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 .
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 3-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-5 of copending Application No. 19/337,524 in view of Bowers (US 2014/0216977).
This is a provisional nonstatutory double patenting rejection.
The claims of the instant application and the claims of the reference application are compared in the table below.
Application 19/337,524
Instant application
Claim 1: A booklet packaging for containing nicotine pouches, comprising:
a plurality of pouches containing a consumable product, each pouch having a porous external layer surrounding an interior for containing the consumable product, the external layer being non-rigid and the consumable product being compressible;
front cover, a back cover, and at least one page positioned at least partly between the front cover and the back cover, each page including:
a dispensing layer including a plurality of discrete blisters, each blister forming a receptacle with an opening, each blister being configured to contain a respective one of the plurality of pouches and each blister including an opener located in the dispensing layer to access the contents of the blister; and
a backing layer attached to the dispensing layer and sealing the opening of each blister, the backing layer being rigid to prevent the pouch from being pushed through,
wherein when an external force is applied to the opener, the opener ruptures the blister, permitting individual sanitary dispensation of the pouches from the page.
Claim 3: A booklet packaging for containing nicotine pouches, the packaging comprising:
a plurality of pouches containing a consumable product, each pouch having a porous external layer surrounding an interior for containing the consumable product, the external layer being non-rigid and the consumable product being compressible;
a front cover, a back cover, and at least one page positioned at least partly between the front cover and the back cover, each page including:
a dispensing layer including a plurality of discrete blisters, each blister forming a receptacle with an opening, each blister being configured to contain a respective one of the plurality of pouches and each blister including a portion of mechanical weakness formed in the dispensing layer to access the contents of the blister, and
a backing layer attached to the dispensing layer and sealing the opening of each blister, the backing layer being rigid to prevent the pouch from being pushed through,
wherein when an external force is applied to the blister, the portion of mechanical weakness ruptures relative to a surrounding portion of the blister, permitting individual sanitary dispensation of the pouches from the page; wherein each discrete blister comprises an opener coupled to the blister, wherein the opener ruptures the blister when an external force is applied to the opener.
Claim 3: The booklet packaging according to claim 1, wherein the opener comprises a rigid material which punctures the blister when an external force is applied to the opener.
Claim 4: The booklet packaging according to claim 3, wherein the opener comprises a portion of rigid material external to the blister which ruptures the blister when an external force is applied to the opener.
Claim 4: The booklet packaging according to claim 1, wherein the opener comprises a rib located on the blister which ruptures the blister when a force is applied to the rib.
Claim 5: The booklet packaging according to claim 3, wherein the opener comprises a rib located on the blister which ruptures the blister when a force is applied to the rib.
Claim 5: The booklet packaging according to claim 1, wherein the opener is formed of a portion of the blister and is formed of a folded portion of blister material.
Claim 6: The booklet packaging according to claim 3, wherein the opener is formed of a portion of the blister and is formed of a folded portion of blister material.
Claim 1 of the reference application recites all of the limitations of claim 1 of the instant application, except that it recites “a portion of mechanical weakness” while claim 3 of the present application recites “a portion of mechanical weakness in combination with “opener.” However, Bowers discloses a package (10) comprising blister compartments (18) with rupturable locations (20) including perforation lines (22) (see [0030]). It would have been obvious to one of ordinary skill in the art to have the blisters of the reference application with perforation lines as taught by Bowers because in combination with the opener the user would have easy access to the interior of the blisters.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “porous external layer” of the pouches must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claim 1, line 3, the limitation “each pouch having a porous external layer surrounding an interior for containing the consumable product” raises a written description issue because it is unclear the material used for the layer requiring is “porous”. Nowhere in the specification is disclosed the material for the layer of the pouches to be porous. It is unclear from the specification the material used for the external layer of the pouches to be porous. Dependent claims 2-18 are rejected because the claims inherit the same issue of claim 1.
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 1-18 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. Regarding claim 1, the claim is indefinite for the reasons explained in the 112, first paragraph, above. It is unclear how the external layer is porous. Dependent claims 2-18 are rejected because the claims inherit the same issue of claim 1.
