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 .
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.
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 20-22 and 26-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 5-19 of U.S. Patent No. 12,402,709. Although the claims at issue are not identical, they are not patentably distinct from each other because claims in the instant application are broader than the patented claims.
12402709
18313585
claim 1
anticipates claim 20
claim 1
anticipates claim 21
claim 3
anticipates claim 22
claim 5
anticipates claim 26
claim 6
anticipates claim 27
claim 7
anticipates claim 28
claim 8
anticipates claim 29
claim 9
anticipates claim 30
claim 10
anticipates claim 31
claim 11
anticipates claim 32
claim 12
anticipates claim 33
claim 13
anticipates claim 34
claim 14
anticipates claim 35
claim 15
anticipates claim 36
claim 16
anticipates claim 37
claim 17
anticipates claim 38
claim 18
anticipates claim 39
claim 19
anticipates claim 40
Specification
The disclosure is objected to because of the following informalities: [0038], lines 4-5 “the molded in cover becomes to top of the compact..” is a typo.
Claim Objections
Claim 24 is objected to because of the following informalities: In claim 24 for example, instances of the inner ring and the outer ring should be associated with either the receiving portion or the securing portion for clarity. Appropriate correction is required.
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 20-40 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 20 recites the limitation "the at least one catch" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Also in claim 20, where is the circumferential lip?
Regarding claim 21, the pan receiving portion is recited as having an inner ring in claim 20, claim 21 also claims that the pan receiving portion has an inner ring. Is the inner ring of claim 21 a second inner ring or should it be “the” inner ring? For the purposes of examination, the latter is assumed.
Regarding claim 22, which inner ring and outer ring? Is the inner and outer ring of the receiving portion or the securing portion? For the purposes of examination, the former is assumed.
Regarding claim 23, which catch is being referred to? Is it each of the catches of claim 22 or only one catch of the inner and outer ring catches introduced in claim 22? Do all catches recited in claim 22 receive the circumferential lip? How does rotation “cause” the catch to receive the circumferential lip? What if the securing portion is only slightly rotated? What if the securing portion and the receiving portion were already engaged? Then rotation could dis-engage the receiving and securing portions.
Regarding claim 25: “The tri-fold recyclable compact base of claim 24, wherein the pan receiving portion includes an inner ring extending perpendicularly from the top flange and an outer ring extending perpendicularly from the top flange.” The pan receiving portion has a top flange? If “receiving” should be “supporting” claim 25 is still indefinite because the limitations are already included in claim 20.
Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962). MPEP 2173.06
The claims not addressed above are rejected since they depend from a rejected claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 20, 34-36, and 38-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Esposito (US 3256892).
Regarding claim 20, Esposito, fig. 15 and 16, col. 4: 49- end, discloses a tri-fold compact base that is capable of being recycled (reused or melted down and recycled) comprising:
a bottom container portion 31 (pan receiving portion including an inner ring (inside surface of side wall at 31b, fig. 15) fully capable of receiving a cosmetics pan having a similar shape and size to the volume formed within the inner ring of the bottom container portion;
an intermediate ring 33 (pan securing portion), including a top flange at 33a, fig. 16, and an inner ring extending perpendicularly from the top flange at 33 and an outer ring at 33b extending perpendicularly from the top flange, see annotated fig. 16 of Esposito, and
PNG
media_image1.png
398
652
media_image1.png
Greyscale
a circumferential lip at 33e configured to mate with at least one catch at 31c of the bottom container portion;
a first hinge at 32 rotatably connecting the pan receiving portion and the pan securing portion;
a portion 34 fully capable of receiving a mirror within the inner portion forming shoulder 34d; and
a second hinge rotatably connecting the mirror receiving portion and the pan securing portion.
Regarding claim 34, Esposito discloses that the compact is formed of polypropylene, col. 2: 40-45.
Regarding claims 35 and 36, Esposito discloses that an opening latch 34f formed on the mirror receiving portion mates with the first hinge to hold the mirror receiving portion proximate the pan receiving portion, see fig. 16 on right side of the page.
Regarding claim 38, Esposito discloses, fig. 15, that the hinges are living hinges.
Regarding claim 39, the bottom container portion of Esposito is fully capable of receiving multiple pans, for example, multiple pie-shaped/segments pans that together form a circle.
Regarding claim 40, Esposito discloses that the each of the pan receiving portion, the pan securing portion, and the mirror receiving portion have a round shape, reference fig. 10.
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.
The factual inquiries 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.
Claim(s) 20, 21, 27-40 are rejected under 35 U.S.C. 103 as being unpatentable over Moretti (US 2021/0169198) in view of Mathiez (US 7334685) and Esposito (US 3256892).
Regarding claims 20, 27, Moretti discloses a tri-fold compact base that is capable of being recycled at least by re-use comprising, fig. 2-4:
a pan receiving portion (base 7) including an inner ring 9 configured to removably receive a cosmetics pan (godet 4);
a pan securing portion (“bottom” 6) , the pan securing portion including a top flange (at 6 in fig. 3) and an outer ring (at 6, fig. 4) extending perpendicularly from the top flange,
a circumferential lip 8A configured to mate with the at least one catch 8B (snap fit means);
a first hinge (not numbered [0025]) rotatably connecting the pan receiving portion and the pan securing portion;
a mirror receiving portion 5 that is hinged to the sealing and receiving portions by the same hinge.
