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 .
Status of Claims
This office action is responsive to claims filed on 05/15/2026.
Claims 1-16 are currently pending in this office action.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-15 of U.S. Patent No. US 12378053 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims encompass the same subject matter presented in the instant claims with only minor grammatical changes or synonym usage.
Regarding Claim 1 of application: ‘053 claims system for producing a strip of pouches (Col 13 lines 55-57), comprising: a guide device configured to receive a packaging material web(Col 13 lines 57-58),
the packaging material web comprising: a plurality of cover sections extending in a longitudinal direction on a first side of the packaging material web (Col 13 lines 59-62 ‘053 discloses “a plurality of cover sections extending in a longitudinal direction of the packaging material web and having a transmission of less than 60% in the visible frequency range”. The only difference is the present claims addition of “on a first side of the packaging material web” which is not patentably distinct because ‘053 specification that the cover section and transparent material area lie on the same major face of the web. A person of ordinary skill in the art would have found it obvious to have both regions as being “on a first side”, as this merely describes the structure already required by the reference claim);
a transparent material area extending in the longitudinal direction on the first side of the packaging material web and parallel to the cover sections, the plurality of cover sections having a transmission in a visible frequency range less than the transmission in the visible frequency range of the transparent material area (Col 13 lines 60-66; with regards to “on the first side of the packaging material web” which is not patentably distinct because ‘053 specification that the cover section and transparent material area lie on the same major face of the web. A person of ordinary skill in the art would have found it obvious to have both regions as being “on a first side”, as this merely describes the structure already required by the reference claim); and
a plurality of data sections (Col 13 lines 67); a printing device configured to apply data to the data sections; an application device configured to apply an information unit to the cover sections; and a cover section device configured to apply the plurality of cover sections to the packaging material web (Col 13 lines 55-67 to Col 14 lines 1-6).
Regarding Claims 2-16: Claims 2-15 of US 12378053 B2 recite essentially each feature of the claims and/or the claimed features patentably indistinct in view of US 12378053 B2.
Claim Rejections - 35 USC § 102/103
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 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.
(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.
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) 1-11, 13, and 15-16, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chudy (US 20170057682 A1), or in the alternative, under 35 U.S.C. 103 as obvious over Kondo et al. (US 20140318078 A1).
Regarding claim 1, Chudy a system (10) for producing a strip of pouches ([0064]), comprising:
a guide device configured to receive a packaging material web ([0067]-[0075] and [0090]-[0091]; The web material 103 is received from supply roll 101 and guided through rollers which guide and advance the webs through the system…see also Fig. 7…see also guides 95, machine 15 and roll 114), the packaging material web comprising:
a plurality of cover sections extending in a longitudinal direction on a first side of the packaging material web ([0071] pouch package web 103 may include an opaque or semi-opaque portion 129 which receives printed information 131 thereon…See also Fig. 18)
a transparent material area extending in the longitudinal direction on the first side of the packaging material web and parallel to the cover sections ([0071] “The pouch package web 103 may include…a transparent portion 133” parallel to the opaque/esmi opaque portion 129 on the same continuous web 103; Figs 18-19. After forming, opaque portion 129 becomes one side of pouch 33 and transparent portion 133 the opposite, confirming both regions originally occupy the same first side of the flat web), the plurality of cover sections having a transmission in a visible frequency range less than the transmission in the visible frequency range of the transparent material area (the opaque/semi-opaque portions have lower visible transmission for contrast with printed information compared to the transparent portion; See also Fig. 18, showing opaque printed areas parallel to transparent viewing areas. The portion 129 constitutes the claimed cover sections on a first side of the web); and
a plurality of data sections ([0071]-[0072], Fig. 18; see at least 131);
a printing device (117) configured to apply data to the data sections (Fig. 18);
an application device (117 and/or 155, 233) configured to apply an information unit to the cover sections ([0072]; printer 117 applies information units (e.g., printed labels with data) to the opaque cover sections; see Fig. 18, showing printed information on opaque portion…see also ([0071], [0073], [0100]-[0103] and [0129]); and
a cover section device ([0075]-[0077] sealer and perforation unit 119 seals the opaque cover sections to the transparent sections of the web 103 via heated rollers, applying and securing the cover sections longitudinally) configured to apply the plurality of cover sections to the packaging material web (see also 161; [0068], [0126]-[0129]).
Wherein an argument is made that Chudy does not explicitly disclose the cover section device configured to apply the plurality of cover sections to the packaging material web.