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.
Claims 1-7 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bellamah (US 8,567,606) in view of Stevens (WO 2016065414) and Takeuchi (US 2014/0027325).
Claims 1 and 3
Bellamah discloses a booklet packaging (10) for containing nicotine tablets/consumable products (see column 1 lines 14-17), a front cover (24), a back cover (28), and at least one page (defined by blister pack retainer 12 in combination with blister pack 100) positioned at least partly between the front cover and the back cover, each page including plurality of discrete blisters (102) (see column 6 lines 48-52), each blister forming a receptacle with an opening (defined by opening closed by layer 104), each blister being configured to contain a respective one of the plurality of nicotine tablets/consumable products, and a backing layer (104) attached to the dispensing layer and sealing the opening of each blister (see column 6 lines 48-52), the backing layer being rigid, made from foil and paper laminate material, to prevent the pouch from being pushed through. Bellamah discloses the backing layer made from rigid, such as foil and paper laminate material, preventing the nicotine tablets/consumable products to pass the through the backing layer. Bellamah discloses in order to have access to the nicotine tablets/consumable products, the user peel off a portion of paper from the laminate of the backing layer, and then rupture the foil portion of the laminate (see column 6 lines 59-67 and column 7 lines 1-3). Bellamah does not disclose a dispensing layer in the plurality of blisters, and forming an opening, wherein each blister including a portion of mechanical weakness, as required. Bellamah does not disclose the nicotine tablets/consumable products enclosed within pouches, each pouch having a porous external layer surrounding an interior for containing the consumable product, the external layer being non-rigid and the consumable product being compressible. However, regarding the limitation of the dispensing layer, Stevens discloses a package (1) comprising a blister (11) comprising a rupturable/opener portion (19) coupled to the blister and presenting mechanical weakness when external force is applied to the blister (see figures 1, 15 and [0049]). 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 blisters of Bellamah including a rupturable/opener portion as taught by Stevens for easy access to the contents inside each of the blisters. Regarding the consumable product, Takeuchi discloses a blister package (2) enclosing a pouch (P) containing a consumable product, wherein the pouch comprises a porous non-rigid external layer, such as nonwoven fabric sheet, having compressible tobacco microparticles (SNUS) (see figures 10, 12 and [0041]-[0043]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Bellamah replacing the tablets for the pouches enclosed within the blisters as taught by Takeuchi as an alternative type of consumable product disposed provided in the blisters, and since both types of nicotine/consumable products are equivalent in the art.
Claim 2
Bellamah further discloses the front cover and back cover are foldable with respect to one-another between a closed configuration (see figure 3), in which the front and back covers restrict access to the at least one page, and an open configuration (see figures 1 and 2) in which the front cover and the back cover permits access to the at least one page.
Claims 4 and 5
Stevens further discloses the rupturable/opener comprises a rib (21) of rigid material (see [0008]) external to the blister which ruptures the blister when an external force is applied to the opener (see figure 15).
Claim 6
Stevens further discloses the rupturable/opener portion (19) extending from side to side of the surface of the blister (see figures 1 and 5). After Bellamah is modified by Stevens, the rupturable/opener portion will be formed of a portion of the blister and is formed of a folded portion of blister material.
Claim 7
Bellamah further discloses a bridge/spine (32) extending between the front cover and the back cover and wherein the at least one page is connected to the bridge (see figures 1 and 3).
Claim 14
Bellamah further discloses the plurality of discrete blisters extend from a first face of each respective page. Bellamah discloses the blisters extending from a face (18) of page (12) (see figure 3). Bellamah further discloses the packaging structure include a second page/retainer (12) (see column 5 lines 31-33).
