Silicone Molds; sold by www.vectormolds.com (herein referred to as “Vector”; image first appeared online on or before 7 December 2018).
Vector discloses and depicts that the following THC/CBD gummies are able to be prepared from its molds:
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The foregoing gummies are taught as THC/CBD gummies, thereby meeting the compositional limitations of claim 2.
Regarding the recited shape, claim 1 is expressly met.
The above gummies are individual bodies having a top surface and opposite bottom surface. The top and bottom surfaces are connected via a side wall that is in communication with both surfaces (appears as a channel that orbits the equator of the torus).
The gummies are donut (torus) shaped and have a central opening.
Around and formed into the top surface of the gummies are a plurality of recesses, each of which communicate across the top surface of the gummy, from the central opening (first end) to the outer, sidewall end (second end).
Each of the recesses clearly extends into the top surface and defines a plurality of body sections, thereby allowing the gummy to be separable into substantially equal sections of the edible gummy material.
The Examiner acknowledges the recitation of the claimed composition being separable by tearing. However, the Examiner respectfully submits that the manner in which the recited composition is separated is not at issue; only the compositional and structural elements of the claimed invention.
The limitations of claims 3 and 4 recite that the recesses will have a lower surface defining a bottom thereof (i.e., bottom of the recess) and that said lower surface will be “U-shaped”. The Examiner submits that the practiced gummies meet this structural limitation.
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The limitations of each of claims 5-8 recite that the second (outer) end of each recess extends between the top surface and bottom surface. The following closeup of the practiced gummy depicts this structural limitation:
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Each of the limitations of claims 9-12 are also depicted in the above close-up. Therein, the lower surface of each recess (i.e., the floor of each recess) is shown as sloping down towards the outside of the gummy. The sloping starts higher on the first end (starting from the central hole end) and slopes downward and away toward the second (outer) end of the gummy.
Lastly, the limitations of claims 13 and 14 are expressly disclosed by each of the pictures above. Each shows the plurality of recesses extending radially from the central opening of the gummy to the sidewall on the outer perimeter of the gummy. That is, all recesses would originate from a central point in the middle of the opening.
Thus, the Vector reference is considered to meet each of the instantly claimed limitations.
Nonstatutory 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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Zusman U.S. Design Patent No. D1,038,574 S (reference patent), in view of THC & CBD Gummy Molds | Custom Silicone Molds; sold by www.vectormolds.com (herein referred to as “Vector”; image first appeared online on or before 7 December 2018). Although the claims at issue are not identical, they are not patentably distinct from each other.
At the outset, the Examiner directs Applicants to MPEP §804(II)(B)(7) regarding the rare instances when double patenting maybe at issue between an issued design patent and a pending utility patent.
The limitations of instant claims 1-14 are discussed above.
Reference claim 1 discloses: the ornamental design for a gummy, as shown and described. Figures 1-7 provide added structural design description to the claimed gummy.
Reference Figure 1: Instant Figure 2:
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The disclosure in the reference patent is considered to read on each of the structural limitations recited by instant claims 1 and 3-14. The compositional limitation recited by claims 1-14 of a “gummy” is considered to teach the instantly recited “edible material” and “gummy composite material” limitations.
Where Zusman is deficient is with respect to the pharmaceutical/nutritional supplement component recited by claim 2.
Despite this deficiency, the Examiner submits that the disclosure would raise to the level of an obvious variant of the instantly claimed composition, particularly in view of the teachings provided by Vector, discussed above.
Thus, were the published ‘574 patent available as prior art, the Examiner respectfully submits that it would minimally raise a clear showing of prima facie obviousness over the instant claimed edible gummy composition.
Claims 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Zusman U.S. Design Patent No. D1,038,576 S (reference patent), in view of THC & CBD Gummy Molds | Custom Silicone Molds; sold by www.vectormolds.com (herein referred to as “Vector”; image first appeared online on or before 7 December 2018). Although the claims at issue are not identical, they are not patentably distinct from each other.
At the outset, the Examiner directs Applicants to MPEP §804(II)(B)(7) regarding the rare instances when double patenting maybe at issue between an issued design patent and a pending utility patent.
The limitations of instant claims 1-14 are discussed above.
Reference claim 1 discloses: the ornamental design for a gummy, as shown and described. Figures 1-7 provide added structural design description to the claimed gummy.
Reference Figure 1: Instant Figure 2:
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The disclosure in the reference patent is considered to read on each of the structural limitations recited by instant claims 1 and 3-14. The compositional limitation recited by claims 1-14 of a “gummy” is considered to teach the instantly recited “edible material” and “gummy composite material” limitations.
Where Zusman is deficient is with respect to the pharmaceutical/nutritional supplement component recited by claim 2.
Despite this deficiency, the Examiner submits that the disclosure would raise to the level of an obvious variant of the instantly claimed composition, particularly in view of the teachings provided by Vector, discussed above.
Thus, were the published ‘576 patent available as prior art, the Examiner respectfully submits that it would minimally raise a clear showing of prima facie obviousness over the instant claimed edible gummy composition.
All claims have been rejected; no claims are allowed.
Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Jeffrey T. Palenik whose telephone number is (571) 270-1966. The Examiner can normally be reached on 9:30 am - 7:00 pm; M-F (EST).
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert A. Wax can be reached on (571) 272-0623. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey T. Palenik/
Primary Examiner, Art Unit 1615