Kondo teaches a continuous packaging sheet (S) that is printed and formed into sachets by a packaging device including printer unit (43) and heat sealing means ([0060]-[0066]; Fig. 15) (Figs. 7-8).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of Chudy by incorporating a dedicated cover section application device acting on the web as taught by Kondo as it provides flexibility of an in-line application device on demand, with a reasonable expectation of success, since both operate on the same class of thin polymer/laminate webs under similar print operations.
Kondo as modified further teaches (Kondo is primarily referenced unless otherwise stated):
Regarding claim 2, wherein the guide device is configured so that the data sections are assigned to the printing device and the cover sections are assigned to the application device ([0072] of Chudy as modified by Kondo, Guide rollers (104-115) advance and position web 103 such that the data sections on opaque portions are assigned to and printed by printer 117; the opaque cover sections are similarly assigned to printer 117 for application of information units; see also Fig. 7 and 18…see also unit 155, 233.).
Regarding claim 3, wherein the guide device comprises a deflection roller ([0067]-[0070]; Fig. 7 of Chuda; “the web is also folded in half by roller (not shown)” while under tension. A roller that redirects or turns a continuous web is a deflection roller. See also [0060] of Kondo).
Regarding claim 4, further comprising: a shaping device configured to receive the packaging material web ([0107] web is folded to form a pocket 127; the folding mechanism that creates the pouch cavity is a shaping device…see Fig. 7 and [0070]).
Regarding claim 5, wherein the shaping device is configured to continuously shape in a running direction the packaging material web into a receiving area suitable for receiving small piece goods ([0070]-[0074]).
Regarding claim 6, further comprising: a joining device (sealer and perforation unit, 119; [0075]) configured to join the shaped packaging material web to form a pouch of the strip of pouches.
Regarding claim 7, further comprising: a feed device (125) configured to feed drug portions to the pouch.
Regarding claim 8, further comprising: a deflection roller configured to feed the packaging material web to the shaping device ([0067]-[0070]; Fig. 7 of Chuda; “the web is also folded in half by roller (not shown)” while under tension. A roller that redirects or turns a continuous web is a deflection roller. See also [0060] of Kondo).
Regarding claim 9, wherein the printing device (117) and the application device (117/155/233) are each arranged downstream of the guide device ([0070]-[0072] and [0101]-[0103] and [0060] of Kondo as modified).
Regarding claim 10, wherein the strip of pouches comprises a plurality of pouches (33; Figs. 18-19) provided with information over a large area and optimized for an inspection system ([0071] “Opaque portion 129 preferably contrasts with printed information 131 applied thereto and facilitates reading or machine detection (e.g., barcode recognition or optical character recognition) of the printed information 131” and [0095]-[0099] imaging device 227 and camera 321).
Regarding claim 11, wherein the printing device is a first printing device (117) and the application device (233) is a second printing device ([0072] and [0101]-[0102]).
Regarding claim 13, Chudy as modified discloses the cover section device, guide device, printing device, and the application device as explained above but does not disclose
wherein the cover section device is arranged downstream of the guide device, the printing device is arranged downstream of the cover section device and the application device is arranged downstream of the printing device.
However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention to rearrange the cover section device, guide device, printing device, and the application device as described in claim 13, since it has been held that the rearrangement of parts of a device involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). This maintains flow of operations and sequencing of web operations and can be achieved through routine design optimization in packaging lines, and yields predictable result.
Regarding claim 15, wherein the data section and the cover section are arranged on the same side of the strip of pouches ([0069]-[0071]; Fig. 18).
Regarding claim 16, wherein the packaging material web (103) received by the guide device comprises one of: a single layer (Fig. 18) comprising an inner layer portion (133) and a cover layer portion (layer of 129), the cover layer portion defining the cover section (Fig. 18- see 133, 129, 131).
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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chudy (US 20170057682 A1) and Kondo et al. (US 20140318078 A1), and in further view of Gross (US 20180290775 A1).
Regarding claim 3, Chudy discloses wherein the guide device comprises a deflection roller ([0067]-[0070]; Fig. 7 of Chuda; “the web is also folded in half by roller (not shown)” while under tension. A roller that redirects or turns a continuous web is a deflection roller. See also [0060] of Kondo) but wherein an argument is made that Chudy as modified is silent regarding comprises a deflection roller.
