Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
It is noted that the IDS filed 10/07/2024 contains an extremely large number of references for consideration by the Examiner. If the applicant and/or applicant's representative are aware of any particular reference or portion of a reference in the list which the examiner should take pay particular attention to it is requested that it be specifically pointed out in response to this Office action.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 2 and 7 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Derr (U.S Patent No. 6162516).
Regarding claim 2, Derr discloses an oral pouch product comprising:
a porous pouch wrapper (by reference sign 13, fig. 8 and column 9, lines 11-24);
an inner filling material between layers of the porous pouch wrapper (Abstract and fig. 8);
at least one seam between the layer of the porous pouch wrapper (by reference signs 1617, figs. 8-9 respectively); and
an unbonded edge outward of the at least one seam, the unbonded edge including, an unbonded area between the layers of the porous pouch wrapper (section above reference signs 16-17, figs. 8-9 respectively).
Regarding claim 7, Derr discloses the inner filling material comprises tobacco (Abstract).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 3-4, 6 and 11-13 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Derr (U.S Patent No. 6162516).
Regarding claim 3, Derr discloses the at least one seam with a width (see figs. 8-9). Since the width of the seam is a result effective variable (at least effect the volume of the pouch). It would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the claimed range.
Regarding claim 4, Derr discloses the unbonded edge (see figs. 8-9). Since the distance from the seam would affect the amount of volume of the pouch and the sturdiness of the seam; it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to a desired distance for a desired volume/sturdiness and arrive to the claimed width range.
Regarding claim 6, Derr provides adhesive for attachment of tobacco container and/or other convenient place suggest that a seam can be an adhesive seal (column 12, lines 30-43). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use adhesive seal provided as a seam.
Regarding claims 11-12, Derr discloses the oral pouch is dimension to fit in the oral cavity of a user’s mouth (Abstract and fig. 2). Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to perform routine experimentation to arrive to the dimension and weight of the oral pouch to fit in the oral cavity and arrive to a range overlapping with the claimed ranges.
Regarding claim 13, Derr discloses the oral pouch product is D-shaped (size view of fig. 7). Furthermore, change in shape would be a matter of choice which a person of skill in the art would have found obvious absent persuasive evidence that a particular configuration of the claimed container was significant (see In re Dailey, 357 F.2d 669, 149 USPQ 47(CCPA 1966)).
Claim 5 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Derr (U.S Patent No. 6162516) in view of Richison et al. (U.S Patent No. 6021624).
Regarding claim 5, Deer does not expressly disclose the seam is a heat seal. However it would have been obvious to one of ordinary skill in the art at the time the invention was made to use a conventional heat seal as taught by Richison as a closure means (column 7, lines 19-22).
Claim 9 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Derr (U.S Patent No. 6162516) in view of Strickland et al. (U.S Pub. No. 20050244521).
Regarding claim 9, Derr does not expressly disclose the filling material includes capsules. Strickland discloses using gel capsule composition wherein the capsule encapsulates the compositions [0231]. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have the filling material includes capsules.
Claims 8, 10, 14-21 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Derr (U.S Patent No. 6162516) in view of Winterson et a. (U.S Patent No. 20070095356).
Regarding claim 14, Derr does not expressly disclose a liner applied to the wrapper. Winterson discloses applying a liner to the porous pouch wrapper to reduce staining the web (Abstract and [0024]). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use the liner as taught by Winterson.
Regarding claim 15, Winterson discloses the liner includes at least one flavorant (Abstract).
Regarding claim 16, Winterson discloses a coating applied to the porous pouch wrapper [0026].
Regarding claim 17, Winterson discloses the coating includes at least one flavorant (Abstract).
Regarding claims 18-19, Winterson discloses the inner filling material includes vitamins or caffeine [0019].
Regarding claim 20, Winterson discloses the inner filling material includes a botanical material (rose hips), a binder (honey), a sweetener and a flavorant [0019].
Regarding claim 21, Winterson discloses the inner filling material is in loose or solid form [0019].
Regarding claims 8 and 10, Winterson discloses the inner filling material includes non-tobacco botanical material [0019][0061]; therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to use non-tobacco botanical material as taught by Winterson as the inner filling material.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered but they are not persuasive.
Applicant essentially argues that Derr is silent as to a porous pouch wrapper because Derr contemplates that the shield maybe semi-permeable or permeable, stating, “semi-impermeable” means that the material is less permeable than a porous pouch (tea bag) (col. 9, lines 11-25). Applicant concluded that Derr teaches away from a shield containing holes, as shown in the embodiment of fig.5a, and specifically recites that “this embodiment is less preferred with respect to protection”. This argument is not persuasive because, as Applicant pointed out, Derr clearly recites that embodiments can be semi-permeable or permeable and can include small holes, pores, or micro pores (col. 9, lines 11-25); therefore, Derr discloses embodiment with porous pouch wrapper. Although Derr has preferred embodiment with respect to protection, Derr also discloses embodiment with holes might be less preferred with respect to protection, it may offer chemicals to contact the inner oral tissues at a higher localized concentration.
Applicant also argues the function of tearaway string 16 is to exposed the tobacco and therefore one of skilled in the art would not select a porous pouch wrapper because it would not benefit from reduced contact between the dip and a user’s mouth of Derr. Applicant concluded that Derr does not teach or suggest “ a porous pouch wrapper”, much less a porous pouch wrapper that includes a seam and unbonded edge as claimed. As explained above this argument is not persuasive because Derr discloses a porous pouch wrapper as claimed (col. 9, lines 11-25) and at least one seam between the layer of the porous pouch wrapper (by reference sign 16, fig. 8); and
an unbonded edge outward of the at least one seam, the unbonded edge including, an unbonded area between the layers of the porous pouch wrapper (section above reference sign 16, fig. 8).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/PHU H NGUYEN/Examiner, Art Unit 1747