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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 14-15, 17, and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 and 4 of U.S. Patent No. 12,048,396. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 14-15, 17, and 21-23 of the instant application are generic or broader in scope to all that is recited in claims 1-2 and 4 of U.S. Patent No. 12,048,396. That is, claims 14-15, 17, and 21-23 of the instant application are anticipated by claims 1-2 and 4 of U.S. Patent No. 12,048,396. Specifically, because claims 1-2 and 4 of U.S. Patent No. 12,048,396 includes all the limitations set forth in claims 14-15, 17, and 21-23 of the instant application and further includes other features which are not claimed in this application therefore, claims 14-15, 17, and 21-23 of the instant application are broader in scope than the claims 1-2 and 4 of U.S. Patent No. 12,048,396 and anticipated by U.S. Patent 12,048,396.
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.
Claims 14-15, 17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cavanagh D698,208 in view of Godley 2013/0270330; Torkelson 2005/0236291; and Amsden 2008/0017544.
Regarding claim 14, Cavanagh discloses a cover comprising: a sleeve (Cavanagh, annotated Fig 1 below) having a closed end (Cavanagh, annotated Fig 1 below) and an open end (Cavanagh, annotated Fig 1 below) opposite the closed end (Cavanagh, annotated Fig 1 below), and a tab (Cavanagh, annotated Fig 1 below) extending from the open end (Cavanagh, annotated Fig 1 below) of the sleeve (Cavanagh, annotated Fig 1 below), the tab (Cavanagh, annotated Fig 1 below) has an outer surface and an inner surface.
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Cavanagh has been discussed above but does not explicitly teach the cover in combination with an eating utensil, the eating utensil comprises a head and a handle opposite the head, the head of the eating utensil disposed in the sleeve with the handle extending from the open end; and a portion of the handle extending over the tab; and an adhesive disposed on the inner surface, the tab is adhered to the portion of the handle extending over the tab.
Godley discloses a cover (Fig 1, #30) in combination with an eating utensil (Fig 1, #12 & #14), the eating utensil comprises a head (Fig 1, #12) and a handle (Fig 1, #14) opposite the head (Fig 1, #12), the head (Fig 1, #12) of the eating utensil disposed in a sleeve of the cover (Fig 1, #30) with the handle (Fig 1, #14) extending from the open end of the cover (Fig 1, #30) (as shown in Fig 2).
Torkelson discloses a cover (Fig 19, #130) having a sleeve (Fig 19, #154) and a tab (Fig 19, #84) extending from the sleeve (Fig 19, #154), wherein the tab (Fig 19, #84) has an adhesive (Fig 19, #76) disposed on the inner surface of the tab (Fig 19, #84).
Amsden teaches that it is old and well known in the art to seal a cover or bag (Fig 2, #101) for utensils [0021] with a folded tab (annotated Fig 2 below) and an adhesive (Fig 2, #105) in order to keep the utensils clean and sanitary. Amsden further teaches that it well known in the art for the bag (Fig 2, #101) to hold eating utensils or writing supplies such as crayons [0021].
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to insert the head (Godley, Fig 1, #12) of an eating utensil (Godley, Fig 1, #12 & #14) within the sleeve (Cavanagh, annotated Fig 1 above) of Cavanagh which would result in a portion of the handle (Godley, Fig 1, #14) extending over the tab (Cavanagh, annotated Fig 1 above) in order to keep the eating utensil (Godley, Fig 1, #12 & #14) of Godley clean and sanitary by keeping the head (Godley, Fig 1, #12) of the eating utensil (Godley, Fig 1, #12 & #14) of Godley off of a table surface.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach an adhesive (Torkelson, Fig 19, #76) to the inner surface of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh as taught by Torkelson in order to enable at least portions of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh to be secured to the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh to keep the eating utensil and cover clean and sanitary especially by closing and sealing the sleeve (Cavanagh, annotated Fig 1 above) with the tab (Cavanagh, annotated Fig 1 above) when the eating utensil is removed from the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh using the teachings or motivation of Amsden which teaches that it is well known in the art to cover a bag (Amsden, Fig 2, #101) with a tab (Amsden, annotated Fig 2 above) and an adhesive (Amsden, Fig 2, #105) to keep the interior of the bag and utensils stored within clean and sanitary. The combination of Cavanagh, Godley, and Torkelson would result in the tab (Cavanagh, annotated Fig 1 above) being adhered to the portion of the handle (Godley, Fig 1, #14) extending over the tab (Cavanagh, annotated Fig 1 above).
Regarding claim 15, modified Cavanagh discloses the combination wherein the tab (Cavanagh, annotated Fig 1 above) is semi-circularly shaped.
Regarding claim 17, modified Cavanagh discloses the combination wherein the eating utensil (Godley, Fig 1, #12 & #14) is a fork.
