Detailed Office 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 .
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1–18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 12, 13, 14, and 18 of U.S. Patent No. 10,765,142. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims recite the same or obvious variants of a method of forming a pouched oral product using first and second webs of polymeric/non-woven fibers, a recess/cavity, a product composition disposed between the webs, and concurrent sealing and cutting around the product portion.
Claim 1 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent. Claims 1 and 13 of the ’142 patent recite applying a first web of non-woven fibers to a surface defining a first recess, drawing the web into the recess by vacuum or pressing, depositing a product portion into the recess, applying a second web such that the product portion is disposed between the webs, and concurrently sealing and cutting the webs around the product portion with a seal-cutter roller including a second recess aligned with the first recess.
Claim 2 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because supplying the first web of polymeric fibers to the conveyor corresponds to applying the first web of non-woven fibers to the surface defining the first recess.
Claim 3 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because rotating a web-supply roller is an obvious manner of supplying the first web used in the claimed web-forming process.
Claim 4 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because the recited drum conveyor is an obvious implementation of the surface defining the first recess used to support and advance the first web.
Claim 5 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because supplying the second web from a web-supply roller is an obvious manner of applying the second web onto the first web.
Claim 6 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because claims 1 and 13 recite sealing and cutting using a seal-cutter roller.
Claim 7 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because claims 1 and 13 recite the seal-cutter roller including a second recess configured to align with the first recess.
Claim 8 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because the second recess/cavity being aligned with the first recess/cavity would have had a corresponding size and shape sufficient to seal and cut around the product portion.
Claim 9 of the instant application is not patentably distinct from claim 1 of the ’142 patent because claim 1 expressly recites applying a vacuum to draw the first web at least partially into the first recess.
Claim 10 of the instant application is not patentably distinct from claim 8 and claim 14 of the ’142 patent because claim 8 recites molding the product portion prior to depositing, and claim 14 recites molding the product portion.
Claim 11 of the instant application is not patentably distinct from claim 8 and claim 14 of the ’142 patent because molding the product portion for deposition into the recess would have resulted in molding the product portion to a size and shape corresponding to the first recess.
Claim 12 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because moving the conveyor is an obvious implementation of the surface carrying the webs through the drawing, depositing, contacting, sealing, and cutting steps.
Claim 13 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because performing the moving during the drawing, depositing, contacting, and forming steps corresponds to the web-processing sequence recited in claims 1 and 13.
Claim 14 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because continuously moving the conveyor is an obvious implementation of the recited web-based manufacturing process.
Claim 15 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because claims 1 and 13 recite a product portion including tobacco, a tobacco substitute, or a combination thereof, and an herbal composition is an obvious tobacco-substitute composition.
Claim 16 of the instant application is not patentably distinct from claims 1 and 13 of the ’142 patent because claims 1 and 13 expressly recite a tobacco substitute.
Claim 17 of the instant application is not patentably distinct from claims 1, 12, 13, and 18 of the ’142 patent because claims 1 and 13 recite tobacco, and claims 12 and 18 further recite tobacco characteristics.
Claim 18 of the instant application is not patentably distinct from claim 13 of the ’142 patent because claim 18 recites substantially the same method as claim 13, except that the product is an herbal product and the composition is an herbal composition, which is an obvious tobacco-substitute product/composition.
Claims 1–18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8–14, and 20 of U.S. Patent No. 10,813,382 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims recite the same or obvious variations of a method of forming a pouched product using first and second webs of polymeric/non-woven fibers, a rotating drum/conveyor including recesses/cavities, a composition disposed between the webs, and sealing and cutting around the composition.
Claim 1 of the instant application is not patentably distinct from claim 1 of the ’382 patent. Claim 1 of the ’382 patent teaches applying a first web of non-woven fibers on a surface of a rotating drum defining a plurality of recesses, depositing a product portion into a recess, applying a second web such that the product portion is disposed between the webs, and sealing and cutting the webs around the product portion using a weld and cut roller having a recess corresponding to the drum recess. The recited “first cavity of a conveyor” corresponds to the recess of the rotating drum, and the simultaneous heat-cutting and heat-sealing corresponds to the sealing and cutting using the weld and cut roller.
Claim 2 of the instant application is not patentably distinct from claim 1 and claim 10 of the ’382 patent because supplying the first web to the conveyor corresponds to applying polymeric fibers forming the first web on the surface of the rotating drum.
Claim 3 of the instant application is not patentably distinct from claim 1 of the ’382 patent because supplying via a rotating web-supply roller is an obvious mechanism for providing the first web to the rotating drum.
Claim 4 of the instant application is not patentably distinct from claim 1 of the ’382 patent because the rotating drum corresponds directly to the claimed conveyor.
Claim 5 of the instant application is not patentably distinct from claim 11 of the ’382 patent because applying a second web corresponds to applying polymeric fibers forming the second web.
Claim 6 of the instant application is not patentably distinct from claim 1 of the ’382 patent because sealing and cutting using a seal-cutter roller corresponds to sealing and cutting using a weld and cut roller.
Claim 7 of the instant application is not patentably distinct from claim 1 of the ’382 patent because the weld and cut roller includes a recess corresponding to the recess of the rotating drum.
Claim 8 of the instant application is not patentably distinct from claim 1 of the ’382 patent because corresponding recesses inherently have matching size and shape to perform the sealing and cutting operation.
Claim 9 of the instant application is not patentably distinct from claim 1 of the ’382 patent because depositing into a recess of a rotating drum inherently includes drawing or positioning the web into the recess.
