DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Common practice of telephoning to present a proposed examiner’s amendment for compact prosecution is not permitted because it appears applicant has legal representation but a valid power of attorney has not been filed in the present application. Providing representative information in an Application Data Sheet (ADS) does not constitute a power of attorney. See 37 CFR 1.76(b)(4) and MPEP § 408. For information on appointing a power of attorney, see MPEP § 402.02 et seq.
Claim Rejections - 35 USC § 112
Claims 1-4, 6-8, and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, a second chamber is introduced, then later in the claim, the language “the housing defining a secondary opening defined by a second rupturable area on the top wall, wherein the secondary opening provides access to a secondary chamber corresponding thereto” creates indefiniteness because it is not clear if a second secondary chamber is being introduced or “a secondary chamber” should be “the secondary chamber.”
For the purposes of examination, the latter is assumed.
Claim Rejections - 35 USC § 102
(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.
Claim(s) 14 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wolfson (US 2002/0197592).
Regarding claim 14, Wolfson discloses a multi-chamber container, comprising:
a housing 10 defining a plurality of chambers (compartments 15), three are shown in fig. 6;
the plurality of chambers comprising of a primary chamber and at least one secondary chamber (three compartments are shown);
each of the chambers are substantially enclosed by side walls, door at 20, and back wall at 74 to hold a product that can be dispensed through the corresponding door, [0041];
each of the chambers has a respective user-openable port, door 20, fig. 6, to provide access to the inside of each respective chamber;
each of the ports have a different user-recognizable indicia at 45, fig. 6, [0040-0041],
and the housing (the query is made using the recreational apparatus [0041] the display card includes the query, end of [0027]) having a visible display that presents the user with a question with at least two answer choices, each answer choice having one of said indicia, the correct answer choice corresponding to the user-recognizable indicia corresponding to the port that holds the prize (primary port), the identity of the primary and secondary ports not being distinguishable by the user (all ports are the same except for the indicia) [0041].
Claim(s) 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Propes (US 4955503).
Regarding claims 14 and 15, Propes discloses a multi-chamber container, capable of being used to provide an educational function, comprising:
a housing comprising a primary chamber and a secondary chamber,
the primary chamber being substantially enclosed to hold a dispensable product therein, the secondary chamber being substantially closed and empty (if a user drinks all of the liquid from one side or if one side is filled with liquid and then subsequently, the second side of Propes is filled with liquid, then at some point in time the limitation: “wherein the primary chamber is filled with a fluid and the secondary chamber is empty’” is met)
each of the primary and secondary chambers having a respective selectable and user-openable primary port 28 and secondary port 30, fig. 3, to access the inside of the respective primary and secondary chambers, each of the primary and secondary ports having a different user-recognizable indicia (as seen in fig. 1, one indicia says “diet cola” and the other says “Reg. cola”.
Propes further discloses a display disposed on an external surface of the housing (see text in fig. 1, the text is the display); the housing having a visible or device readable display (fig. 1, the housing has a display reading “boston” and “gles” which are external text on a surface of the housing. While the specific combination of text shown in the figures of Propes are not presented as a traditional question and answers, text can be used as required by a user. For example, in coding, one might use text from a newspaper to create a unique message other than the text presented in the newspaper.
With this in mind, the text on the display of Propes is capable of being used as a presentation of a question and two answer choices, letters occurring in the text also appear at the indicia at the ports such that the limitation of claim 15: “the display consisting of the question and the two answer choices” is met.
Applicant’s claimed structure is not patentable over the available prior art, in addition, the claimed indicia is not unique and does not function with the structure only provides instruction for use.
According to the MPEP 2111.05, To be given patentable weight, the printed matter and associated product must be in a functional relationship. MPEP 2111.05 Section I, Part B. gives example of evidence against a functional relationship. The example given indicated that indicia on a product (cards) that gives instructions for how to use the product itself does not pertain to the structure of the apparatus and is instead drawn to the method or process of playing a game.
In the instant application, the text gives instructions for making a selection, that is an answer to a question. With this in mind, the printed matter in the instant application does not pertain to the structure of the apparatus but rather a method or process for playing a game and is not given patentable weight and because Propes teaches the claimed structure and printed matter as claimed, Propes anticipates claim 3.
