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 .
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,128,659. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,128,659 encompass or include that which is recited in the claims of the present patent application.
Regarding claim 21, U.S. Patent No. 12,128,659 discloses a laminate container comprising: a body having a cavity and a peripheral portion that defines a seal; the body including a laminate sheet including an outer paper layer, a middle barrier layer joined
with the outer layer, and an inner layer formed of a plastic material joined with the middle barrier
layer; wherein the middle barrier layer comprises recycled aluminum (claims 1, 3, 8, 13 and 20).
Regarding claim 22, U.S. Patent No. 12,128,659 discloses wherein the paper is recycled paper (2, 14 and 20).
Regarding claim 23, U.S. Patent No. 12,128,659 discloses wherein the recycled paper is embossed forming embossment lines (claims 1, 2 and 13-15).
Regarding claim 24, U.S. Patent No. 12,128,659 discloses wherein the embossment lines are spaced in an amount of 0.5mm or less (claims 1, 2 and 13-15).
Regarding claim 25, U.S. Patent No. 12,128,659 discloses wherein the plastic material of the inner layer includes ethylene vinyl alcohol copolymer (EVOH) and/or polyethylene (PE) (claims 9-13, 19 and 20).
Regarding claim 26, U.S. Patent No. 12,128,659 discloses wherein at least one of: the outer paper layer has a thickness of from 90 to 110 µm; the middle barrier layer has a thickness of from 180 to 280 µm; and the inner layer has a thickness of from 40 to 60 µm (claims 4-6 and 16-18).
Regarding claim 27, U.S. Patent No. 12,128,659 discloses wherein the recycled aluminum of the middle barrier layer is in the form of a foil (claims 3, 8, 13 and 20).
Regarding claim 28, U.S. Patent No. 12,128,659 discloses the container is a vial (claims 1-20).
Regarding claim 29, U.S. Patent No. 12,128,659 discloses wherein the body has a bottom and a top with a spout having a notch (vial; claims 1-20).
Regarding claim 30, U.S. Patent No. 12,128,659 discloses wherein the body includes a second laminate sheet including an outer paper layer, a middle barrier layer joined with the outer layer, and an inner layer formed of a plastic material joined with the middle barrier layer, the laminate sheet and the second laminate sheet being joined at the peripheral portion (claims 1, 13 and 20).
Regarding claim 31, U.S. Patent No. 12,128,659 discloses a body having a cavity and a peripheral portion that defines a seal; the body including a laminate sheet including an outer paper layer, a middle barrier layer joined with the outer layer, and an inner layer formed of a plastic material joined with the middle barrier layer; wherein the outer paper layer includes a plurality of embossment lines; and wherein adjacent embossment lines of the plurality of embossment lines are disposed spaced apart from one another by 0.5 mm or less (claims 1, 13 and 15).
Regarding claim 32, U.S. Patent No. 12,128,659 discloses wherein the paper is recycled paper (claims 2 and 14).
Regarding claim 33, U.S. Patent No. 12,128,659 discloses wherein the inner layer is formed of EVOH and/or linear low density polyethylene (LLDPE) (claims 9, 13 and 19).
Regarding claim 34, U.S. Patent No. 12,128,659 discloses wherein the middle barrier layer is formed of recycled aluminum (claims 3 and 13).
Regarding claim 35, U.S. Patent No. 12,128,659 discloses wherein the outer paper layer has a thickness of from 90 to 110 µm (claims 4 and 16).
Regarding claim 36, U.S. Patent No. 12,128,659 discloses wherein the middle barrier layer has a thickness of from 180 to 280 µm (claims 5 and 17).
Regarding claim 37, U.S. Patent No. 12,128,659 discloses wherein the inner layer has a thickness of from 40 to 60 µm (claims 6 and 18).
Regarding claim 38, U.S. Patent No. 12,128,659 discloses the container in the form of a vial (claims 1-19).
Regarding claim 39, U.S. Patent No. 12,128,659 discloses wherein the body includes a second laminate sheet including an outer paper layer, a middle barrier layer joined with the outer layer, and an inner layer formed of a plastic material joined with the middle barrier layer, the laminate sheet and the second laminate sheet being joined at the peripheral portion (claims 1 and 13).
Regarding claim 40, U.S. Patent No. 12,128,659 discloses wherein the middle barrier layer comprises silicon dioxide (SiO₂) or titanium dioxide (TiO₂) (claim 3).
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.
Claims 21-23 and 25-30 are rejected under 35 U.S.C. 103 as being unpatentable over Ohman (US 2017/0151765).
Regarding claims 21 and 27, Ohman discloses a laminate container comprising a body having a cavity and a peripheral portion that defines a seal (Figs. 4a-4d; paragraph [0081-0085]); the body including a laminate sheet including an outer paper layer (paper layer 11), a middle barrier layer (layer 13) joined with the outer layer, and an inner layer (layer 14) formed of a plastic material joined with the middle barrier layer (paragraphs [0068-0069]); and the middle barrier layer can be formed of aluminum foil (paragraphs [0019] and [0062]).
