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 .
The claims examined last time were elected claims 1-14 drawn to a sheet. Applicant made the election without traverse in the reply filed on 1/16/26.
Newly submitted or amended claims 5-7 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The invention originally claimed, Group I, is a sheet;
Newly submitted or amended claims 5-7, Group II, appears to be directed to a plurality of sheets.
The inventions are independent or distinct, each from the other because: Inventions I and II are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function or effect. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 5-7 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claims 5-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 15-20 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim Election was made without traverse in the reply filed on 1/16/26. An action on the merits of claims 1-3 and 8-14 follows.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 11 is finally rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Subject matter in claim 11 that was not described in the specification in such a way as to show possession of the claimed invention by the applicant is the limitation in the claim which is that the sheet of claim 1 comprises a transparent plastic sheet. There appears to be no description of the feature whatsoever in the subject application specification, much less a specification description of the feature in the full, clear, concise and exact terms required by the Statute. The examiner notes also that applicant made the claim amendment without citing the relevant specification support for it in contravention of the relevant rules. The rejection is also one for new matter inasmuch as the feature appears to be non-original.
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 11-13 are finally 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 11 is indefinite because since the features therein were not properly described in the specification as indicated in the paragraphs 4-5 rejections above, the claim cannot be properly interpreted. That is to say the scope of the claim is not clear based on the lack of adequate description of the claim features in the application specification.
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, 3 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bradley (2011/0142377). As indicated previously, the claims are interpreted for purposes of their comparison with the prior art as if claim 1 requires a sheet comprising a plurality of non-transparent strips and a plurality of transparent strips. Thus, Bradley meets all of the elements of the noted claims in that Bradley discloses a sheet (the laminated sheet used as the bag material as disclosed in at least [0022] through [0044] and Fig 4) that has all of the features of the claimed sheet.
The transparent and non-transparent strips extending in a longitudinal direction of the sheet and having a width in a transverse direction of the sheet are the transparent window portions 24 and opaque portions 26 of the Bradley sheet. As can be appreciated from Figs 1-6 of Bradley the strips (portions 24 and 26) alternate in the transverse direction of the sheet as also required in claim 1. Finally, given disclosure such as that in at least [0026] of Bradley, each non-transparent strip can have a width that is less than the width of each transparent strip.
Regarding claim 11 the sheet forming the transparent strips in Bradley appears to meet the claim requirements because the sheet is made of a transparent polymeric material as described in [0021] for example.
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) 2, 8-10 and 12-14 is/are finally rejected under 35 U.S.C. 103 as being unpatentable over Bradley. Bradley may not disclose the features of these claims, however, the prior art of record shows that these features are either conventional or well within the level of skill of one of ordinary skill in the relevant art to provide. For example, regarding claim 2, one of ordinary skill in the relevant art has the skill to provide different strip widths, including a width difference of at most 10 mm, given the teaching in Bradley [0026] and given that it is conventional to make bags of different sizes. In another example, regarding claim 8, it is conventional to form a non-transparent portion of a bag wrapper having a transparent window therein by providing a non-transparent coating over a base sheet forming the transparent window. As one example only, this expedient is shown by Bjorkengren (in Bjorkengren a window is formed by leaving an area of plastic material uncovered or only somewhat covered by a heat conductive layer, depending on the degree of transparency required of the window). Regarding claim 9, one of ordinary skill in the art has the skill to make the non-transparent coatings of any color including white. Regarding claim 10 coatings of ink are conventional. Regarding claim 12, laminates of PE and PET that are transparent are also conventional in the relevant art. Regarding claim 14 one of ordinary skill in the art has the skill to select an appropriate haze for the Bradley wrapper depending on requirements such as the degree of transparency or opacity required of the various portions of the wrapper. The examiner notes that hazes appear to be standardized as indicated by the requirements of claim 14.
Therefore, it would have been obvious to provide the sheet of Bradley with the missing features for the purpose of better adapting the sheet to form bags having specific requirements.
Applicant's arguments filed 6/10/26 have been fully considered but they are not persuasive. Applicant argues citing Bradley at [0026] that the reference does not disclose each non-transparent strip has a width less than the width of each transparent strip, but rather the width of the transparent and non-transparent strips in Bradley are equal. In making the argument, applicant appears to be referring to the disclosure in lines 7-14 of Bradley [0026], disclosure that relates to the particular embodiment shown in the Bradley drawings. However, applicant also appears to be ignoring the teaching in Bradley with regard to other disclosed embodiments, such as those described in lines 1-7 of [0026]. Such disclosure clearly includes widths of the non-transparent strips that are less than the widths of the transparent strips as was specifically pointed out in the last Office action.
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 JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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. Aviles 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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/JACOB K ACKUN/ Primary Examiner, Art Unit 3736
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