DETAILED ACTION
Priority
1. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
2. Claim 1 is objected to because of the following informalities:
Regarding claim 1, the claim should include the word “and” after “sleeve;” in order to indicate the ensuing final paragraph.
Regarding claim 11, the phrase “surrounded by casing” should be “surrounded by the casing”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. 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.
Claim 3 is 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 3, the term “the strip” lacks proper antecedent basis in the claims. Examiner notes claim 1 introduces “a main strip”.
Claim Rejections - 35 USC § 102
4. 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.
5. Claims 1-3, 7-9, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2005/0249897 (Fresnel).
Regarding claim 1, Fresnel teaches a casing (11) intended to surround at least one section of at least one container (1), the casing comprising at least one main strip of heat-shrinkable material (see para. [0041]) having at least one preferred direction of shrinkage, wherein the casing comprises at least one complementary flap comprising:
a base (15) attached to the main strip so as to be secured to the main strip at least at each of the longitudinal edges of the main strip, the main strip and the flap thus jointly forming a closed sleeve;
a grip tab (15.1) extending the base without itself being secured to the main strip, at least said grip tab being made of a material different from that of the main strip (explicitly stated to be made of amorphous, non-shrinking plastic in para. [0046]).
Regarding claim 2, the flap as a whole is made of a material different from that of the main strip (explicitly stated to be made of amorphous, non-shrinking plastic in para. [0046]).
Regarding claim 3, the grip tab is made of a plastics material whose base polymer is identical to that of the plastics material of the strip (explicitly stated to be formed of heat-shrink plastic in the second half of para. [0046]).
Regarding claim 7, both of the longitudinal edges of the strip do not have an overlap area (12.1 and 13.1 do not overlap as seen in Figure 10).
Regarding claim 8, the strip comprises at least one area of embrittlement (19; see paras. [0058]-[0059]).
Regarding claim 9, Examiner cites MPEP 2112.01 (III. PRODUCT CLAIMS – NONFUNCTIONAL PRINTED MATTER DOES NOT DISTINGUISH CLAIMED PRODUCT FROM OTHERWISE IDENTICAL PRIOR ART PRODUCT) which states:
Where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art (emphasis added). See In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004) (Claim at issue was a kit requiring instructions and a buffer agent. The Federal Circuit held that the claim was anticipated by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed.). See also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983) ("Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability …. [T ]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.").
Regarding claim 11, Fresnel teaches a container (2) surrounded by casing according claim 1.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0249897 (Fresnel) as applied above under 35 U.S.C. 102(a)(1).
Regarding claim 4, Fresnel fails to teach that the strip and/or at least the grip tab is made of or based on a material that is at least partially bio-based.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the strip and/or grip tab of Fresnel, forming them of a partially bio-based plastic motivated by the benefit of reducing environmental impact, having a predictable outcome absent a teaching of an unexpected result. 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. See MPEP 2144.07.
Regarding claim 5, Fresnel fails to teach that the strip and/or at least the grip tab is made of a material that is at least partially recycled.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the strip and/or grip tab of Fresnel, forming them of an at least partially recycled plastic, motivated by the benefit of reducing environmental impact, having a predictable outcome absent a teaching of an unexpected result. 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. See MPEP 2144.07.
Regarding claim 6, Fresnel fails to teach that the strip and/or at least the grip tab is made of a compostable material.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the strip and/or grip tab of Fresnel, forming them of a compostable plastic, motivated by the benefit of reducing environmental impact, having a predictable outcome absent a teaching of an unexpected result. 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. See MPEP 2144.07.
8. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0249897 (Fresnel) as applied above under 35 U.S.C. 102(a)(1), in view of US 2016/0009468 (Rancien).
Regarding claim 10, Fresnel as applied above fails to teach that the flap carries at least one electronic element.
Rancien, analogus to shrinkable sleeves, teaches it is known to provide an RFID device with an integrated circuit, for example for recording temperature (see para. [0056]). The reference does not specify any critical location for the device, but a person of ordinary skill would find it obvious to locate the device anywhere on the casing.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the casing of Fresnel, providing an RFID device as taught by Rancien, motivated by the benefit of recording the product’s temperature, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Moreover, it would be obvious to locate the device on the flap. A rearrangement of the parts of the prior art is obvious, absent a teaching of an unexpected result. See MPEP 2144.04(VI)(C). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
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, Nathan Jenness can be reached at (571) 270-5055. 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.
/JAMES N SMALLEY/Examiner, Art Unit 3733
Prosecution Insights