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 .
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,084,230. Although the claims at issue are not identical, they are not patentably distinct from each other because they claims film with areas that are visually distinct and different peel forces.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the at least two visually-distinct contact areas not deformed out of plane must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 19 objected to because of the following informalities: “areas” should be “area.” Appropriate correction is required.
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 1-20 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. Claims 1, 5 and 11 are unclear with the use of the term “substantially.”
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, 2, 5, 7, 8, 11, 16, 18 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wilcoxen et al. (US 2017/0305104).
Regarding claim 1, Wilcoxen discloses a multi-film thermoplastic bag comprising: a first thermoplastic film (10) having a first appearance; a second thermoplastic film (10’) having a second appearance created by a pigment, the first appearance capable of differing from the second appearance; one or more separated areas (at 47) where the first thermoplastic film and the second thermoplastic film are unbonded; and a plurality of contact areas (at 44) between the first thermoplastic film to the second thermoplastic film, wherein: contact areas of the plurality of contact areas, when viewed from an outside of the first thermoplastic film of the multi-film thermoplastic bag, can have the second appearance, the contact areas of the plurality of contact areas are capable of being configured to separate before either of the first thermoplastic film or the second thermoplastic film fails when subjected to peel forces, and a respective gauge ([0076]) of the first and second thermoplastic films in the one or more separated areas between adjacent contact areas of the plurality of contact areas is substantially uniform and can have a same respective gauge as the first and second thermoplastic films in the adjacent contact areas. See Figs. 1-5; [0044]; [0060]; and [0085].
Regarding claim 2, a contact area of the plurality of contact areas comprises a continuous area extending from a first side edge of the multi-film thermoplastic bag to an opposing side edge of the multi-film thermoplastic bag. See Figs. 1-13.
Regarding claim 5, the first thermoplastic film in the one or more separated areas between adjacent contact areas of the plurality of contact areas has first physical parameters that are substantially equal to physical parameters of the first thermoplastic film in the adjacent contact areas. See Figs. 1-18.
Regarding claim 7, the one or more separated areas can have a third appearance differing from the first appearance and the second appearance. See [0044] and [0060].
Regarding claim 8, the first appearance can be a first color due to a first pigment in the first thermoplastic film; the second appearance is a second color due to a second pigment in the second thermoplastic film; the third appearance is a third color; and the multi-film thermoplastic bag is devoid of a pigment of the third color. See [0044] and [0060].
Regarding claim 11, Wilcoxen discloses a multi-layer thermoplastic bag comprising: a first thermoplastic bag comprising first and second opposing sidewalls joined together along a first side edge, an opposite second side edge, and a closed bottom edge, the first thermoplastic bag being pigmented with a first color or unpigmented; a second thermoplastic bag positioned within the first thermoplastic bag, the second thermoplastic bag comprising third and fourth opposing sidewalls joined together along a first side edge, an opposite second side edge, and a closed bottom edge, the second thermoplastic bag being pigmented with a second color; and at least two visually-distinct contact areas between the first thermoplastic bag to the second thermoplastic bag, wherein: the at least two visually-distinct contact areas, when viewed from an outside of the first thermoplastic bag, has the second color, the at least two visually-distinct contact areas are capable of being configured to separate before either of the first thermoplastic bag or the second thermoplastic bag fails when subjected to peel forces, the first and second thermoplastic bags in one or more separated areas between the at least two visually-distinct contact areas each have a substantially uniform gauge that is the same in portions of the first and second thermoplastic in the at least two visually-distinct contact areas, and the at least two visually-distinct contact areas are not deformed out of plane, insofar as claimed. See above; Figs. 1-5; [0044]; [0060]; and [0085].
Regarding claim 16, heat seals secure the first thermoplastic bag to the second thermoplastic bag, wherein the heat seals in the first thermoplastic bag have the second color and are capable of not being configured to separate before either of the first thermoplastic bag or the second thermoplastic bag fails when subjected to peel forces. See [0085].
Regarding claim 18, the one or more separate areas can have a color other than the first color or the second color. See [0044] and [0060].
Regarding claim 19, the at least two visually-distinct contact areas each comprise polygons, wherein entire an area of the polygons are contact areas. See Figs. 1-18.
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.
Claim(s) 3, 4, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Wilcoxen as applied above in further view of Kamiyama (2007/0141328).
Regarding claims 3 and 20, Wilcoxen does not disclose the pattern as claimed. Kamiyama, which is drawn to a film, discloses contact areas of a plurality of contact areas are arranged in chevron patterns; and wherein the at least two visually-distinct contact areas comprises a plurality of visually-distinct contact areas arranged in a chevron pattern. See [0024]. Thus, it 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 to have the areas of Wilcoxen be chevron shaped, as disclosed by Kamiyama, in order to have a visually distinct area from the rest of the bag that a user can identify. Moreover, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use the chevron shape, since there is no invention in merely changing the shape or form of an article without changing its function except in a design patent. See Eskimo Pie Corp. v. Levous et al., 3 USPQ 23.
Regarding claims 4 and 17, as modified above, the plurality of contact areas comprises a first subset of contact areas extending at a first angle relative to a machine direction and a second subset of contact areas extending at a second angle relative to the machine direction, wherein the second angle differ from the first angle. See Kamiyama, [0024].
Allowable Subject Matter
Claims 6, 9, 10 and 12-15 would be allowable if rewritten 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 to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached Notice of References Cited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEREK J BATTISTI whose telephone number is (571)270-5709. The examiner can normally be reached 9:00 am - 5:00 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEREK J BATTISTI/Primary Examiner, Art Unit 3734