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 .
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.
Claims 1-7, 9-13, 15 and 17-20 are finally rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 1, lines 6-7 and claim 13, lines 3-4, the Markush group is a group, not individual alternatives, and the “or a polymer should be --and a polymer--.
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.
Claims 1-7 and 9 are finally rejected under 35 U.S.C. 103 as being unpatentable over Perl et al. (8,196,372) in view of Desmond (3,696,921), Lips (11,952,190) and Zerial (10,183,767). Perl et al. discloses a batch (10) that comprises at least two containers (14) and a strip (30) which holds the containers together, wherein each of the containers has a body and a bottom aligned in a main direction, the strip covering the batch at the peripheral wall of the bodies of the containers. The strip is paper (see column 5, lines 14-29), but not described as particularly semi-extensible paper, which is commonly and conventionally kraft paper, and of a single layer. However, Desmond discloses a single layer kraft paper in general used in the packaging art (see column 2, lines 19-23) to define a securing strip (22), the securing strip of Desmond has at least a portion of at least one face including a coating (silicone material or other suitable material, see column 2, lines 19-23). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of Perl et al. with a single layer kraft paper securing strip including a coating in the manner of Desmond as claimed, as such a modification would predictably provide a batch secured by a securing strip made therewith with properties expected from the change in material, including securing of the ends of the strip together (see column 2, lines 5-18).
Lips discloses a paper-based material strip (20) may include a securing coating including a wax or a polymer (see column 4, lines 19-48 and 65-67, and column 5, lines 1-19). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of Perl et al. modified by Desmond with a paper securing strip including a coating of a material in the manner of Lips as claimed, as such a modification would predictably provide a batch secured by a securing strip made therewith with properties expected from the change of material, including securing the ends of the strip together. It has been held to be within the level of ordinary skill in the art to select a known material on the basis of its suitability for the intended use as an obvious matter of design choice. See In re Leshin, 125 USPQ 416. As to the limitation of “semi-extensible paper”, Zerial discloses “kraft paper” is a term that obviously encompasses “semi-extensible kraft paper” known to one of ordinary skill in the art (see column 4, lines 42-45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the kraft paper strip of Perl et al. in view of Desmond from a semi-extensible kraft paper as claimed, as such a modification would predictably provide a batch secured by a kraft paper securing strip made therewith with properties expected from the change in material of semi-extensible kraft paper, one of several interchangeable types indicated by Zerial.
As to claims 2-5, 7 and 9, the various claimed paper properties are considered conventional within normal qualities of kraft paper. The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the claimed product and appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112(V). “The PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same”. The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA1980)(quoting In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
As to claim 6, Perl et al. disclose a single strip encircling the main bodies of the containers. It has been held that omission of an element (any other strip) and its function in a combination where the remaining elements perform the same function as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Claims 1-7 and 9 are finally rejected under 35 U.S.C. 103 as being unpatentable over Perl et al. (8,196,372) in view of Desmond (3,696,921), Lips (11,952,190) and Lembo (7,780,886). Perl et al. discloses a batch (10) that comprises at least two containers (14) and at least one strip (30) which holds the containers together, wherein each of the containers has a body and a bottom aligned in a main direction, the at least one strip covering the batch at the peripheral wall of the bodies of the containers. The at least one strip is paper (see column 5, lines 14-29), but not described as particularly semi-extensible paper, which is commonly and conventionally kraft paper, and the strip being of a single layer. However, Desmond discloses a single layer kraft paper in general used in the packaging art (see column 2, lines 19-23) to define a securing strip (22), the securing strip of Desmond has at least a portion of at least one face including a coating (silicone material or other suitable material, see column 2, lines 19-23). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of Perl et al. with a single layer kraft paper securing strip including a coating in the manner of Desmond as claimed, as such a modification would predictably provide a batch secured by a securing strip made therewith with properties expected from the change in material, including ease of separation of individual strips (see column 2, lines 23-30).
Lips discloses a paper-based material strip (20) may include a securing coating including a wax or a polymer (see column 4, lines 19-48 and 65-67, and column 5, lines 1-19). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of Perl et al. modified by Desmond with a paper securing strip including a coating of a material in the manner of Lips as claimed, as such a modification would predictably provide a batch secured by a securing strip made therewith with properties expected from the change of material, including securing the ends of the strip together. It has been held to be within the level of ordinary skill in the art to select a known material on the basis of its suitability for the intended use as an obvious matter of design choice. See In re Leshin, 125 USPQ 416. As to the limitation of “semi-extensible paper”, Lembo discloses “kraft paper” is a term that encompasses conventional “semi-extensible kraft paper” (see column 6, lines 28-46, made by International Paper Company). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the kraft paper strip of Perl et al. in view of Desmond from a semi-extensible kraft paper as claimed, as such a modification would predictably provide a batch secured by a kraft paper securing strip made therewith with properties expected from the change in material of semi-extensible kraft paper, a conventional kraft paper type indicated by Lembo.
As to claims 2-5, 7 and 9, the various claimed paper properties are considered conventional within normal qualities of kraft paper. The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the claimed product and appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112(V). “The PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same”. The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA1980)(quoting In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
As to claim 6, Perl et al. disclose a single strip encircling the main bodies of the containers. It has been held that omission of an element (any other strip) and its function in a combination where the remaining elements perform the same function as before involves only routine skill in the art. In re Karlson, 136 USPQ 184.
