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 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.
Claim 6 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 6 recites the limitation “partially rigid in nature or fully rigid” and "rigid" is a relative term. It is unclear what constitutes a “partially rigid in nature or fully rigid” material since such relative value or comparisons or frame of reference are unknown in the claims. For the purpose of examination, a closure that has a shape and generally capable of maintaining that shape is considered to be “rigid.” Clarification is respectfully requested.
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) 1-7, 10, and 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal et al. (Agarwal US 2021/0077242) in view of Tarlow (US 2007/0163608).
1, 4: Agarwal teaches a cigarette packaging closure (container 10, capable of accommodating a tobacco product, see Figures 5-6), comprising: an outer tube (tube generally indicated as 11, Figure 6) comprising a first open end (end at 11c), and an opposingly configured second open end (end at 11d, which open below 11d into a cavity, see Figure 2); an inner tube (inner tube 20) comprising a tubular space (space within 20) for retaining at least one cigarette there inside (capable of retaining a cigarette within 20); wherein the outer tube is held against the inner tube by the frictional force between the outer tube (see Figure 6) and the inner tube and wherein the inner tube can slidably move within the outer tube; and a top cap (wherein the cigarette packaging closure (100) is non-cylindrical shaped;) configured to removably mate with the first open end of the outer tube (mated with the end of 11c), thereby closing the first open end of the outer tube (see Figure 6).
Agarwal teaches the claimed invention as discussed above except for the explicit teaching of the cigarette packaging closure is non-cylindrical shaped; the non-cylindrical shape for the cigarette packaging closure is selected from a group of shapes consisting of an octagon, a heptagon, a hexagon, a pentagon, a rectangle, a square, an oval, a triangle.
Tarlow teaches that the container may be constructed in a variety of sizes and shapes to accommodate a variety of item, Abstract and Figures 7-8 (which shows an oval shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal such that the teaching of a cigarette packaging closure is non-cylindrical shaped, such as an oval, is applied to Agarwal, since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
2: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 and Agarwal further teaches that the inner tube comprising a closed end, and an opposing open end (inner tube 20, having a closed at the bottom of 20 and open at the top of 21, Figures 5-6).
3: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 and Agarwal further teaches that the inner tube and outer tube are non-cylindrically shaped and have dimensions to allow the inner tube to slidably move within the outer tube (20 is capable of slidably moving relative to 10, Figures 5-6).
5: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 and the modified Agarwal-Tarlow further teaches that the top cap is noncylindrical in shape that conforms to the shape of the first open end of the outer tube (noncylindrical in shape, see claim 3, and cap 14 conforms to the shape of the open end of 11, see Figure 1 of Agarwal).
6-7: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 and Agarwal further teaches that the outer tube and the inner tube are formed of a flexible material partially rigid in nature or fully rigid to define the overall shape of the outer tube and the inner tube; the material of the outer tube and the inner tube is selected from the group of material consisting of plastic, carbon fiber, rubber, cellulose paper, metals, wood, ceramic, glass, renewable materials of plant origin, biodegradable material (resilient material such as plastic, paragraph 0037).
10: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 and Agarwal further teaches that the outer tube comprises one or more design features provided on the exterior surface for aesthetic appeal and/or decorative effect (the exterior of 11 and 14 provides a "clean" feature/aesthetic (see Figure 1)).
17, 18: Agarwal teaches a cigarette packaging closure (container 10, capable of accommodating a tobacco product, see Figures 5-6), comprising: an outer tube (tube generally indicated as 11, Figure 6); an inner tube (inner tube 20) comprising a tubular space (space within 20) for retaining at least one cigarette there inside (capable of retaining an unclaimed cigarette); wherein the outer tube is held against the inner tube by a connection means (connection means at 11e, interpreted as friction connection, sliding connection or the equivalence thereof, paragraph 0030 of Applicant’s specification); and a top cap (top cap of 10, 14, Figure 3) configured to removably mate with the first open end (mated with the end of 11c) of the outer tube, thereby closing the first open end of the outer tube; and wherein the top cap is configured to be lifted off the first open end of the outer tube when the outer tube is slidably moved relative to the inner tube (top cap 14 is capable of being lifted off the open end when the outer tube 11 is moved relative to 20, when pressure is relieved from 22) except wherein the inner tube and the outer tube are non-cylindrical shaped; the non-cylindrical shape for the inner tube and the outer tube is selected from a group of shapes consisting of an octagon, a heptagon, a hexagon, a pentagon, a rectangle, a square, an oval, a triangle.
Agarwal teaches the claimed invention as discussed above except for the explicit teaching of the cigarette packaging closure is non-cylindrical shaped; the non-cylindrical shape for the cigarette packaging closure is selected from a group of shapes consisting of an octagon, a heptagon, a hexagon, a pentagon, a rectangle, a square, an oval, a triangle.
Tarlow teaches that the container may be constructed in a variety of sizes and shapes to accommodate a variety of item, Abstract and Figures 7-8 (which shows an oval shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal such that the teaching of a cigarette packaging closure is non-cylindrical shaped, such as an oval, is applied to Agarwal, since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
19: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 17 and the modified Agarwal-Tarlow further teaches that the top cap is noncylindrical in shape that conforms to the shape of the first open end of the outer tube (noncylindrical in shape, see claim 3, and cap 14 conforms to the shape of the open end of 11, see Figure 1 of Agarwal).
20: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 17 and the modified Agarwal-Tarlow further teaches that the connection means is at least a friction connection, and a sliding connection (11e permits both sliding and friction connection, see Figure 6).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal et al. (Agarwal US 2021/0077242) in view of Tarlow (US 2007/0163608) and further in view of Sebastiani (US 5,816,264).
