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 Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claims recite the use of a required limitation that the second moisture content is at least 25% higher than the first moisture content. However, the claims, specification, and drawings do not provide direction (for example – a working example or data or samples or charts etc.) as how this claim limitation is met for the entire range of the moisture content of 2-30% (claim 1; claim 2: 10-30%) – such that one skilled in the art cannot determine how to make and/or use the invention. In this respect, the specification speaks in generalities – see the specification at page 5 (lines 8-27) – which is the location in the specification which discusses the requirement of “at least 25% higher”. For example, with a first moisture content of 2% the second moisture content will be 2.5% which is outside the range of 20-60% (claim 1: lines 11-13) [Wingdings font/0xE0] whereas page 5 of the instant specification recites that if the first moisture content is from 2% (lines 8-10), the second moisture content will always be 20%. Lacking further explanation from the disclosure, the relationship between the moisture contents (first and/or second) and the 25%-higher limitation cannot be enabled by one skilled in the art.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.
Claims 1-16 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.
Claim 1 is considered to be indefinite in that it is unclear what is intended when reciting “based on the pouched product” (Lns12-13). Specifically, with respect to the “pouched product” recited in the above phrase, which pouched product is referenced? For example, does this refer to the pouched product having the first moisture content (pouch + water) or to the pouched product after the application of water ((pouch + water) + water) or to a pouched product without the first-and-second moisture contents being present.
Claim 1 is considered to be indefinite for the following reason. Claim 1 recites that the second moisture content is a specific percentage “by weight based on the pouched product” (Lns12-13). The claim, however, does not clearly set forth which feature of the pouched product that the second moisture content is based upon – for example – based on the pouched product’s weight or density or size etc.
Claim 1 is considered to be indefinite in that the claim does not clearly set forth how the “at least 25% higher” requirement (Lns14-15) is met for the entire claimed range of 2-30% by weight for the first moisture content.
Claim 1 is considered to be indefinite in that the antecedent of “the total weight of the pouched product” (Ln11) is not clearly defined. What total weight is being referenced? Also, which pouched product (Ln11) is referenced? For example, does this refer to the pouched product having the first moisture content (pouch + water) or to the pouched product after the application of water ((pouch + water) + water) or to a pouched product without the first-and-second moisture contents being present.
Claim 2 is considered to be indefinite in that it is unclear what is intended when reciting “based on the pouched product” (Ln5). Specifically, with respect to the “pouched product” recited in the above phrase, which pouched product is referenced? For example, does this refer to the pouched product having the first moisture content (pouch + water) or to the pouched product after the application of water ((pouch + water) + water) or to a pouched product without the first-and-second moisture contents being present.
Claim 2 is considered to be indefinite for the following reason. Claim 1 recites that the second moisture content is a specific percentage “by weight based on the pouched product” (Lns12-13). The claim, however, does not clearly set forth which feature of the pouched product that the second moisture content is based upon – for example – based on the pouched product’s weight or density or size etc.
Claim 2 is considered to be indefinite in that the claim does not clearly set forth how the “at least 25% higher” requirement (claim 1: Lns14-15) is met for the entire claimed range of 10-30% by weight for the first moisture content.
Claim 2 is considered to be indefinite in that the antecedent of “the total weight of the pouched product” (Ln3) is not clearly defined. What total weight is being referenced? Also, which pouched product (Ln3) is referenced? For example, does this refer to the pouched product having the first moisture content (pouch + water) or to the pouched product after the application of water ((pouch + water) + water) or to a pouched product without the first-and-second moisture contents being present.
Claim 3, a broad range (“substantially tobacco-free”) together with a narrow limitation (“tobacco-free”) that falls within the broad range (“tobacco-free” falls within “substantially tobacco-free” when values in this range are very close to zero) (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claim 3 recites the broad recitation “substantially tobacco-free”, and the claim also recites “tobacco-free) which is the narrower statement of the range when values in the range are very close to zero). The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Claim 8 is considered to be indefinite in that an antecedent of “the total area” of the product contact area (Lns3-4) is not clearly defined in that such has not been previously provided for in the claim.
Claim 11, regarding the phrase "such as" (Ln3), this phrase renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 12 recites the limitation "the confinement wall" (Ln3). There is insufficient antecedent basis for this limitation in the claim.
Claim 13 is considered to be indefinite because of the following: the claim recites removing the water application tool from the user container (Ln12); however, the claim does not previously recite that the water application tool is in the user container. Specifically, claim 13 recites that the water distribution member of the water application tool is brought into contact with the pouched products in the user container. This limitation encompasses the water distribution member contacting the pouched products which are in the user container – but have a surface above a plane of a top of the user container where this surface contacts the water distribution member wherein the water distribution member then does not enter the user container.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDA GRAY whose telephone number is (571) 272-5778. The examiner can normally be reached Monday - Friday, 9 AM to 5:30 PM.
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, Phil Tucker can be reached at (571) 272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000
/LINDA L GRAY/Primary Examiner, Art Unit 1745
Prosecution Insights