Regarding claim 19, modified Cavanagh discloses the combination wherein the sleeve (Cavanagh, annotated Fig 1 above) has two longitudinal edges (Cavanagh, annotated Fig 1 above) extending from the closed end (Cavanagh, annotated Fig 1 above) to the open end (Cavanagh, annotated Fig 1 above), and wherein the longitudinal edges (Cavanagh, annotated Fig 1 above) are in a parallel relationship to one another along an entirety of the longitudinal edges (Cavanagh, annotated Fig 1 above).
Regarding claim 20, modified Cavanagh discloses the combination wherein each of the longitudinal edges (Cavanagh, annotated Fig 1 above) has an inner side and an outer side, and wherein the inner sides of the longitudinal edges (Cavanagh, annotated Fig 1 above) are in a parallel relationship with one another.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Cavanagh D698,208; Godley 2013/0270330; Torkelson 2005/0236291; and Amsden 2008/0017544 and further in view of McMillan 2010/0044271.
Regarding claim 19, in another interpretation, modified Cavanagh has been discussed above but does not explicitly teach the combination wherein the sleeve has two longitudinal edges extending from the closed end to the open end, and wherein the longitudinal edges are in a parallel relationship to one another along an entirety of the longitudinal edges.
McMillan discloses a cover (Figs 9 & 10, #44) in combination with an eating utensil (Figs 9 & 10, #24) comprising a sleeve (Figs 9 & 10, #44) wherein the sleeve (Figs 9 & 10, #44) has two longitudinal edges (annotated Fig 9 below) extending from a closed end (annotated Fig 9 below) to an open end (annotated Fig 9 below), and wherein the longitudinal edges (annotated Fig 9 below) are in a parallel relationship to one another along an entirety of the longitudinal edges (annotated Fig 9 below).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the side edges (Cavanagh, annotated Fig 1 below) of the cover (Cavanagh, Fig 1) of modified Cavanagh to be longitudinal edges (McMillan, annotated Fig 9 above) that are straight and parallel to each other as taught by McMillan in order to make the cover (Cavanagh, Fig 1) of modified Cavanagh more aesthetically appealing. Further, such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. Further, the substitution of one known side edge shape for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
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Regarding claim 20, in another interpretation, modified Cavanagh discloses the combination wherein each of the longitudinal edges (McMillan, annotated Fig 9 above) has an inner side and an outer side, and wherein the inner sides of the longitudinal edges (McMillan, annotated Fig 9 above) are in a parallel relationship with one another.
Claims 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Cavanagh D698,208; Godley 2013/0270330; Torkelson 2005/0236291; and Amsden 2008/0017544 and further in view of Ma 2015/0320499.
Regarding claims 21-23, modified Cavanagh has been discussed above but does not explicitly teach the cover wherein the sleeve and the tab consists of a flexible, polymeric sheet material.
Ma teaches that it is old and well known in the art for a holder to consist of a flexible, polymeric sheet material [0117].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to fabricate the sleeve (Cavanagh, annotated Fig 1 above) and the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh from a flexible, polymeric sheet material as taught by Ma because the substitution of one known material for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Response to Arguments
Applicant's arguments filed 09/29/2025 have been fully considered but they are not persuasive.
Applicant’s arguments that “The Cavanagh reference discloses a utensil holder that includes a sleeve and a tab extending from the open end of the sleeve. The Godley reference discloses a wrap for eating utensils. As acknowledged by the Examiner, neither the Cavanagh reference nor the Godley reference discloses a tab having an adhesive, so the tab is adhered to a portion of the handle extending over the tab. To this end, the Examiner has attempted to supply such deficiency with selectively dissected elements of the Torkelson reference. The Torkelson reference teaches a cover for a writing instrument, such as a pen. This device is designed to fully enclose the writing instrument. The adhesive strip in Torkelson is used to secure the front and rear walls of the cover together at one end, thereby closing the cover and preventing the writing instrument from falling out. The adhesive in Torkelson does not adhere the cover to the writing instrument itself, and the writing instrument is not meant to extend out from the cover in the manner of the utensil handle in Cavanagh” are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In the instant case, the examiner maintains that the combination of Cavanagh, Godley, and Torkelson discloses the claim limitations of claim 1 as explained above.
The examiner maintains that it also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach an adhesive (Torkelson, Fig 19, #76) to the inner surface of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh as taught by Torkelson in order to enable at least portions of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh to be secured to the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh using the teachings and motivation of Amsden. The combination of Cavanagh, Godley, and Torkelson would result in the tab (Cavanagh, annotated Fig 1 above) being adhered to the portion of the handle (Godley, Fig 1, #14) extending over the tab (Cavanagh, annotated Fig 1 above).