Claim 10 is finally rejected under 35 U.S.C. 103 as being unpatentable over the art as applied to claim 1 above, and further in view of Stein (3,930,578). The previous art employed does not address an additional adhesion means formed at a contact zone where the strip is applied to the containers. However, Stein discloses a similar strip (12) including adhesion means (adhesive) between the strip and the contact zone (see claim 22). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of the previous combination with an additional adhesion means in the manner of Stein as claimed, as such a modification would predictably increase securement between the containers and the strip.
Claim 11 is finally rejected under 35 U.S.C. 103 as being unpatentable over the art as applied to claim 1 above, and further in view of FR 3101331. The previous art employed does not address a handle. However, FR 3101331 disclose a handle (3) of a similar strip. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of the previous combination with a handle in the manner of FR 3101331 as claimed, as such a modification would predictably provide easier carrying of the batch.
Claims 12 and 15 are finally rejected under 35 U.S.C. 103 as being unpatentable over the art as applied to claim 1 above, and further in view of DE 10 2016116737. The previous employed art does not disclose sub-batching the batch. However, DE 10 2016116737 does (see Figure 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of the previous combination with sub-batches in the manner of DE 10 2016116737 as claimed, as such a modification would predictably provide smaller batches to handle individually.
As to claim 15, the packaging installation of DE 10 2016116737 may be used to provide the previously claimed combination.
Claims 13 and 17-20 are finally rejected under 35 U.S.C. 103 as being unpatentable over Desmond (3,696,921) in view of Lips (11,952,190) and one of Zerial (10,183,767) and Lembo (7,780,886). Desmond discloses a retaining strip (22) comprising a single layer of kraft paper for holding together a batch of at least two containers (envelopes 16), the retaining strip of Desmond has at least a portion of at least one face including a coating (silicone material or other suitable material, see column 2, lines 19-23). Desmond does not disclose the coating being of a joining nature. However, Lips discloses a paper-based material securing strip (20) may include a securing coating including a wax or a polymer (see column 4, lines 19-48 and 65-67, and column 5, lines 1-19). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of Desmond with the paper securing strip including a coating of securing material in the manner of Lips as claimed, as such a modification would predictably provide a batch secured by a securing strip made therewith with properties expected from the change in material, including securing ends of the band together. Desmond does not disclose kraft paper being of the conventional semi-extensible type. As to the limitation of “semi-extensible paper”, Zerial discloses “kraft paper” is a term that obviously encompasses “semi-extensible kraft paper” known to one of ordinary skill in the art (see column 4, lines 42-45), while Lembo discloses “kraft paper” is a term that encompasses conventional “semi-extensible kraft paper” (see column 6, lines 28-46, made by International Paper Company). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the kraft paper strip of Desmond from a semi-extensible kraft paper as claimed, as such a modification would predictably provide a batch secured by a kraft paper securing strip made therewith with properties expected from the change in material of semi-extensible kraft paper, one of several interchangeable types indicated by either one of Zerial and Lembo.
As to claims 17-20, the various claimed paper properties are considered conventional. The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the claimed product and appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112(V). “The PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same”. The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA1980)(quoting In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
Claims 14 and 16 are finally rejected under 35 U.S.C. 103 as being unpatentable over Perl et al. (8,196,372) in view of Desmond (3,696,921) in view of Zerial (10,183,767). Perl et al. disclose providing at least two containers (14), each container comprising a generally vertical body and a generally horizontal bottom, grouping together the at least two containers so as to be aligned in a horizontal main direction (see Figures 1a-1d), providing a paper strip (30) wrapping the batch to exert a force on the batch to secure the batch in a fixed condition. The strip is paper (see column 5, lines 14-29), but not described as particularly semi-extensible paper, which kraft paper is commonly and conventionally, and of a single layer. However, Desmond discloses a single layer kraft paper in general used in the packaging art (see column 2, lines 19-23) to define a securing strip (22). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the batch of Perl et al. with a single layer kraft paper securing strip in the manner of Desmond as claimed, as such a modification would predictably provide a batch secured by a securing strip made therewith with properties expected from the change in material. As to the limitation of “semi-extensible paper”, Zerial discloses “kraft paper” is a term that obviously encompasses “semi-extensible kraft paper” known to one of ordinary skill in the art (see column 4, lines 42-45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the kraft paper strip of Perl et al. in view of Desmond from a semi-extensible kraft paper as claimed, as such a modification would predictably provide a batch secured by a kraft paper securing strip made therewith with properties expected from the change in material of semi-extensible kraft paper, one of several interchangeable types indicated by Zerial.
the various claimed paper properties are considered conventional within normal qualities of kraft paper. The USPTO is not equipped to perform specialized tests upon prior art devices in order to determine an inherent property of a prior art device. Once a reference teaching the claimed product and appearing to be substantially identical is made the basis of a rejection, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112(V). “The PTO can require an applicant to prove that the prior art product does not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102 or prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same”. The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA1980)(quoting In re Best, 562 F. 2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
Applicant’s arguments with respect to claims 1-7 and 9-20 as amended have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant has limited the coating to comprise any one of varnish, lacquer, a heat-seal coating, a wax and a polymer. The newly applied reference to Lips discloses a holding strip of components may be comprised of a coating of wax or polymer to secure ends of the strip together. Accordingly, the added Markush group limitation of equivalent coatings of claims 1 and 13 are met by the additional teachings of Lips
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 BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG
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