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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/835,406, filed on August 2, 2024.
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 1-9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-35 of copending Application No. 18/835,406 in view of Morlot et al. (U.S. 8,528,758). Copending Application No. 18/835,406 discloses the claimed invention but sets forth that the cam extends from the upper plate. Morlot et al. teaches that it is known to provide a cam on an upper plate (see element 31). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the invention of copending Application No. 18/835,406 with the cam extending from the upper surface, as taught by Morlot et al., in order to engage the closure.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 102
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 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 1-6, 8 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morlot et al. (U.S. 8,528,758). Morlot et al. teaches a closure assembly 1 for a package with a flexible thin-walled bag for containing fruit juices and puree, yogurt, energy drinks and the like (col. 1 lines 13-18), comprising a spout unit 5 extending along a spout axis, comprising a connection portion 7, suitable for being hermetically applied to the bag, a spout 12 and at least one spout cam portion 31, a closure 3 which is applicable to the spout unit (figures 1 and 2), comprising a cap 3 which is engageable with the spout extending along a cap axis, wherein the cap 3 comprises a cap wall at 43 comprising a lower edge in which at least one cap cam portion 73 is obtained, wherein the at least one cap cam portion 73 is at least partially complementary to the at least one spout cam portion 31 (figure 2), wherein, in a disengagement configuration, by rotating the cap about the cap axis with respect to the spout, the interaction between the at least one cap cam portion 73 and the at least one spout cam portion 31 causes an axial lifting of the cap with respect to the spout, wherein the spout unit is made in a single piece of plastics material by means of injection molding and the closure is made in a single piece of plastics material by injection molding (see note below), wherein the spout unit comprises an upper plate 21 orthogonal to the spout axis, and wherein the spout cam portion is close to the spout (figure 2).
Note: The limitations regarding the injection molding are considered process limitations within a product claim. It has been held that "even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985)
Regarding claim 2, the spout cam portion 31 defines an upper cam surface inclined with respect to the spout axis (figure 2).
Regarding claim 3, the spout unit 5 comprises two spout cam portions (figure 10) arranged symmetrically with respect to the spout axis and two diametrically opposite cap cam portions 73 are obtained in the lower edge (figure 4).
Regarding claim 4, the spout unit 5 comprises a spout locking element 23 and the closure comprises an engagement element (lower portion of 73) arranged in proximity to the lower edge, wherein, in a locked configuration, the engagement element engages the spout locking element in such a way that the spout unit and the closure are jointly engaged with each other (figure 2).
Regarding claim 5, the spout unit 5 comprises two spout locking elements 23, arranged symmetrically with respect to the spout axis (figure 10) and the closure comprises two diametrically opposite engagement elements (lower portions of element 73; figure 4).
Regarding claim 6, in a disengagement configuration, rotating the cap with respect to the spout about the cap axis, the interaction between the at least one cap cam portion 23 and the at least one spout cam portion 31, causes the cap to lift axially with respect to the spout and the engagement element disengages from the locking element (figures 1 and 2).
Regarding claim 8, the upper plate at 21 has two opposite straight edges (upper surface and lower surface joined by two leading edges and the spout cam portion 31 is made on a straight edge (upper surface).
Regarding claim 9, a package comprising a flexible thin-walled bag (col 1 lines 33-39), and the closure assembly of claim 1 (as described above), wherein the connection portion of the spout unit is hermetically applied to the bag.
Claim Rejections - 35 USC § 103
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 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 7 is rejected under 35 U.S.C. 103 as being unpatentable over Morlot et al. (U.S. 8,528,758) in view of Van Der Molen (WO 2018/194454A1). Morlot et al. discloses the claimed invention except for the handle. Van Der Molen teaches that it is known to provide a cap with a handle (see element 24). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the closure assembly of Morlot et al. with the handle, as taught by Van Der Molen, in order to allow the user to easily grasp the cap for application and removal from the spout.
Further regarding claim 7, the closure 3 comprises a handle (24 of Van Der Molen) made in one piece with the cap, wherein the handle comprises two wing portions (shown at 24 of Van Der Molen )which extend from the cap wall substantially on an imaginary plane containing the cap axis (see 24a in figure 8 of Van Der Molen), in two opposite directions, wherein said wing portions comprise a panel portion (24a of Van Der Molen ) and a reinforcement rib (24b of Van Der Molen ) integral with the panel portion, and wherein the panel portion is planar and is entirely contained in the imaginary plane containing the cap axis and the reinforcement rib is positioned at the top of the panel portion (figure 8 of Van Der Molen).
Response to Arguments
Applicant's arguments filed December 24, 2025 have been fully considered but they are not persuasive. Applicant argues that the primary reference of Morlot et al. does not teach “in a disengagement configuration, by rotation the cap about the cap axis with respect to the spout, the interaction between the at least one cap cam portion and the at least one spout cam portion causes an axial lifting of the cap with respect to the spout”. It is the examiner’s position that Morlot et al. meets this limitation of claim 18. Specifically, Morlot et al. teaches a cap cam portion 73 and a spout cam portion 31. In a disengagement configuration, by rotating the cap about the cap axis with respect to the spout (figures 1 and 2), an interaction between the at least one cap cam portion 73 and the at least one spout cam portion 31 causes an axial lifting of the cap with respect to the spout because in order for the cap cam portion 73 to move into and out of the recess defined by 23, the cap cam portion 73 must ride up and over spout cam portion 73. When the cap cam portion rides up and over spout cam portion 31, the ramp provides and upwardly directed force onto the cam cap portion causing the cap cam portion and cap to move upwardly.
Applicant states that ramp 31 acts to tighten not lift the cap. It is the examiner’s position that that the spout cam portion 31 can tighten the cap and lift the cap depending on the relative location of the cap cam portion. When the cap cam portion is located in the position shown in figure 2 the spout cam portion 31 secures the cap cam portion in the recess defined by 23. However, when the cap cam portion rides over the spout cam portion, the spout cam portion provides a lifting force to the cap.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIKI MARINA ELOSHWAY whose telephone number is (571)272-4538. The examiner can normally be reached Monday through Friday 7: 00 a.m. to 3:00 p.m..
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, Orlando E. Avilés can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NIKI M ELOSHWAY/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736
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