Moretti does not disclose an inner ring extending perpendicularly from the top flange and does not disclose a second hinge.
Mathiez is analogous art in regard to packaging for cosmetics and teaches a pan receiving portion at 10 (well), fig. 3 with an inner wall at 9, and a hinged (at 37) pan securing portion, not numbered, with a depending ring (rib 23) that extends downwardly from a top flange (not numbered also seen in figs. 6, 13 and 14) that mates with the wall of the pan receiving portion in order to seal against the well, col. 7:30-46.
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 securing portion of Moretti to include an inner depending rib/ring to allow the securing portion to secure sealing against the inner ring as per the teaching of Mathiez. The combination of Moretti and Mathiez results in an additional wall (inner wall) depending downwardly (perpendicularly) from the horizontal top flange.
Esposito is analogous art in regard to folding compact containers and teaches a fully integral packaging that is molded in one piece, fig. 15 and 16, having a receiving portion 31, a securing portion 36, and a mirror portion 34, connected by two integrally molded hinges 32 and 35. The unitary design allows a hinge to be hidden and allows the packaging to be made with low cost eliminating hardware and separable parts requiring assembly and labor and is also rugged and attractive, col. 1: 34-44. Furthermore, the hinges of Esposito provide an opening latch on the mirror section at 34f that mates with the hinge 32 such that no separate latching mechanism is required to secure the package in a closed configuration, fig. 16.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the use of a single multi-part hinge of Moretti with two integrally molded hinges and an integral latching mechanism while maintain a tri-folding effect as required by Moretti in order to eliminate assembly and reduce costs of manufacturing as per the teaching of Esposito.
Regarding claim 21, Moretti further discloses that the pan includes a non-continuous outer ring at 60 that is provided for centering of the securing portion [0043].
Regarding claim 28, Moretti discloses that the pan securing portion includes a lip 6A extending from the top flange that overlaps the pan, the lip extending over the pan in the pan receiving portion, fig. 2 and 4.
Regarding claim 29, Moretti discloses a cover 15 secured in the mirror receiving portion.
Regarding claim 30, Moretti discloses that tabs 12 on the mirror receiving portion mate with a circumferential ring 13 on the cover to secure the cover in the mirror receiving portion, fig. 4 and 5.
Regarding claim 31, Moretti discloses a mirror 16 inserted into the mirror receiving portion.
Regarding claim 32, Moretti discloses the mirror is glued to the cover [0051].
Regarding claim 33, Moretti discloses that the mirror is glued to the cover [0051]. Moretti discloses that the mirror is made from glass, [0083], not plastic. However, 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 mirror of Moretti to be made from plastic so that it would not shatter if the container is dropped.
Regarding claim 34, the references applied above teach all of claim 20, as applied above. As applied above the three hinged parts of Moretti are modified to be a single injection molded packaging as per the teaching of Esposito. Esposito teaches that the integrally molded container is made from polypropylene because it is elastomeric and has tear resistant properties satisfying the requirements for an integral hinge, col 2: 41-45 of Esposito.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use polypropylene to make the packaging of Moretti as modified above in order to provide the elastomeric and tear resistant properties as per the teaching of Esposito.
Regarding claims 35 and 36, the hinges of Moretti as modified above by Esposito further comprise an opening latch formed on the mirror receiving portion wherein the opening latch mates with the first hinge to hold the mirror receiving portion proximate the pan receiving portion.
Regarding claim 37, Moretti as modified above teaches all of claim 20, as applied above.
Moretti discloses a removable cover, not an integrally molded cover.
However, 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 cover/mirror combination of Moretti to be integral (i.e. molded in) or separable since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art and yields the same expected result of securing a mirror into the cover of a cosmetic package.
Regarding claim 38, the hinges of Moretti as modified above by Esposito are living hinges.
Regarding claim 39, Moretti further discloses that the bottom pan receiving portion is configured to receive multiple pans, fig. 6.
Regarding claim 40, Moretti discloses that each of the pan receiving portion, the pan securing portion, and the mirror receiving portion have a round shape, fig. 2 and 3.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 22, the closest available prior art does not teach an inner ring and an outer ring on both a pan receiving portion and a pan securing portion where each of either of the inner and outer rings include a catch. A catch is interpreted as some mechanical structure that is more significant than a mere frictional engagement, for example a hook or bump that engages in a corresponding mechanical structure.
Claims 22-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 22-26 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The claims not addressed above are indicated as having allowable subject matter since they depend from a claim that has allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOLLIE L IMPINK whose telephone number is (571)270-1705. The examiner can normally be reached Monday-Friday (7:30-3:30).
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
MOLLIE LLEWELLYN IMPINK
Primary Examiner
Art Unit 3799
/MOLLIE IMPINK/Primary Examiner, Art Unit 3799
Prosecution Insights