8: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 except the outer tube and the inner tube are made transparent to allow a user to visually see the at least one cigarette stored inside the cigarette packaging closure.
Sebastiani teaches that the tube (20) can be made with transparent material, col. 3, ll. 13-22.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal-Tarlow such that the teaching of outer tube and the inner tube are made transparent to allow a user to visually see the at least one cigarette stored inside the cigarette packaging closure were applied, in order to permit contents within the container of Agarwal-Tarlow to be inspected or for aesthetic purposes.
Claim(s) 9 and 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal et al. (Agarwal US 2021/0077242) in view of Tarlow (US 2007/0163608) and further in view of Lara, JR (Lara US 2018/0035709).
9: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 except that the inner tube and the outer tube are magnetically connected to each other such as to enable the inner tube to slidably move inside the outer tube.
Lara teaches that the detent 150 of the inner tube is attached to the outer tube via magnetic means (paragraph 0070).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal-Tarlow such that the teaching of the inner tube is attached to the outer tube via magnetic means is applied to Agarwal-Tarlow in order to permit non-permanent engagement between the inner and outer tube and also permitting the inner and outer tubes to be held in place during use or storage.
13: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 except the top cap is magnetically connected to the first open end of the outer tube.
Lara teaches that the detent (150) of the inner tube is attached to the outer tube via magnetic means (paragraph 0070).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal-Tarlow such that the teaching of Lara of magnetically connecting the inner tube to the outer tube at the top cap of Agarwal in order to permit non-permanent engagement between the inner and outer tube and also permitting the inner and outer tubes to be held in place during use or storage.
14, 16: Agarwal teaches a cigarette packaging closure (container 10, capable of accommodating a tobacco product, see Figures 5-6), comprising: an outer tube (tube generally indicated as 11, Figure 6) comprising a first open end, and an opposingly configured second open end (end at 11c end at 11d, which open below 11d into a cavity, see Figure 2); an inner tube (inner tube 20) comprising a tubular space (space within 20) configured to removably retain at least one cigarette there inside (capable of retaining an unclaimed cigarette); the inner tube (110) to slidably move inside the outer tube (see Figure 6); a top cap (top cap of 10, 14, Figure 3) configured to removably mate with the first open end (mated with the end of 11c) of the outer tube, thereby closing the first open end of the outer tube; and wherein the top cap is configured to be lifted off the first open end (14 off of 11) of the outer tube to allow access to the at least one cigarette retained inside the tubular space (capable of providing access within 11) of the inner tube except wherein the inner tube and the outer tube are non-cylindrically shaped and magnetically connected such as to enable the inner tube to slidably move inside the outer tube; the non-cylindrical shape for the cigarette packaging closure is selected from a group of shapes consisting of an octagon, a heptagon, a hexagon, a pentagon, a rectangle, a square, an oval, a triangle.
Tarlow teaches that the container may be constructed in a variety of sizes and shapes to accommodate a variety of item, Abstract and Figures 7-8 (which shows an oval shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal such that the teaching of a cigarette packaging closure is non-cylindrical shaped, such as an oval, is applied to Agarwal, since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 except the inner tube and the outer tube are magnetically connected.
Lara teaches that the detent (150) of the inner tube is attached to the outer tube via magnetic means (paragraph 0070).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal-Tarlow such that the teaching of Lara of the inner tube and the outer tube are magnetically connected in order to permit non-permanent engagement between the inner and outer tube and also permitting the inner and outer tubes to be held in place during use or storage.
15: Agarwal-Tarlow-Lara teaches the claimed invention as discussed above for Claim 14 and the modified Agarwal-Tarlow-Lara teaches that the top cap is non-cylindrical (modified in claim 14) and is slidably connected to the first open end of the outer tube (slide via 11c, g, f).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal et al. (Agarwal US 2021/0077242) in view of Tarlow (US 2007/0163608) and further in view of Bryer (US 6,070,591).
11: Agarwal-Tarlow teaches the claimed invention as discussed above for Claim 1 except the outer tube comprises one or more design features provided on the exterior surface for aesthetic appeal and/or decorative effect; the one or more design features comprise at least stickers, color patterns, three-dimensional designs, glossy design, photographs, paintings, artistic work, metal finish, tattoo, wooden pattern, textile/fabric design, and sewing patterns.
Bryer teaches a case can be made with a different finish or different finishes for the purpose of aesthetic and to appeal to various users, col. 4, ll. 51-64.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal-Tarlow such that the teaching of a case can be made with a different finish or different finishes for the purpose of aesthetic and to appeal to various users were applied to the modified Agarwal-Tarlow in order to provide aesthetic appeal for the container/case.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,103,761. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to a cigarette packaging closure, comprising: an outer tube comprising a first open end, and an opposingly configured second open end; an inner tube comprising a closed end and an opposing open end, the inner tube comprises a tubular space configured to removably retain at least one cigarette there inside; wherein the outer tube is held against the inner tube by the frictional force between the outer tube and the inner tube and wherein the inner tube is able to slidably move within the outer tube; a top cap configured to removably mate with the first open end of the outer tube, thereby closing the first open end of the outer tube; and wherein the top cap is configured to be lifted off the first open end of the outer tube when the outer tube is slidably moved relative to the inner tube except that the cigarette packaging closure is non-cylindrical.
Tarlow (US 2007/0163608) teaches that the container may be constructed in a variety of sizes and shapes to accommodate a variety of item, Abstract and Figures 7-8 (which shows an oval shape).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Agarwal such that the teaching of a cigarette packaging closure is non-cylindrical shaped, such as an oval, is applied to Agarwal, since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
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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/King M Chu/Primary Examiner, Art Unit 3735