Claim Rejections - 35 USC § 103
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Propes as applied to claim 15 above, and further in view of Chan et al. (US 2014/0091001).
Regarding claim 16, the references applied above teach all of claim 15, as applied above. The references applied above do not teach that the display comprises a bar code or QR code.
Chan is analogous art in regard to packaging with indicia presented to a user on the packaging, fig. 1A-1D.
Chan teaches that a QR code 8 is used to present a user with information or a query [0060].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the indicia of Propes to have QR indicia in order to provide a more interactive product as per the teaching of Chan [0121].
The limitation “the primary identifier and the at least one secondary identifier will be displayed on a mobile device when the bar code is scanned by the mobile device” recites intended use of the printed matter.
According to MPEP 2114, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Since the Propes teaches all the structural limitations as claimed by applicant it would follow that it would be capable of performing the recited functions, for example, the text is capable of being captured with a mobile device camera which would display the identifiers on the mobile device.
Response to Arguments
Applicant's arguments filed 2 September 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the indicia limitations were ignored, examiner disagrees. The indicia limitations were addressed in the previous office action and are addressed herein.
Propes, as applied above, teaches enough indicia in the claimed locations that the indicia taught by Propes could be used as claimed since text can be interpreted as desired by a user. The text of Propes could be interpreted as a question and answers.
Applicant further argues that the indicia has a direct functional relationship with the substrate because the indicia indicates to a user to open a correct chamber. Examiner disagrees since the question and answer presented suggest an action on another part of the structure, i.e. which port to open, yet instructions on a card might indicate that a user should roll a dice, these are merely instructions and operations. The headband indicia cited by applicant (Gulack) changes the structure and function of the hat. Suggesting which port might be open does not change the structure of the container nor does choosing either a correct or an incorrect answer. In addition, a user learning something does not affect the structure of the container or cause the user to make a significant modification to the structure like aligning indicia of the hat.
With this in mind, applicant’s arguments are not found persuasive.
Allowable Subject Matter
Claims 1-4, 6-8 and 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and with a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) which 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.
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 1-4, 6-8, 10, 14-16 and rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 13-15, and 22, of U.S. Patent No. 11930943. Although the claims at issue are not identical, they are not patentably distinct from each other because :
instant application
US patent No. 11930943
claim 1 requires a “consumable product” and a “rupturable area”
claim 12 requires a liquid consumable substance
claim 1 requires a liquid and a sealing membrane, claim 2 depends from claim 1 and recites the indica found in the last clauses of claim 1 of the instant application.
claim 22 anticipates claim 1 of the instant invention because it recites all the limitations of claim 1 except for minor differences where claim 1 is broader than claim 22.
Claims 1 and 2 of ‘943 recite the same structure of claim 1 of the instant application except for the differences noted above. Because a consumable product is broader than a liquid and because sealing membranes are rupturable, claim 1 of ‘943 anticipates claim 1 of the instant application.
claim 3 requires a bar code or a QR code
claim 3 requires a bar code and anticipates the alternative of a bar code of claim 3 of the instant application.
claim 4 is the same requiring a cylindrical housing
claim 4 is the same requiring a cylindrical housing
claim 5 is withdrawn
claim 5 is substantially the same
claim 6 is the same requiring the secondary chamber to be fused to the top wall
claim 6 is the same requiring the secondary chamber to be fused to the top wall
claims 7 and 8 are the same as claim 7 and 8 of ‘943
claim 10 is withdrawn
claim 9 is the same as claim 10 of the instant application
claim 14 dispensable product
claim 13 a liquid and requires a sleeve
claim 14 of the instant invention is broader than claim 13, claim 13 of ‘943 anticipates claim 14 of the instant invention
claim 15 of the instant application requires “text”
claim 14 of ‘943 recites that a question is presented that inherently includes some sort of text
claim 16 requires a bar code or a QR code
claim 15 requires a bar code and anticipates the alternative of a bar code of claim 16 of the instant application.
claim 20 is the same as claim 16 of ‘943
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 MOLLIE L IMPINK whose telephone number is (571)270-1705. The examiner can normally be reached Monday-Friday (7:30-3:30).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MOLLIE LLEWELLYN IMPINK
Primary Examiner
Art Unit 3799
/MOLLIE IMPINK/Primary Examiner, Art Unit 3799