Applicant’s arguments that “Applicant's claimed invention requires the adhesive to be on the inner surface of the tab to adhere the tab to the portion of the utensil handle extending from the sleeve and over the tab. The purpose of this specific arrangement is to secure the utensil within the sleeve while allowing the handle to project from the sleeve for easy access and handling” are not persuasive.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In the instant case, the examiner maintains that attaching an adhesive (Torkelson, Fig 19, #76) to the inner surface of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh as taught by Torkelson would enable at least portions of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh to be secured to the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh.
Applicant’s arguments that “First, Applicant respectfully submits that a lack of motivation exists to modify the Cavanagh cover with the adhesive of the Torkelson device. A person of ordinary skill in the art would be motivated, at best, to use the adhesive to secure the tab to the sleeve or cover itself, thereby using the tab to close the sleeve, similar to how Torkelson closes its pen cover. This modification would result in a closed pouch that either fully encloses the utensil or uses adhesive to secure the closure, rather than a device that selectively secures the tab to the handle portion extending from the sleeve” are not persuasive.
The examiner maintains that Amsden provides motivation for combining the Cavanagh cover (Cavanagh, Fig 1) with the adhesive (Torkelson, Fig 19, #76) of the Torkelson device in order to keep the cover of Cavanagh clean and sanitary. The examiner maintains that a person of ordinary skill in the art would recognize that when eating utensils are removed from the cover (Cavanagh, Fig 1) of modified Cavanagh folding the tab (Cavanagh, annotated Fig 1 above) and sealing the tab (Cavanagh, annotated Fig 1 above) to the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh an adhesive (Torkelson, Fig 19, #76) would be beneficial to keep the interior of the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh clean and sanitary in case a person wanted to reinsert a utensil within the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh when the person is not using the utensil or if a person wanted to reuse the cover (Cavanagh, Fig 1) with new eating utensils.
Applicant’s arguments that “Second, Applicant submits that the Torkelson reference teaches away from Applicant's claimed invention. The teaching of the Torkelson reference is specifically directed to enclosing a writing instrument and securing the cover walls together. This purpose is fundamentally different from the goal of the Cavanagh device, which is a holder that permits the utensil handle to extend.
To apply Torkelson's teaching directly to Cavanagh would suggest closing the open end of the sleeve by adhering the tab to the sleeve. This resulting structure defeats the purpose of the Cavanagh device, which is to provide a holder for a utensil whose handle extends from the sleeve, and it certainly fails to suggest the inventive step of securing the tab to the exposed handle. Finally, Applicant submits that the resulting combination does not achieve Applicant's intended function. A reconstructed apparatus resulting from incorporating the adhesive of Torkelson into the devices of Cavanagh and Godley in a manner consistent with Torkelson's function (i.e., closing the cover) would not be suitable for carrying out the task for which Applicant’s inventive concept is intended, namely, providing a utensil holder that securely retains the utensil while allowing the handle to extend freely and be stabilized by the adhesion of the tab to the handle” are not persuasive.
The examiner maintains that the Amsden teaches that it is old and well known in the art for a bag or cover (Amsden, Fig 2, #101) to be used to store eating utensils or writing utensils such as crayons [0021].
The examiner maintains that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The examiner maintains that the motivation of attaching an adhesive (Torkelson, Fig 19, #76) to the inner surface of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh as taught by Torkelson is to enable at least portions of the tab (Cavanagh, annotated Fig 1 above) of modified Cavanagh to be secured to the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh to keep the eating utensil and cover clean and sanitary especially by closing and sealing the sleeve (Cavanagh, annotated Fig 1 above) with the tab (Cavanagh, annotated Fig 1 above) when the eating utensil is removed from the sleeve (Cavanagh, annotated Fig 1 above) of modified Cavanagh using the teachings or motivation of Amsden which teaches that it is well known in the art to cover a bag (Amsden, Fig 2, #101) with a tab (Amsden, annotated Fig 2 above) and an adhesive (Amsden, Fig 2, #105) to keep the interior of the bag and utensils stored within clean and sanitary. The combination of Cavanagh, Godley, and Torkelson would result in the tab (Cavanagh, annotated Fig 1 above) being adhered to the portion of the handle (Godley, Fig 1, #14) extending over the tab (Cavanagh, annotated Fig 1 above).
In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Cavanagh, Godley, Torkelson and Amsden would have readily understood how the eating utensil (Godley, Fig 1, #12 & #14) of Godly would be placed within the cover (Cavanagh, Fig 1) of Cavanagh and the adhesive (Torkelson, Fig 19, #76) of Torkelson would be placed on the tab (Cavanagh, annotated Fig 1 above) of Cavanagh using the teachings and motivation of Amsden without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 11am-7:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached on 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN K BARNETT/ Primary Examiner, Art Unit 3631