Claim 10 of the instant application is not patentably distinct from claim 13 of the ’382 patent because claim 13 teaches molding the product portion prior to depositing.
Claim 11 of the instant application is not patentably distinct from claim 13 of the ’382 patent because molding the product portion prior to depositing results in a product portion sized and shaped to fit within the recess.
Claim 12 of the instant application is not patentably distinct from claim 1 of the ’382 patent because the rotating drum necessarily moves during operation, corresponding to moving the conveyor.
Claim 13 of the instant application is not patentably distinct from claim 1 and claim 14 of the ’382 patent because performing the steps during movement corresponds to sealing and cutting after applying the second web while the drum advances.
Claim 14 of the instant application is not patentably distinct from claim 1 of the ’382 patent because continuous movement of the rotating drum is an inherent feature of the disclosed process.
Claim 15 of the instant application is not patentably distinct from claim 1 and claim 20 of the ’382 patent because claim 1 recites a tobacco substitute and claim 20 recites tobacco, and an herbal composition is an obvious variant of a tobacco substitute.
Claim 16 of the instant application is not patentably distinct from claim 1 of the ’382 patent because claim 1 expressly recites a tobacco substitute.
Claim 17 of the instant application is not patentably distinct from claim 20 of the ’382 patent because claim 20 recites tobacco.
Claim 18 of the instant application is not patentably distinct from claim 1 of the ’382 patent because it recites the same method with an herbal composition, which is an obvious variant of the tobacco or tobacco substitute product portion recited therein.
Claims 1–18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 6, 7, 8, 9, and 15 of U.S. Patent No. 11,375,740 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims recite the same method of forming a pouched oral product using first and second webs of polymeric/nonwoven fibers, a rotating drum/conveyor having a recess/cavity in which a composition is positioned, and sealing and cutting around the composition using a seal-cutter roller.
Claim 1 of the instant application is not patentably distinct from claim 1 of the ’740 patent. Claim 1 of the ’740 patent teaches providing a rotating drum including a surface defining a recess, positioning an oral product in the recess between a first and second nonwoven fabric, and forming the pouched oral product by rotating a weld and cut roller against the rotating drum to seal and cut the fabrics around the product, the roller including a recess aligned with the drum recess. The recited “first cavity of a conveyor” corresponds to the recess of the rotating drum, and forming by simultaneously heat-cutting and heat-sealing corresponds to the sealing and cutting using the weld and cut roller.
Claim 2 of the instant application is not patentably distinct from claim 5 of the ’740 patent because supplying the first web to the conveyor corresponds to applying the first nonwoven fabric to the rotating drum and depositing the oral product on the first nonwoven fabric.
Claim 3 of the instant application is not patentably distinct from claim 8 of the ’740 patent because supplying via a rotating web-supply roller corresponds to applying the first and second nonwoven fabrics using supply rollers.
Claim 4 of the instant application is not patentably distinct from claim 1 and claim 9 of the ’740 patent because the recited conveyor including a drum corresponds to the rotating drum.
Claim 5 of the instant application is not patentably distinct from claim 8 of the ’740 patent because supplying the second web from a web-supply roller corresponds to applying the second nonwoven fabric using a supply roller.
Claim 6 of the instant application is not patentably distinct from claim 1 of the ’740 patent because forming using a seal-cutter roller corresponds to sealing and cutting using a weld and cut roller.
Claim 7 of the instant application is not patentably distinct from claim 1 of the ’740 patent because the weld and cut roller includes a recess configured to align with the recess of the rotating drum.
Claim 8 of the instant application is not patentably distinct from claim 1 of the ’740 patent because alignment of the recess of the roller with the recess of the drum inherently requires corresponding size and shape.
Claim 9 of the instant application is not patentably distinct from claim 7 of the ’740 patent because applying vacuum to the first web corresponds to applying vacuum to the first nonwoven fabric.
Claim 10 of the instant application is not patentably distinct from claim 9 of the ’740 patent because forming the oral product prior to providing corresponds to forming/molding the oral product prior to positioning in the recess.
Claim 11 of the instant application is not patentably distinct from claim 9 of the ’740 patent because forming the composition to a size and shape of the cavity corresponds to forming the oral product prior to placement in the recess.
Claim 12 of the instant application is not patentably distinct from claim 1 of the ’740 patent because moving the conveyor corresponds to rotation of the rotating drum.
Claim 13 of the instant application is not patentably distinct from claim 1 of the ’740 patent because performing the steps during movement corresponds to forming the pouched product while the drum rotates.
Claim 14 of the instant application is not patentably distinct from claim 1 of the ’740 patent because continuous movement corresponds to continuous rotation of the drum.
Claim 15 of the instant application is not patentably distinct from claim 10 of the ’740 patent because the oral product includes tobacco extract, and an herbal composition is an obvious variant of the oral product composition.
Claim 16 of the instant application is not patentably distinct from claim 12 and claim 13 of the ’740 patent because non-tobacco materials including plant-based materials correspond to tobacco substitute compositions.
Claim 17 of the instant application is not patentably distinct from claim 10 of the ’740 patent because the oral product includes tobacco.
Claim 18 of the instant application is not patentably distinct from claim 1 of the ’740 patent because it recites the same method with an herbal composition, which is an obvious variant of the oral product composition.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER KESSIE whose telephone number is (571)272-7739. The examiner can normally be reached Monday - Thursday 7:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael H Wilson can be reached on (571) 270-3882. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A KESSIE/Examiner, Art Unit 1747
/Michael H. Wilson/Supervisory Patent Examiner, Art Unit 1747
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