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 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,378,056 in view of Perell et al. (US 9,365,339).
Regarding claim 1, Patent ‘056 (claim 1) discloses the claimed subject matter except for the specific material of the multi-layered film. However, Perell teaches it is well known in the art that polypropylene and polyethylene are suitable polymers for film layers (11/12) used for forming a package (at 10 in Fig. 1 – See column 3, lines 18-22). 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 multi-layered film of Patent ‘056 to be formed from polyethylene material in order to have desirable packaging characteristics. Furthermore, 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. In re Leshin, 125 USPQ 416.
Regarding claim 2, Patent ‘056 (claim 2) in view of Perell discloses the claimed subject matter.
Regarding claim 3, Patent ‘056 (claim 3) in view of Perell discloses the claimed subject matter.
Regarding claim 4, Patent ‘056 (claim 4) in view of Perell discloses the claimed subject matter.
Regarding claim 5, Patent ‘056 (claim 5) in view of Perell discloses the claimed subject matter.
Regarding claim 6, Patent ‘056 (claim 6) in view of Perell discloses the claimed subject matter.
Regarding claim 7, Patent ‘056 (claim 7) in view of Perell discloses the claimed subject matter.
Regarding claim 8, Patent ‘056 (claim 8) in view of Perell discloses the claimed subject matter.
Regarding claim 9, Patent ‘056 (claim 9) in view of Perell discloses the claimed subject matter.
Regarding claim 10, Patent ‘056 (claim 10) in view of Perell discloses the claimed subject matter.
Regarding claim 11, Patent ‘056 (claim 11) in view of Perell discloses the claimed subject matter.
Regarding claim 12, Patent ‘056 (claim 12) in view of Perell discloses the claimed subject matter.
Regarding claim 13, Patent ‘056 (claim 13) in view of Perell discloses the claimed subject matter.
Regarding claim 14, Patent ‘056 (claim 14) in view of Perell discloses the claimed subject matter.
Regarding claim 15, Patent ‘056 (claim 15) in view of Perell discloses the claimed subject matter.
Regarding claim 16, Patent ‘056 (claim 16) in view of Perell discloses the claimed subject matter.
Regarding claim 17, Patent ‘056 (claim 17) in view of Perell discloses the claimed subject matter.
Regarding claim 18, Patent ‘056 (claim 18) in view of Perell discloses the claimed subject matter.
Regarding claim 19, Patent ‘056 (claim 19) in view of Perell discloses the claimed subject matter.
Regarding claim 20, Patent ‘056 (claim 20) in view of Perell discloses the claimed subject matter.
Regarding claim 21, Patent ‘056 (claim 21) discloses the claimed subject matter except for the specific material of the multi-layered film. However, Perell teaches it is well known in the art that polypropylene and polyethylene are suitable polymers for film layers (11/12) used for forming a package (at 10 in Fig. 1 – See column 3, lines 18-22). 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 multi-layered film of Patent ‘056 to be formed from polyethylene material in order to have desirable packaging characteristics. Furthermore, 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. In re Leshin, 125 USPQ 416.
Regarding claim 22, Patent ‘056 (claim 22) in view of Perell discloses the claimed subject matter.
Regarding claim 23, Patent ‘056 (claim 23) in view of Perell discloses the claimed subject matter.
Conclusion
See PTO-892 form for the prior art made of record and not relied upon, but is considered pertinent to applicant's disclosure. The closest prior art is Watanabe (US 2010/0072103) which discloses the claimed subject matter except for the inner sheet and outer sheet consisting of a multi-layered polyethylene film having two or more polyethylene layers. Watanabe discloses the sheets (as shown in Fig. 8) having three layers: polypropylene and polyethylene layers sandwiching a nylon layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A REYNOLDS whose telephone number is (571)272-9959. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A. REYNOLDS/Primary Examiner, Art Unit 3735
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