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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 14, 2025 has been entered.
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.
Claim 10 is rejected under 35 U.S.C. 112(bas 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 line 2, “the contact zone” lacks antecedent basis, and should be --a contact zone--, as it is its initial definition. Also in line 2, “the retaining strip” lacks antecedent definition.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
Claim 10 includes the recitation “additional adhesion means”, which is given its broadest reasonable interpretation.
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, 9, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Perl et al. (8,196,372) in view of Desmond (3,696,921) 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 ease of separation of individual strips (see column 2, lines 23-30). 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 claim 14, to merely provide the claimed batch as a combination of Perl et al. and Desmond and Zerial would not be inventive.
As to claims 2-5, 7, 9 and 16, 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, 9, 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Perl et al. (8,196,372) in view of Desmond (3,696,921) 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). 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 claim 14, to merely provide the claimed batch as a combination of Perl et al. and Desmond and Lembo would not be inventive.
As to claims 2-5, 7, 9 and 16, 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 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 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 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 rejected under 35 U.S.C. 103 as being unpatentable over Desmond (3,696,921) in view of 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 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).
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. Those references would be Desmond as further considered relative to its disclosed coating, and the adhesion means of newly cited Stein. Furthermore, claim 10 has been found to be indefinite under 112(b).
This action is non-final in view of the new grounds of rejection.
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