Gross in a related invention teaches guide device comprising a deflection roller ([0044] and [0060]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the guide device of Chudy as modified by incorporating guide device comprising a deflection roller as taught by Gross in order to guide and tension the web.
Regarding claim 8, Chudy discloses a deflection roller configured to feed the packaging material web to the shaping device ([0067]-[0070]; Fig. 7 of Chuda; “the web is also folded in half by roller (not shown)” while under tension. A roller that redirects or turns a continuous web is a deflection roller. See also [0060] of Kondo) but wherein an argument is made that Chudy as modified is silent regarding comprises a deflection roller.
Gross in a related invention teaches deflection roller configured to feed the packaging material web to the shaping device ([0044] and [0060]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the guide device of Chudy as modified by incorporating guide device comprising a deflection roller as taught by Gross in order to guide and tension the web.
Claims 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chudy (US 20170057682 A1) and Kondo et al. (US 20140318078 A1), and in further view of Tampieri et al. (US 20110126495 A1).
Regarding claim 12, Chudy as modified discloses cover section device including multiple printing devices (117, 233) as rejected above but is silent regarding the cover section device is a third printing device.
Tampieri in a related invention teaches a blister packaging system a cover section device is a third printing device (Tampieri teaches multiple printing stations-6, 13, 66, and 74).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cover section device of Chudy as modified by incorporating a third printing device as taught by Tampieri in order to apply different types of information at different stages of packaging in order to improve traceability, coding flexibility, and reduce production downtime by distributing printing operations ([0031]-[0033]).
Claims 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chudy (US 20170057682 A1) and Kondo et al. (US 20140318078 A1), and in further view of Shepherd et al. (US 2418605 A).
Regarding claim 14, Chudy as modified discloses the plurality of cover sections including having an opaque 129 and transparent portion 133 which constitute visibility to light ([0067]-[0071]) and the web material being a polyethylene which inherently exhibits electromagnetic radiation across a spectrum that extends beyond visible range, including near-infrared, but is silent regarding wherein each of the plurality of cover sections is permeable to light in the near infrared range.
Shepherd teaches a sheet material that is substantially opaque to visible light yet substantially transparent to infrared radiation, including the near-infrared region (Col 1 lines 1-20, claims 1, 5-7; Shepherds states that the material substantially totally absorbs visible light but is transparent to infrared radiation and shows high transmission in the near-infrared while cutting off the visible spectrum)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cover section of Chudy as modified by incorporating a material of the type as taught by Shepherd, 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 (in this case for its optical properties) for the intended use as a matter of obvious design choice yielding a predictable result. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments, see pages 6-7 of the Remarks, filed on 05/15/2026, with respect to the rejection of claim 1 under 35 USC 102 have been fully considered but they are not persuasive.
(a) Applicant argues that the Office Action fails to show that Chudy discloses that either the first or second side of the pouch package has both an opaque portion and a transparent portion in parallel on that same side of the pouch package. Neither of the other cited references are shown by the Office Action to teach or suggests these features..
This is not found persuasive because firstly, claim 1 is directed to the packaging material web, not the finished pouch. The claim requires: cover sections extending in a longitudinal direction on a first side of the packaging material web; a transparent material area extending in the longitudinal direction on the first side of the packaging material web and parallel to the cover sections.
The claim does not require that both the opaque (cover) region and the transparent region remain on the same side of the finished pouch after forming. Chudy expressly teaches the claimed arrangement of the web in ([0071]; “pouch package web 103 may include an opaque or semi-opaque portion 129 which receives printed information 131 thereon and a transparent portion 133. Once a pouch package 33 is formed in pouch package web 103 as described above, opaque portion 129 becomes a first side of the pouch package 33 and the transparent portion 133 becomes a second side of the pouch package 33.”) Carson further discloses that the web is folded in half to form the pocket ([0070]).
A continuous web that is folded longitudinally necessarily has the opaque portion and the transparent portion as adjacent, parallel regions lying on the same major face of the flat web before fold. After fold, those two regions become opposite faces of the finished pouch, exactly as chudy describes and as conventional in this type of pouch-forming process.
The applicants focus on the finished pouch (arguing that neither side of the finished pouch has both portions in parallel) is therefore directed to a limitation that is not present in claim 1.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS E IGBOKWE whose telephone number is (571)272-1124. The examiner can normally be reached M-F 8 a.m. - 5 p.m..
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/NICHOLAS E IGBOKWE/Examiner, Art Unit 3731
/ANDREW M TECCO/Primary Examiner, Art Unit 3731
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