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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations reciting “an outside of the outer sleeve is overlapped with a second layer of material” and “wherein second layer of material is folded around the open end of the outer sleeve”, as required in claim 10, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 10-13 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-9 of U.S. Patent No. 12,769,448. Although the claims at issue are not identical, they are not patentably distinct from each other because even the language of the claims is not identical, all the structure required in the claims of the instant application is disclosed in the claims of the US Patent.
The structure recited in claim 10 of the instant application is disclosed in claim 5 of the US Patent.
The structure recited in claim 11 of the instant application is disclosed in claim 5 of the US Patent.
The structure recited in claim 12 of the instant application is disclosed in claim 5 of the US Patent.
The structure recited in claim 13 of the instant application is disclosed in claim 5 of the US Patent.
The structure recited in claim 15 of the instant application is disclosed in claim 6 of the US Patent.
The structure recited in claim 16 of the instant application is disclosed in claim 7 of the US Patent.
The structure recited in claim 17 of the instant application is disclosed in claim 8 of the US Patent.
The structure recited in claim 18 of the instant application is disclosed in claim 9 of the US Patent.
The structure recited in claim 19 of the instant application is disclosed in claim 5 of the US Patent.
The structure recited in claim 20 of the instant application is disclosed in claim 5 of the US Patent.
Claim Rejections - 35 USC § 112
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.
Claims 8 and 10-20 are 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. Regarding claim 8, the limitation “the first side of the first side of the two layers comprises a first plurality of flaps and the second side of the two layers comprises a second plurality of flaps” raises new matter issues because Applicant’s Detailed Description does not provide sufficient disclosure for the limitation recited. Regarding claim 10, the limitation reciting “an outside of the outer sleeve is overlapped with a second layer of material” raises a new matter issue added to the specification because nowhere in the Detailed Description is disclosed the recited feature. Applicant’s Detailed Description, page 8 lines 15-19, discloses the second layer of material overlaps with the inner/second perimeter of the outer sleeve. However, nowhere in the Detailed Description is disclosed that the second layer of material overlaps an outside of the outer sleeve. Further nowhere in the figures from the application the recited feature is disclosed.
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 8 and 10-20 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 8, it is unclear what or which are the two layers that comprises plurality of flaps in each of first and second sides, as required in the claim. It is unclear from the specification what or which layers including plurality of flaps. Regarding claim 10, it is unclear from the specification what applicant meant with the limitation reciting “an outside of the outer sleeve is overlapped with a second layer of material”. The examiner raises the question if the limitation meant that the second layer of material folded towards the interior overlaps the outside of the outer sleeve, or if the second layer of material has to fold towards the exterior of the sleeve?
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 1-5, 7 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Markarian (US 2021/0371172) in view of Cesare (US 2010/0108550).
Claim 1
Markarian discloses a packaging system comprising an inner package (109) having a first end (112), a second end (113); an outer sleeve (100) having a top (101), a bottom (102), a first side (103), a second side (104), an open end (defined by side pointed by 106), and a closed end (105), the closed end having an access hole (107); wherein the inner package fits within an interior of the outer sleeve and wherein the access hole provides access to the inner package (see figure 1 and [0026]); wherein the interior of the outer sleeve has a first perimeter (defined by outside perimeter of the outer) and a second perimeter (defined by interior perimeter of the outer sleeve); wherein the first perimeter is defined by the top, the bottom, the first side, and the second side at the closed end of the outer sleeve, wherein the second perimeter is defined by the top, the bottom, the first side, the second side at the open end of the outer sleeve; wherein the second perimeter is smaller than the first perimeter. Markarian discloses the second perimeter smaller than the first perimeter by the fact that the top, bottom, and sides of the outer sleeve has a thickness defining the first and second perimeter. Markarian does not explicitly discloses the outer sleeve is longer than the inner package. However, Markarian, in embodiment of figure 9a-9c, discloses an inner package (901) smaller than outer sleeve (900), wherein when the inner package is fully inserted within the outer sleeve, an exposed surface is provided in the open end of the outer sleeve (see figure 9c). 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 inner package being smaller than the outer sleeve, as taught in the embodiment of figures 9a-9c of Markarian for restrict unintended access to the inner package to a child. From the argument that Markarian does not disclose the second perimeter smaller than the first perimeter, Cesare discloses an inner package (8) disposed within an outer sleeve (4), wherein the outer sleeve comprises flaps (22, 24, 42, and 44), wherein the interior perimeter of the outer sleeve is smaller than the outer perimeter of the outer sleeve (see figure 2). Cesare further discloses the uses of the flaps improve slidability of the inner package into the outer sleeve (see [0035]). Cesare also discloses the flaps help to provide sufficient rigidity to the outer sleeve (see [0023]). 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 outer sleeve of Markarian including flaps along the interior of the outer sleeve as taught by Cesare for improving slidability of the inner package into the outer sleeve and add rigidity to the outer sleeve.
Claims 2 and 4
After Markarian is modified by Cesare, the exposed surface at the open end of the outer
sleeve comprises a thickness that is greater than a thickness of the top, the bottom, the first side, and the second side at the closed end of the outer sleeve, due to the thickness of the outer sleeve in combination with the flaps provided at the open end of the outer sleeve compared to the thickness with no flaps in the interior of the closed end of the outer sleeve.
Claim 3
After Markarian is modified by Cesare, the greater thickness at the open end of the outer sleeve is provided by multiple layers of material. The multiple layers of material is defined by the layer of the outer sleeve in combination with the flaps.
Claim 5
Markarian further discloses the outer sleeve is made by folding an unfolded
blank, the unfolded blank comprising a first section (defined by panel that have the access hole 107) defining the access hole (see figures 1 and 11).
