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 .
This action is in response to the preliminary amendment received on October 20, 2026.
Claim Rejections - 35 USC § 112
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 5, 7, 8, 10 and 11 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.
Claim 5, 8, 10 and 11 recite the limitation "the sheet" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim since the claims is drawn to a first sheet and a second sheet such that it is unclear which of the first and second sheets the applicant is referencing. For examining purposes, Examiner has understood the phrase “the sheet” to reference the first sheet of material.
Claim 7 recites the limitation "the sheet" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim since the claims is drawn to a first sheet and a second sheet such that it is unclear which of the first and second sheets the applicant is referencing.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No.12,630,320. Although the claims at issue are not identical, they are not patentably distinct from each other because the pending claims are a broader recitation of limitations claimed in the referenced US. Patent (see Diagram I below).
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Diagram I
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)(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.
Claims 1, 7, 8 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by FRIEZE et al. (US 2007/0095699).
In reference to claims 1, 7 and 8, FRIEZE et al. discloses a packaging method (figure 2) comprising: positioning (step 1 of figure 2) and retaining an article (see Diagram II below) in a fixed disposition on a first sheet of material (see Diagram II below); subsequently, folding (steps 2-5 of figure 2) the first sheet of material about the article to entirely encompass the article within the first sheet of material; securing straps (figure 1) to the first sheet to retain the article in the fixed disposition on the first sheet; subsequently, folding (steps 6-9 of figure 2) a second sheet of material (see Diagram II below) about the first sheet to entirely enclose the first sheet and article therewithin; and subsequently, securing (steps 9 of figure 2; paragraphs [0005-0006]) the second sheet of material in the folded disposition with enclosing the first sheet and the article therewithin (see Diagram II below).
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Diagram II
Regarding claim 13, paragraphs [0026-0027] of FREIZE et al. discloses the knowledge in the art to provide tape as the strap that secures the second sheet of material in the folded disposition .
Claims 17 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HUNTER et al. (US 2,734,543).
In reference to claims 17 and 18, HUNTER et al. discloses a packaging method comprising: positioning and retaining (column 2 lines 44-50) an article 13 in a fixed disposition on a first side of a first sheet 14 of textile (cloth) material; subsequently folding (column 2 lines 50-51) the first sheet 14 about the article 13 such that the article 13 is entirely encompassed by the first sheet 14; and securing 21 the folded first sheet 14 around the article 13 using a tie 20 that is fastened to a second surface (figure 5) of the sheet that is opposite to the first surface (figure 4).
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.
Claims 2, 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over FRIEZE et al. (US 2007/0095699) in view of FITZWATER et al. (US 2016/0107814).
With respect to claims 2, 5 and 6, FRIEZE et al. discloses a method of packaging comprising the step of retaining an article against a first sheet of material, wherein the first sheet of material is folded about the article to create a pouch (steps 2-5 of figure 2). FITZWATER et al. teaches a method of packaging comprising: fastening (glue; paragraph [0037]) a piece of material 25 to a first sheet 5 of material to define a pouch 28; retaining (figure 4) an article F in a fixed disposition on the first sheet 5; and folding (figure 5). the first sheet about the article F in the fixed disposition within the pouch to entirely encompass the article F by the first sheet 27. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have modified the method of FRIEZE et al. to include the step of fastening a material to the first sheet to define a pouch since paragraph [0037] states various means for creating the pouch can be utilized without departing from the intended purpose of forming a pouch sufficient for retaining a product on the first sheet.
In reference to claim 3, it would have been an obvious matter of design choice to shape the pouch as a triangle, since page 2 of Applicant’s specification does not disclose that the shape of a triangle solves any stated problem or is for any particular purpose, and it appears that the invention would perform equally well with a pouch having a rectangular shape. Furthermore, it would have been obvious to one having ordinary skill in the art at the time of the invention to provide the pouch in the shape of a triangle as disclosed by FRIEZE et al. (see Diagram III below) and a rectangular shaped pouch as taught by FITZWATER et al. for their use in the packaging art and the selection of any of these known equivalents to retain an article against the first sheet would be within the level of ordinary skill in the art.
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Diagram III
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over FRIEZE et al. (US 2007/0095699) in view of FITZWATER et al. (US 2016/0107814) as applied to claim 2, and further in view of PROKASH et al (US 7,922,983).
Regarding claim 4, paragraph [0005] and [0020] of FRIEZE et al. discloses the first and second sheets of material as materials suitable for sterilization, such as: muslin (textile), plastics, composites and hybrids; wherein the article(s) wrapped within the first and second sheets is medical utensils which are not known to be textile materials. PROKASH et al. teaches a packaging method comprising: positioning and retaining a textile (woven; column 4 lines ) article 14 on a first sheet 12 of cloth material (column 4 lines 16-19); folding the first sheet 12 to enclose the article 14 within the first sheet 12. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have further modified the method of FRIEZE et al. to include a cloth article enclosed within the first sheet since column 3 line 66- column 4 line 5 of PROKASH et al. states such a modification provides an additional layer to the wrapped product for the purpose of resisting tearing.
Claims 9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over FRIEZE et al. (US 2007/0095699) in view of PROKASH et al. (US 7,922,983).
