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 .
Election/Restrictions
Applicant’s election without traverse of Species II (Fig. 8; claims 30-44) in the reply filed on 05/12/2026 is acknowledged.
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 30-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,291,384. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed steps of the current application suggested by patent ‘384. Further, the published figure of ‘384 on the front page representing the patent invention is the same figure elected by applicant to be examined in the current application (election made on 05/12/20206 of Fig. 8).
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 30, 33-38, and 41-44 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sagona et al. (U.S. Patent No. 8,142,603).
Regarding claims 30 & 38: Sagona discloses a method of forming a blister pack configured to absorb or adsorb moisture, a gas, or a volatile organic compound therein, the method comprising:
adhering to a backing a polymer film having an active agent entrained therein (via active film 5 to foil 2), the active agent being configured to absorb or adsorb moisture, a gas, or a volatile organic compound (abstract; via the active agent is an absorbing material”);
inserting a single pill, capsule, or tablet into a cavity formed in a thermoformed cover (Figs. 2-3; via the shown placed tablet into formed cavity; positioned below active film 5), the cavity including a dome portion and a base portion (Fig. 2; via the shown upside down formed dome portion and the stretched flat edges portion forming a base portion), at least a section of the base portion extending beyond the dome portion in a first direction (via the shown extended out flat portion of the upside down formed dome cavity), the dome portion extending beyond an outer peripheral portion of the cover in a second direction, the second direction being perpendicular to the first direction (via the shown sides up of the dome are “perpendicular” to the first flat surface laying against film 2), the base portion including a top wall, an interior surface of the top wall being spaced-apart from the backing such that at least a portion of the polymer film extends between the interior surface of the top wall of the base portion and the backing, see for example (Fig. 2; via film 5 against base of the dome while having 5 in between); and
attaching the backing to the cover so that the polymer film and the single pill, capsule, or tablet is enclosed in the cavity (Fig. 2; via having the bill inside the dome/cavity while lidding 2 covers to the backing section/flat portions of the formed cavity).
Regarding claim 33 & 41: wherein the blister pack includes an upright configuration and an upside-down configuration, when in the upright configuration, a bottom surface of the single pill, capsule, or tablet is configured to be coplanar with a bottom surface of the cover, see for example (Fig. 2; the orientation of the pack is capable of being in an upside-down configuration).
Regarding claims 34 & 43: wherein the top wall of the base portion extends parallel to the backing (Fig. 2; via top wall of the extended flat surfaces of the formed dome is parallel to the film/backing 2).
Regarding claims 35 & 44: wherein a top surface of the polymer film is configured to contact an interior surface of a top wall of the base portion (Fig. 2; via surface of film 2 contacts interior of top wall of base of the formed dome).
Regarding claim 36: wherein the backing is a foil backing (via “applying an active film to the foil”, “the foil seal layer”, and “foil combination”).
Regarding claim 37: wherein the polymer film comprises a polymer channeling agent that forms channels within the entrained polymer (abstract; “an active agent and a polymer”; further, “certain synthetic polymers”, and “polymer sealing layer”).
Regarding claim 38: similar to the rejected claim 30 above. Further, Sagona discloses the blister pack includes an upright configuration and an upside-down configuration, when in the upright configuration, a bottom surface of the single pill, capsule, or tablet is configured to be coplanar with a bottom surface of the cover, see for example (Fig. 2; via the shown packaging is capable to be in an upside-down configuration).
Regarding claim 42: wherein the base portion includes a top wall, and wherein an interior surface of the top wall is spaced-apart from the backing such that at least a portion of the polymer film extends between the interior surface of the top wall of the base portion and the backing, see for example (Fig. 2; via film 5 against base of the dome while having 5 in between).
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(s) 31, 32, 39, and 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sagona et al. (U.S. Patent No. 8,142,603).
Regarding claims 31, 32, 39 & 40: Sagona may not suggest the exact polymer film is an extruded film with a thickness of 0.2 mm to 1.2 mm., nor comprises molecular sieve or silica gel that is present in an amount of 30-80% by weight of the entrained polymer. However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Sagona’s method by having the polymer film is an extruded film with a thickness of 0.2 mm to 1.2 mm., and comprises molecular sieve or silica gel that is present in an amount of 30-80% by weight of the entrained polymer, 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. In re Aller, 105 USPQ 233.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMEH TAWFIK whose telephone number is (571)272-4470. The examiner can normally be reached Mon-Fri. 8:00 AM - 4:00 PM.
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/SAMEH TAWFIK/Primary Examiner, Art Unit 3731
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