Claim 7
After Markarian is modified by Cesare, the bottom of the outer sleeve comprises two
layers of material, and the unfolded blank further comprises a first side of the two layers,
and a second side of the two layers. Markarian discloses the outer sleeve is formed from a layer of material considered as first layer, then after Markarian is modified by Cesare, the flaps on each of the bottom and sides of the outer sleeve will be considered as a second layer.
Claim 9
Markarian further discloses the access hole provides access to the first
end (112) of the inner package (see figure 1).
Claim 10
Markarian discloses a packaging system comprising an inner package (109) having a first end (112), and a second end (113); an outer sleeve (100) having a top (101), a bottom (102), a first side (103), a second side (104), an open end (defined by side pointed by 106), and a closed end (105), the closed end having an access hole (107);
wherein the inner package fits within the outer sleeve (see figure 1 and [0026]). Markarian does not explicitly discloses the outer sleeve is longer than the inner package. Markarian does not disclose an outside of the outer sleeve is overlapped with a second layer of material. However, Markarian, in embodiment of figure 9a-9c, discloses an inner package (901) smaller than outer sleeve (900), wherein when the inner package is fully inserted within the outer sleeve, an exposed surface is provided in the open end of the outer sleeve (see figure 9c). 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 inner package being smaller than the outer sleeve, as taught in the embodiment of figures 9a-9c of Markarian for restrict unintended access to the inner package to a child. Regarding the limitation of the outside of the outer sleeve overlapped with a second layer of material, Cesare discloses an inner package (8) disposed within an outer sleeve (4), wherein the outer sleeve comprises flaps (22, 24, 42, and 44), folded around an open end of the outer sleeve and attached to the interior of the outer sleeve with adhesive (see [0027]-[0030]). It is considered that before attaching the flaps to the interior of the outer sleeve, the flaps can be overlapping to the exterior of the outer sleeve. Cesare also discloses the flaps help to provide sufficient rigidity to the outer sleeve (see [0023]). Cesare further discloses the uses of the flaps improve slidability of the inner package into the outer sleeve (see [0035]). 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 outer sleeve of Markarian including flaps along the interior of the outer sleeve as taught by Cesare for improving slidability of the inner package into the outer sleeve and add rigidity to the outer sleeve. After Markarian is modified by Cesare, the second layer of material/flaps will be folded around the open end of the outer sleeve
and will be connected to the exposed inner surface.
Claim 11
Markarian further discloses the inner package is positioned in the outer sleeve and wherein the access hole provides access to the first end (112) of the inner package (see figure 1).
Claim 12
Markarian further discloses the outer sleeve is made from a first layer of material. Markarian discloses the outer sleeve formed from paper or paperboard (see [0026] and [0050]).
Claims 13-15
Cesare further discloses the flaps/second layer of material comprises adhesive for adhering to internal surface of the outer sleeve (see [0030] and figure 2). After Markarian is modified by Cesare, the second layer will be adhered to the exposed inner surface, at a top, bottom, first side and second side of the outer sleeve.
Claim 16
After Markarian is modified by Cesare, the flaps/second layer of material folded around the open end of the outer sleeve causes the exposed inner surface of the outer sleeve to have a thickness that is greater than a thickness of the top, the bottom, the first side, and the second side at the closed end of the outer sleeve; wherein the thickness of the exposed inner surface being greater than the thickness of the top, the bottom, the first side, and the second side at the closed end of the outer sleeve results in a second inner perimeter at the open end of the outer sleeve being smaller than a first inner perimeter at the closed end of the outer sleeve.
Claim 17
After Markarian is modified by Cesare, the second layer of material folded around the
open end of the outer sleeve causes greater friction between the inner package and outer sleeve at the exposed inner surface compared to a friction between the inner package and outer sleeve at the closed end of the outer sleeve.
Claim 18
Cesare further discloses the flaps/second layer of material is an extension of the walls forming the outer sleeve (see figure 2), and the flaps comprises adhesive for adhering to internal surface of the outer sleeve (see [0030] and figure 2), therefore the second layer of material comprises laminations or coatings. Furthermore, Markarian discloses the outer sleeve could be formed from plastic material, and after Markarian is modified by Cesare, the flaps would be an extension of the walls of the outer sleeve, therefore the flaps would be made from plastic material.
Claim 19
Cesare further discloses the second layer of material comprises at least two flaps which each are folded around the open end of the outer sleeve. After Markarian is modified by Cesare the flaps will be attached to the exposed inner surface.
Claim 20
Markarian further discloses the first end (112) of the inner package abuts the closed end (105) of the outer sleeve (see figure 1).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Markarian (US 2021/0371172) and Cesare (US 2010/0108550) as applied to claim 5 above, and further in view of Chen (US 2021/0276758).
Markarian does not disclose the first section comprises an arm extending away from the first section. However, Chen discloses an outer sleeve (200) comprising a first section including closed end (202), wherein the outer sleeve formed from an unfolded blank further comprising an arm (defined by panels 240, 242 and 250) extending from panel (202) (see figure 2). Chen discloses panel (240) provides a reservation space which longer than an average size of a child, preventing an inner package (300) to be pushed by a child (see [0152]-[0157]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Markarian having an arm extending from the first section as taught by Chen to form a reservation space to prevent inadvertent access and/or exposure of the inner package.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAFAEL A. ORTIZ whose telephone number is (571)270-5240. The examiner can normally be reached Monday - Friday 9am - 6pm.
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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RAFAEL A. ORTIZ
Primary Examiner
Art Unit 3736
/RAFAEL A ORTIZ/Primary Examiner, Art Unit 3736