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 .
Restriction/Election
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-15, drawn to a package.
Group II, claim(s) 16-18, drawn to a method of making a package.
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a package, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Skaatar et al. (WO 2005/108236). Skaatar discloses a package with paper and a handle comprising a reinforcement element.
During a telephone conversation with Robert Ballarini on 3/5/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
Claim 1 recites the limitation "said head surfaces." There is insufficient antecedent basis for this limitation in the claim.
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) 1-5 and 12 are rejected under 35 U.S.C. 102(a)(b) as being anticipated by Skaatar et al. (WO 2005/108236).
Regarding claim 1, Skaatar discloses a package (1), for at least one product, comprising a casing (top, bottom, sides) and a handle (14), said casing and said handle being made of paper material (pg. 10, ll. 3-5), said casing being wrapped around said at least one product in such a manner as to define two opposing end surfaces and a peripheral surface, wherein said handle comprises a strip made of said paper material, defining opposing portions fixed respectively to one and the other of said head surfaces, and comprising a reinforcing element (pg. 9, ll. 30-33; and pg. 10, ll. 1-5) fixed to said strip. See Figs. 1-8.
Regarding claim 2, said end surfaces are formed, each, by at least two wrapping flaps (3, 4) folded over each other. See Fig. 5.
Regarding claim 3, at least one of said wrapping flaps is overlapped with a respective end of said handle. See Fig. 6.
Regarding claim 4, said end is arranged between said wrapping flaps. See Figs. 5-6.
Regarding claim 5, said reinforcing element has an elongated shape and extends between said opposing portions. See Fig. 6.
Regarding claim 12, said reinforcing element is formed by means of an additional strip of said paper material superimposed on said strip and glued to said strip. See pg. 10, ll. 3-5
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) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Skaatar as applied above in further view of Janowitz (US 2,021,788).
Regarding claim 6, Skaatar does not disclose the handle as claimed. Janowitz, which is drawn to a handle, disclose a reinforcing element (3) obtained by folding a folding flap of said strip over a fold line along a longitudinal extension of the handle. See Figs. 1-9. 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 fold the handle of Skaatar, as disclosed by Julius, in order to further strengthen the handle.
Regarding claim 7, as modified above, the reinforcing element is obtained by folding two opposing folding flaps of said strip along a respective fold line along the longitudinal extension of the handle.
Regarding claim 8, as modified above, said fold line is parallel to the longitudinal extension of the handle.
Regarding claim 9, said folding flap is attached, when folded, to a central part of said strip by adhesive means (at 7).
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Skaatar as applied above.
Regarding claims 10 and 11, Skaatar discloses the claimed invention except for the claimed range. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the claimed range, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233.
Claim(s) 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Skaatar as applied above in further view of Davide (CA 2488305).
Regarding claims 13-15, Skaatar does not disclose the product as claimed. Davide, which is drawn to a package, discloses at least one product (5) that is shaped like a cylinder, or a flattened cylinder, said at least one product having a main axis, and wherein said handle extends between said opposing end surfaces along a direction parallel to said main axis; and wherein said at least one product is at least one of: toilet paper, or absorbent paper; and the product is a plurality of products arranged in at least two parallel rows with respect to said main axis, said rows defining an empty volume between the rows of products and said casing when two parallel rows are adjacent therebetween, wherein said handle extends between two adjacent parallel rows in correspondence of said empty volume. See Fig. 1. 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 product of Skaatar be that as disclosed by Davide in order to package and transport products like paper towels, etc.
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.
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, 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.
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.
/DEREK J BATTISTI/Primary Examiner, Art Unit 3734