Ohman fails to specifically teach the aluminum is recycled aluminum.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aluminum in Ohman to be recycled aluminum, if so desired, in order to make the laminate container more environmentally friendly, and further since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 22, Ohman fails to specifically teach the paper is recycled paper. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the paper in Ohman to be recycled paper, if so desired, in order to make the laminate container more environmentally friendly, and further since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 23, Ohman discloses wherein the outer paper layer includes a plurality of embossment lines (Fig. 1c, grooves 17).
Regarding claim 25, Ohman discloses the plastic material of the inner layer including EVOH and/or polyethylene (paragraphs [0068-0069]).
Regarding claim 26, Ohman fails to teach the outer paper layer having a thickness of from 90 to 110 µm, the middle barrier layer having a thickness of from 180 to 280 µm, and the inner layer having a thickness of from 40 to 60 µm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thicknesses of the outer paper layer, the middle barrier layer and the inner layer in Ohman to have the outer paper layer having a thickness of from 90 to 110 µm, the middle barrier layer having a thickness of from 180 to 280 µm, and the inner layer having a thickness of from 40 to 60 µm, 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 absence of showing unexpected results. MPEP 2144.05 (II).
Regarding claim 28, Ohman discloses a vial (paragraphs [0081-0085]).
Regarding claim 29, Ohman discloses the body has a bottom and a top with a spout having a notch (Fig. 4a or 4d).
Regarding claim 30, Ohman discloses wherein the body includes a second laminate sheet including an outer paper layer, a middle barrier layer joined with the outer layer, and an inner layer formed of a plastic material joined with the middle barrier layer (Fig. 4b), the laminate sheet and the second laminate sheet being joined at the peripheral portion (Fig. 4b, portion 52).
Claims 24 and 31-40 are rejected under 35 U.S.C. 103 as being unpatentable over Ohman (US 2017/0151765) in view of Sasaki (JP2006225004).
Regarding claims 24 and 31, Ohman discloses a laminate container comprising a body having a cavity and a peripheral portion that defines a seal (Figs. 4a-4d; paragraph [0081-0085]); the body including a laminate sheet including an outer paper layer (paper layer 11), a middle barrier layer (layer 13) joined with the outer layer, and an inner layer (layer 14) formed of a plastic material joined with the middle barrier layer (paragraphs [0068-0069]); and wherein the outer paper layer includes a plurality of embossment lines (Fig. 1c, grooves 17).
However, Ohman fails to specifically teach adjacent embossment lines of the plurality of embossment lines being disposed spaced apart from one another by 0.5 mm or less.
Sasaki teaches that it is well known in the paper container art to have a line pattern embossed on the outside of the container and have the adjacent embossment lines spaced apart from one another by 0.5mm or less to provide the container with a decorative effect (claims 1-2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the embossment lines in Ohman to form a line pattern wherein the adjacent embossment lines are spaced apart from one another by 0.5 mm or less as suggested by Sasaki in order to provide the container with a line patterned surface decoration if so desired.
Regarding claim 32, Ohman fails to specifically teach the paper is recycled paper. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the paper in Ohman to be recycled paper, if so desired, in order to make the laminate container more environmentally friendly, and further since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claim 33, Ohman discloses the inner layer formed of EVOH and/or linear low density polyethylene (paragraphs [0068-0069]).
Regarding claim 34, Ohman teaches the middle barrier layer can be formed of aluminum (paragraphs [0019] and [0062]) but fails to specifically teach the aluminum is recycled aluminum. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the aluminum in Ohman to be recycled aluminum, if so desired, in order to make the laminate container more environmentally friendly, and further since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07.
Regarding claims 35-37, Ohman fails to teach the outer paper layer having a thickness of from 90 to 110 µm, the middle barrier layer having a thickness of from 180 to 280 µm, and the inner layer having a thickness of from 40 to 60 µm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thicknesses of the outer paper layer, the middle barrier layer and the inner layer in Ohman to have the outer paper layer having a thickness of from 90 to 110 µm, the middle barrier layer having a thickness of from 180 to 280 µm, and the inner layer having a thickness of from 40 to 60 µm, 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 absence of showing unexpected results. MPEP 2144.05 (II).
Regarding claim 38, Ohman discloses a vial (paragraphs [0081-0085]).
Regarding claim 39, Ohman discloses wherein the body includes a second laminate sheet including an outer paper layer, a middle barrier layer joined with the outer layer, and an inner layer formed of a plastic material joined with the middle barrier layer (Fig. 4b), the laminate sheet and the second laminate sheet being joined at the peripheral portion (Fig. 4b, portion 52).
Regarding claim 40, Ohman discloses the middle barrier layer comprising silicon dioxide (paragraph [0068]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/ Primary Examiner, Art Unit 1781
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