DETAILED ACTION
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 – 9 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.
Regarding claim 1, regarding the term “basic outer packaging”. It is unclear what it means for the outer packaging to be basic.
Regarding claim 2, there is no antecedent basis for the term “at least one crease”.
Regarding claim 2, it is unclear if the “at least one crease” is the same as the “a crease” recited in claim 1 or another heretofore unrecited crease.
The term “rigid material” in claim 2 is a relative term which renders the claim indefinite. The term “rigid material” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 3, recites “an additional tab” but claim 1 from which claim 3 depends does not recite the presence of any tab making it unknown how there would be “an additional tab” since no first tab has previously been claimed to be present.
Regarding claim 6, there is no antecedent basis for the term “the back side of the chocolate packaging”.
Claims 4, 5, and 7 – 9 are rejected by virtue of their dependence on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 recites that there would be “a crease”, i.e., only one crease. Claim 2 by reciting “at most two creases” fails to further limit the subject matter of claim 1 which recites there to be only one crease. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 2, 4 – 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bovis US 2019/0077564.
Regarding claim 1, Bovis discloses a chocolate picker (prevent a user’s finger from directly contacting . . . chocolates) (paragraph [0008]) that is an integral part of packaging (12) for chocolate candies which picker (strip 14) comprises
two arms (respective ends 22), separated by a crease (folded) (paragraph [0009] and fig. 1 and 2) capable of preventing that a user's fingers do not come into direct contact with chocolate (paragraph [0018]). The chocolate picker is integrated into the chocolate packaging's basic outer packaging, inserted into the chocolate packaging, or attached to the chocolate packaging on an additional outer surface (paragraph [0031]).
Regarding claim 2, Bovis discloses the chocolate picker would have at least one crease capable of dividing said picker into two arms (fig. 2) and would be made of a rigid material (paper) (paragraph [0004] and [0032]).
With respect to the remaining recitations beginning “to enable the chocolate picker to open automatically” these are seen to be recitations regarding the intended use of the chocolate picker.
In this regard applicant’s attention is invited to MPEP 2114 which states that “an apparatus must be distinguished from the prior art in terms of structure rather than function”. That is to say, apparatus claims cover what a device is, not what a device does. If the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and then further limitations merely state, for example, the purpose or intended use of the invention, rather than any distinct structural definition of any of the claimed invention’s structural limitations, then any limitations regarding the intended use of the device are of no significance to claim construction. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim which Bovis certainly does. Further, if the prior art structure is capable of performing the intended use, then it meets the claim.
It is The Office’s position that the further limitations do not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. “to enable the chocolate picker to open automatically”, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art, that is Bovis and further that the prior art structure, which is identical and/or obvious in view of the prior art to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 4, Bovis discloses the chocolate picker includes openings for a thumb and an index finger of a user’s hand (fig. 2).
Regarding claim 5, Bovis discloses the chocolate picker is integrated into said packaging (paragraph [0031]), would be made of paperboard (paragraph [0034]), and would be separated from the chocolate packaging by perforations (paragraph [0037]).
Regarding claim 6, Bovis discloses the chocolate picker would be attached to the back side of the chocolate packaging (any portion of the outer surface of the food storage bag) (paragraph [0031]) and is perforated (paragraph [0037]).
Regarding claim 7, Bovis discloses the chocolate picker would be designed separately from the chocolate packaging and would be inserted inside the chocolate packaging (included inside the food storage bag, such as in a separate wrapped package) (paragraph [0031]).
Regarding claim 8, the chocolate picker would inherently be disposable. Further, Bovis discloses the chocolate picker would extend around the entire circumference of the chocolate packaging (paragraph [0041]), which is to say that the chocolate picker would be capable of being wrapped around pieces of chocolate inside said packaging.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Bovis US 2019/0077564.
Regarding claim 3, as disclosed in applicant’s specification the “additional tab” appears to merely comprise a lengthening of chocolate picker. Once it was known to provide a chocolate picker as disclosed by Bovis it is not seen that patentability would be predicated on the chocolate picker being lengthened to comprising an additional “tab”. Limitations relating to the length of the chocolate picker are not seen as sufficient to patentably distinguish over the prior art. The mere scaling up, in this case lengthening of a prior art chocolate picker capable of being so scaled, if such were the case, would not establish patentability in a claim to an old chocolate picker so scaled. Where the only difference between the prior art chocolate picker and the claims is a recitation of relative dimensions of the claimed chocolate picker and a chocolate picker having the claimed relative dimensions would not perform differently than the prior art chocolate picker, the claimed chocolate picker is not patentably distinct from the prior art chocolate picker (MPEP § 2144.04 IV.A.).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bovis US 2019/0077564 in view of Wang CN 203410834.
Regarding claim 9, as set forth above in the rejection of claim 8 Bovis has disclosed the chocolate picker would be capable of being wrapped around pieces of chocolate.
Claim 9 differs from Bovis in the chocolate picker being integrated with a tray with recesses included inside of the chocolate packaging.
Wang discloses a chocolate packaging which includes recesses inside of said packaging in which recesses pieces of chocolate are contained. Wang further discloses that when the chocolates have been consumed the packaging is especially suitable for storing jewelry in an orderly fashion (paragraph [0009]). To therefore substitute the cholate package of Bovis with the chocolate package of Wang in order to allow for the further use of said package as a jewelry box once the chocolates have been consumed would have been an obvious matter of choice and/or design to the ordinarily skilled artisan.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAIM A SMITH whose telephone number is (571)270-7369. The examiner can normally be reached Monday-Thursday 09:00-18:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.S./
Chaim SmithExaminer, Art Unit 1791 23 June 2026
/VIREN A THAKUR/Primary Examiner, Art Unit 1792
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