Claim 15
Bellamah further discloses the dispensing layer is a first dispensing layer and the plurality of discrete blisters is a first plurality of sealed blisters, each page includes a second dispensing layer including a second plurality of discrete blisters, each blister forming a receptacle with an opening, each blister being configured to contain a respective one of the plurality of pouches and each blister including a portion of mechanical weakness formed in the dispensing layer to access the contents of the blister, and the second plurality of discrete blisters extend from a second, opposite, face of each respective page. Bellamah discloses the second page is similar to the first page (see page 6 lines 31-43).
Claim 16
Bellamah further discloses the backing layer is attached to the first dispensing layer and the second dispensing layer. Bellamah discloses each blister package including same components, such as the backing layer, wherein the backing layer of the second blister package is attached to the second dispensing layer as is attached to the first dispensing layer.
Claims 8-10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Bellamah (US 8,567,606), Stevens (WO 2016065414) and Takeuchi (US 2014/0027325) as applied to claim 1 above, and further in view of St. Charles (US 2010/0018882).
Claim 8
Bellamah does not disclose any of the front cover and the back cover comprises a waste chamber separated from the discrete blisters, as required. However, St. Charles discloses a container (10) for enclosing smokeless tobacco comprising a pouch/onsert (34) attached to the exterior of the container (see figure 7), and wherein the pouch/onsert can be used as a waste chamber for storage of used nicotine pouches (see [0011] and [0059]), the waste chamber comprising a sealable opening (44) for depositing the used nicotine pouches (see [0061]), wherein the sealable opening is accessible from an exterior portion of the container (see figure 9). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Bellamah having an external pouch/onsert on any of the front or back covers as taught by St. Charles for carrying the used nicotine consumable products in case a waste disposal is not available.
Claim 9
St.Charles further discloses the opening is sealable with a slidable grip seal. St. Charles discloses the pouch/onsert includes a flap (46) that is insertable/slidable into a slot (58) formed in the pouch/onsert (see [0063]).
Claim 10
St.Charles further discloses the sealable opening is biased towards a closed position (see figures 7 and 9).
Claim 12
St.Charles further discloses the waste chamber comprises a leak-proof/waterproof or water impermeable lining, such as waxed paper, foil, or plastic (see [0062]).
Claims 13, 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Bellamah (US 8,567,606), Stevens (WO 2016065414) and Takeuchi (US 2014/0027325) as applied to claim 1 or 15 above, and further in view of McGonagle (US 2009/0139893).
Claims 13, 17 and 18
Bellamah further discloses at least two pages, wherein the plurality of discrete blisters of a first page of the at least two pages are positioned in a first array, and wherein the plurality of discrete blisters of a second page of the at least two pages are positioned in a second array. Bellamah discloses the second page is similar to the first page (see page 6 lines 31-43). With respect to claim 18, each of the pages of Bellamah comprises multiple blisters, such as column of blisters (see figures 1 and 2), wherein one column of the first and second page could be considered as first and third array of blisters, and a second column of the first and second page could be considered as second and fourth array of blisters. Bellamah does not disclose the first and/or first and third array is offset relative to the second and/or second and fourth array, such that when the pages are layered face to face one-another, the first and/or first and third array and second and fourth array engage between each other to form an overlapping blister layer. However, McGonagle discloses a product package comprising multiple pages (12a and 12b), each comprising plurality of blisters (36a and 36b), wherein when the blisters of the pages are in an arrangement which when facing one to another, engage one to another forming an overlapping blister layer (see figure 2). McGonagle discloses this overlapping arrangement reduces the overall thickness of the product package (see [0079]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Bellamah having the blisters of the first and second pages in overlapping arrangement when facing to each other as taught by McGonagle to reduce the overall thickness of the booklet packaging.
Conclusion
Examiner has cited particular paragraphs and/or columns and line numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested of the applicant, in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or prior art(s) disclosed by the Examiner (in the attached PTO-892 form).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAFAEL A. ORTIZ whose telephone number is (571)270-5240. The examiner can normally be reached Monday - Friday 9am - 6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RAFAEL A. ORTIZ
Primary Examiner
Art Unit 3736
/RAFAEL A ORTIZ/Primary Examiner, Art Unit 3736
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