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 Status
This Office action is in response to the amendments filed 4/13/2026. Claims 1-7 and 11-18 are currently pending. Claims 1-4 and 6-7 have been amended. Claims 8-10 have been previously canceled. Claims 11-17 have been withdrawn as a result of the restriction requirement. Claim 18 is newly added.
Claim Rejections - 35 USC § 102
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 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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sato (JP 2012-184021 A). Note that for convenience, citations to the written description of Sato refer to the attached translation.
Regarding claim 1, Sato discloses a method for manufacturing a packaging container with inlay, comprising the steps of: arranging a first layer (the bottom 12 – Fig. 2) of packaging material and a second layer (the top 12 – Fig. 2) of packaging material to form a packaging container (pg. 2, third full paragraph under the Description of Embodiments section; compare Figs. 1a and 2); positioning an inlay (20 – Fig. 2) between the first layer and the second layer of the packaging material (see Fig. 2 and see Fig. 1a); connecting at least a first region (22 of the side of 20 connected to the bottom 12 – Fig. 6b) of the inlay to the first layer of the packaging material (see Fig. 6b where 20 is attached to the bottom 12 and not to the top 12); manufacturing a packaging container by connecting the first layer and the second layer of the packaging material such that a filling opening (the opening through which 31 is inserted, see Fig. 6c) of the packaging container is formed between a second region (22 of the side of 20 facing the top 12 – Fig. 6b) of the inlay and the second layer of the packaging material (see Figs. 1b and 6b where the two 12s are connected via 11, 13, and 14); and connecting at least the second region of the inlay to the second layer of the packaging material of the packaging container subsequent to filling the packaging container (see Figs. 6c – 6f which show filling nozzle 31 being inserted through the filling opening, filling the container with A, then attaching the top side of 20 to the top 12).
Sato further discloses:
Claim 2, closing the filled packaging container by connecting the first layer and the second layer of packaging material (see Figs. 6d – 6f in view of Fig. 5 which shows the two 12s being connected at least via 20).
Claim 3, the first layer of the packaging material is arranged substantially opposite the second layer of the packaging material (see Figs. 2 and 5 which shows the two 12s substantially opposite each other); wherein the first region of the inlay is arranged substantially opposite the second region of the inlay (see Figs. 2 and 5 where the two 22s are substantially opposite each other); wherein after connecting the second region of the inlay to the second layer of packaging material, a dispensing opening (21 – Fig. 5) for dispensing packaging container contents is formed only by the inlay (see Fig. 5, the only access to the container is through 21).
Claim 4, upon connection of the first region of the inlay to the first layer of the packaging material, substantially no connection of the inlay to the second layer of the packaging material takes place (see Fig. 6b where 20 has been connected to the bottom 12 but not the top 12).
Claim 5, deforming the packaging container such that the filling opening of the packaging material is opened (the packaging container is deformed when it goes from the collapsed state depicted in Fig. 6a to the opened state depicted in Fig. 6b); and filling the packaging container with filling material (A – Fig. 6c) through the filling opening of the packaging container (see Fig. 6c).
Claim 6, supplying a plurality of interconnected inlays (see Fig. 4 which shows at least 3 20s connected together); gripping and/or holding an inlay of the plurality of interconnected inlays (though not expressly disclosed, the interconnected inlays must either be grasped (gripped) by something or be resting (held) by something); separating the gripped and/or held inlay (not clear from the translation but it is clear from comparing Figs. 2 and 4 that the interconnected inlays must be separated, also Fig. 4 depicts what appears to the lines of separation at the vertical broken lines); and positioning the separated inlay between the first layer and the second layer of packaging material (see Fig. 2).
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (US 2012-184021) in view of Russell (US 9962898 B1).
Regarding claim 7, Sato discloses essentially all of the elements of the claimed invention in claim 1.
However, Sato does not expressly disclose how the positioning takes place.
Russell teaches a similar method wherein an inlay (134 – Fig. 1) is positioned between a first layer (114 – Fig. 1) and a second layer (116 – Fig. 1) by a substantially translational displacement of the inlay, orthogonal to a direction (138 – Fog. 1) of transport of a layer of packaging material (col. 5, lines 28-21).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have positioned the inlay of Sato using the method of Russell since Sato is silent with regard to how the inlay is positioned and Russell provides a known solution.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sato (JP 2012-184021 A) in view of Ausnit (US 2002/0062925 A1).
Regarding claim 18, Sato discloses essentially all of the elements of the claimed invention in claim 1.
However, Sato does not expressly disclose how the positioning takes place.
Ausnit teaches a similar method wherein an inlay (40 – Fig. 1) is displaced such that the inlay is positioned and/or aligned substantially congruently and/or parallel to a direction of transport (from right to left in Fig. 1) of first (32 – Fig. 1) and second (34 – Fig. 1) layers of packaging material (as can be seen in Fig. 1, 40 travels with 32 and 34 from right to left).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have positioned the inlay of Sato using the method Ausnit since Sato is silent with regard to how the inlay is positioned and Ausnit provides a known solution.
Response to Arguments
Applicant's arguments filed 4/13/2026 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues that Sato does not disclose the step of connecting the inlay to one of the layers of the packaging material before manufacturing the packaging container or before filling the packaging container since Sato discloses that the inlay is connected to the layers of packaging material only after the packaging container has been manufactured and filled. Instead, before filling, the inlay is merely fixed by the side seams of the packaging container, with connection of the inlay to the layers of packaging material occurring only after filling.
In response, it is noted that fixing the inlay to the side seams of the packaging container means that the first region is connected to the first layer of the packaging material. Therefore, applicant’s argument is found to be not persuasive.
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 THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
6/1/2026
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