With respect to claims 9 and 15, FRIEZE et al. paragraph [0005] and [0020] of FRIEZE et al. discloses the first and second sheets of material as materials suitable for sterilization, such as: muslin (textile), plastics, composites and hybrids; wherein the article(s) wrapped within the first and second sheets is medical utensils which are not known to be textile materials; and securing textile (velcro; paragraph [0027]) straps (figure 1) to the first sheet to retain the article in the fixed disposition on the first sheet. FRIEZE et al. further discloses the article(s) wrapped within the first and second sheets as medical utensils which are not known to be textile materials.
PROKASH et al. teaches a packaging method comprising: positioning and retaining a textile (woven; column 4 lines ) article 14 on a first sheet 12 of cloth material (column 4 lines 16-19); folding the first sheet 12 to enclose the article 14 within the first sheet 12. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have modified the method of FRIEZE et al. to include a cloth article enclosed within the first sheet since column 3 line 66- column 4 line 5 of PROKASH et al. states such a modification provides an additional layer to the wrapped product for the purpose of resisting tearing.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over FRIEZE et al. (US 2007/0095699) in view of MAY (US 1,429,608).
With respect to claims 10 and 11, paragraph [0027] of FRIEZE et al. discloses securing the article on the first sheet with any sutiable fastener. MAY teaches the use of snaps 20 or any other rigid fastener means to retain an article on a material (figures 1-3). It would have been obvious to one having ordinary skill in the art at the time the invention was made to utilize tape, snaps, buttons and other known equivalent rigid fasteners, since it has been held to be within the general skill of a worker in the art to select any known material on the basis of its suitability for the intended use as a matter of obvious design choice. 1
Claims 12, 14, 19, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over FRIEZE et al. (US 2007/0095699) in view of HUNTER (US 2,734,543).
In reference to claim 12, FRIEZE et al. discloses a packaging method (figure 2) comprising: positioning (step 1 of figure 2) and retaining an article (see Diagram II above) in a fixed disposition on a first surface of a first sheet of material (see Diagram II above); subsequently, folding (steps 2-5 of figure 2) the first sheet of material about the article to entirely encompass the article within the first sheet of material; and securing straps (figures 1 & 2 step 9 ) to a second surface of the first sheet opposite the first surface to retain the article in the fixed disposition on the first sheet. FRIEZE et al. does not disclose the securing strap as a tie.
HUNTER teaches a packaging method comprising: positioning and retaining an article 13 on a first surface of a first sheet 14 of material; folding the first sheet 14 to enclose the article 13 therein; and retaining the article on the first sheet with a tie 20 fastened to a second surface of the first sheet 14 opposite the first surface of the first sheet. It would have been obvious to one having ordinary skill in the art at the time of the invention to have modified the strap of FRIEZE et al. to that of a tie since column 1 lines 36-42 of HUNTER suggests the selection of ties or tape to retain the article within the enclosure of the first sheet would be equally sufficient for the purpose of releasably securing the package in a folded/wrapped configuration.
Regarding claim 14, paragraphs [0026-0027] of FREIZE et al. discloses the knowledge in the art to provide tape as the strap that secures the second sheet of material in the folded disposition. It would have been obvious to one having ordinary skill in the art at the time of the invention to have modified the strap of FRIEZE et al. to that of a tie since column 1 lines 36-42 of HUNTER suggests the selection of ties or tape to retain the article within the enclosure of the first sheet would be equally sufficient for the purpose of releasably securing the package in a folded/wrapped configuration.
In reference to claims 19, 21 and 22, FRIEZE et al. discloses a packaging method (figure 2) comprising: folding (steps 2-5 of figure 2) a first sheet of material about an article to entirely encompass the article within the first sheet of material; subsequently, folding (steps 6-9 of figure 2) a second sheet of material (see Diagram II above) about the first sheet to entirely enclose the first sheet and article therewithin; and subsequently, securing (steps 9 of figure 2; paragraphs [0005-0006]) a strap (tape) to the second sheet of material in the folded disposition around the first sheet enclosing the article therewithin (see Diagram II above) rather than using a tie as claimed.
HUNTER teaches a packaging method comprising: positioning and retaining an article 13 on a first surface of a sheet 14 of material; folding the sheet 14 to enclose an article 13 therein; and using a tie 20 having a midpoint 16 fastened to a second surface of the sheet 14 opposite to the first surface to secure the sheet in a wrapped disposition about the article. It would have been obvious to one having ordinary skill in the art at the time of the invention to have modified the strap applied to the first material and the second material of FRIEZE et al. to that of a tie with a midsection as claimed since column 1 lines 36-42 of HUNTER suggests the selection of ties or tape to retain the article within the enclosure of the first sheet would be equally sufficient for the purpose of releasably securing the package in a folded/wrapped configuration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached PTO-892 for a notice of references cited and recommended for consideration based on their disclosure of limitations related to the claimed invention; in particular, SCHEERER (US 5,867,825) and STECKLEIN et al. (US 7,560,082) are found to disclose similar packaging methods to that of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLORIA R WEEKS whose telephone number is (571)272-4473. The examiner can normally be reached M-F 8am-2pm & 5pm-7pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GLORIA R WEEKS/Primary Examiner, Art Unit 3731
June 26, 2026
1 In re Leshin, 125 USPQ 416.
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