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 .
Election/Restrictions
Applicant’s election without traverse of Species A (Figure 2) in the reply filed on 12/01/2025 is acknowledged.
Claims 21, 34, and 42-44 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/01/2025.
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 1-4, 6, 8, 10-11, 13, 15, 19, 24, 28-30 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 recites the limitation “at least one delivery system” in line 2 and it is unclear if the delivery system recited is referring back to the delivery system in line 1. For the purpose of examination, the “at least one delivery system” is assumed to refer back to the unclaimed delivery system of line 1. Clarification is respectfully requested.
Claim 19 recites the limitation “the outer flaps of the over lapping edges” in lines 3 and 4 and lacks antecedent basis. For the purpose of examination, the above limitation is interpreted as outer flaps of over lapping edges. Clarification is respectfully requested.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 8, 10-11, 15, 19, 24, and 28-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chatelain et al. (Chatelain US 2019/0152686).
1: Chatelain teaches a package for an unclaimed delivery system (package with system shown within Figures 1-4), the package comprising: a container (container 12) comprising a wrapper (20 is a wrapper) configured to surround at least one delivery system (capable of wrapping around an unclaimed bundle of smoking articles 30, paragraph 0035), and a resealable label (label 24); wherein the wrapper is sealed by the closure of its openings (sealed by 24, at the top and side openings of 20, Figure 1) and an outer surface of the wrapper forms an outer surface of the package (outer surface of 20 forms an outer surface of the package in Figures 1-4); and an inner frame (frame 50) located inside the container; wherein the wrapper comprises a first layer comprising a paper based material (paper material comprising cardboard/paperboard, paragraph 0016), and an extraction region in the wrapper (extraction region at 26, Figure 1); wherein the label is configured to cover the extraction region (see Figure 1) and comprises a peripheral portion (peripheral of 24) that extends beyond the extraction region (beyond the region of 26, Figure 1) such that the extraction region of the wrapper is sealed (sealed, paragraph 0023); and wherein the label is peelable away from the wrapper (label 24 is peelable from the wrapper 20) in use to open the extraction region to provide access to the inside of the wrapper (provide access to 30, see Figure 1).
2: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that the label comprises a tab (tab at 24, see Figure 1 below) which is configured to be gripped by a consumer to open the container.
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3: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that the label is configured to cover a peripheral region around the extraction region when in the closed position such that the extraction region is sealed closed and configured to be impermeable (the label 24, prior to opening when attached to 20, provides a hermetic seal (paragraph 0034) around the peripheral of 24, and since 24 is resealable, the seal is capable of being sealed again).
4: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that the paper based material is a coated paper, and wherein the coated paper comprises a paper layer with a barrier coating (metallized paper, wherein the barrier coating is the metal, paragraph 0016).
8: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that the paper based material is a barrier paper, and wherein the barrier paper comprises a paper layer that is impregnated with a barrier material (metallized paper, wherein the barrier material is the metal, paragraph 0016).
10: Chatelain teaches the claimed invention as discussed above for Claim 8 and Chatelain further teaches that the barrier material is a plastic, varnish, or metal (the barrier material is metal, metallized paper, paragraph 0016).
11: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that wrapper further comprises a second layer comprising a metallized layer (metallized paper, wherein the second layer is the metal part of the metallized paper, paragraph 0016).
15: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that at least one of the following: the inner frame extends substantially the length of the wrapper (frame 50, extending substantially, over 50% the length of the wrapper, see Figures 1-3), each component of the package is formed from a material comprising the first layer of a paper based material, the wrapper has a weight of more than 70 grams per square meter, and the paper based material of the wrapper has a weight of more than 70 grams per square meter
19: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that at least one of the following: the outer flaps of the overlapping edges of the wrapper have a rectangular shape, and the outer flaps of the overlapping edge extends across a whole face of the package (the top surface of 20, at 20e to the opening where 30 is housed).
24: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that at least one of the following: the wrapper is sealed at its overlapping edges (wrapper is sealed at the edges of 24 overlapping the edges of 30), the wrapper is sealed by adhered together overlapping edges of the wrapper when the wrapper is folded to form the container, the wrapper is sealed at its overlapping edges and comprises a continuous section of adhesive extending along each of the overlapping edges of the wrapper when the wrapper is folded to form the container, and the wrapper is sealed at its overlapping edges and comprises a continuous section of adhesive extending around the whole perimeter of the inner surface of the wrapper.
28: Chatelain teaches the claimed invention as discussed above for Claim 24 and Chatelain further teaches that the sealed overlapping edges of the wrapper form a hermetic seal, such that the container is hermetically sealed before its first opening (paragraph 0034, where liner 20 is hermetically sealed before being opened for the first time).
29: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that the container comprises a tamper evident means (tamper evident means 24, where once seal 24 is opened, the adhesive will be partially weakened since being exposed to air and particulates in the air and will appear as not perfectly sealed).
30: Chatelain teaches the claimed invention as discussed above for Claim 29 and Chatelain further teaches that the tamper evident means is located on the wrapper (24 is located on 20, see Figure 1).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chatelain et al. (Chatelain US 2019/0152686).
6: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches wherein the barrier coating is a metallized layer (metallized paper, paragraph 0016) except that the barrier coating is a plastic film coating or a varnish layer.
Chatelain teaches that the container, inner frame, inner bundle, and outer wrapper may be formed from any suitable materials including, but not limited to, cardboard, paperboard, plastic, metal or combinations thereof (paragraph 0016).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chatelain such that the metallized paper above is further provided with a plastic material in order to provide moisture barrier property to the inner wrapper.
13: Chatelain teaches the claimed invention as discussed above for Claim 1 and Chatelain further teaches that the paper based paper is a coated paper, wherein the barrier coating is a metallized layer (metallized paper, paragraph 0016) except that the wrapper further comprises a third layer, and wherein the third layer comprises a metallized layer.
Chatelain teaches that the container, inner frame, inner bundle, and outer wrapper may be formed from any suitable materials including, but not limited to, cardboard, paperboard, plastic, metal or combinations thereof (paragraph 0016).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Chatelain such that the metallized paper above is further provided with a metal material/layer in order to provide moisture barrier property to the inner wrapper.
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, 10-11, 13, 15, 19, 24, and 28-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 8, 10-11, 13, 15, 18, 21, 27-30, 33, 35, 38, 44 of copending Application No. 18/730,077 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to A package for a delivery system, the package comprising: an outer container comprising an access; an inner container comprising a wrapper configured to surround at least one delivery system, the wrapper being sealed by the closure of it openings; and wherein the wrapper comprises a first layer comprising a paper based material and an extraction region in the wrapper, the inner container comprising a resealable label configured to cover the extraction region and having a peripheral portion that extends beyond the extraction region such that the extraction region of the inner container is sealed, when the label covers the extraction region; and wherein the label is peelable away from the wrapper during use to open the extraction region to provide access to the at least one delivery system except wherein the paper based material has a paper weight of less than 80 gsm.
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 reference application such that the features of paper based material has a paper weight of less than 80 gsm were omitted since omission of an element and its function is obvious if the function of the element is not desired, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KING M CHU whose telephone number is (571)270-7428. The examiner can normally be reached Monday - Friday 10AM - 6PM EST.
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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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/King M Chu/Primary Examiner, Art Unit 3735