DETAILED ACTION
Double Patenting
1. 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.
2. Claims 1-3, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,515,849. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims anticipate the instant claims. See table below.
Claim 5 of Patent No. US 12,515,849
Instant claims 1-3, 6, and 7
5. An apparatus, comprising:
1. An apparatus, comprising:
a plug assembly removably and sealably attachable to a spout;
a plug assembly attached to a fitment;
a plug assembly removably and sealably attachable to a spout;
wherein the plug assembly is removable from the fitment;
a plug assembly removably and sealably attachable to a spout;
wherein the plug assembly is hermetically sealed to the fitment;
wherein the plug assembly comprises a plug and a plug insert;
wherein the plug assembly comprises a plug and a plug insert; and
…when the plug is separated from the plug insert.
wherein the plug is removably attached to the plug insert.
(claim 5) … a plug assembly removably and sealably attachable to a spout … wherein the plug assembly comprises a plug and a plug insert;
2. The apparatus of claim 1, wherein the plug insert is hermetically sealed to the fitment.
(claim 5) … a plug assembly removably and sealably attachable to a spout … wherein the plug assembly comprises a plug and a plug insert;
3. The apparatus of claim 1, wherein the plug insert is hermetically sealed to a spout.
(claim 5) … the plug insert and the spout comprise a means for engaging in order to retain the plug insert in the spout when the plug is separated from the plug insert.
6. The apparatus of claim 1, wherein the plug insert and the fitment comprise a means for engaging in order to retain the plug insert in the fitment when the plug is separated from the plug insert.
(claim 5) … wherein the plug insert comprises a plug insert body adapted to be removably attached to the plug and a means for inhibiting a flow of a flowable material through the spout
7. The apparatus of claim 1, wherein the plug insert comprises a plug insert body and a means for inhibiting a flow of a flowable material through a spout.
3. Claims 1-3, 6, and 7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,515,849. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims anticipate the instant claims. See table below.
Claim 6 of Patent No. US 12,466,614
Instant claims 1-3, 6, and 7
6. An apparatus, comprising:
1. An apparatus, comprising:
a plug assembly removably and sealably attachable to a spout;
a plug assembly attached to a fitment;
a plug assembly removably and sealably attachable to a spout;
wherein the plug assembly is removable from the fitment;
a plug assembly removably and sealably attachable to a spout;
wherein the plug assembly is hermetically sealed to the fitment;
wherein the plug assembly comprises a plug and a plug insert;
wherein the plug assembly comprises a plug and a plug insert; and
…when the plug is separated from the plug insert.
wherein the plug is removably attached to the plug insert.
(claim 6) … a plug assembly removably and sealably attachable to a spout … wherein the plug assembly comprises a plug and a plug insert;
2. The apparatus of claim 1, wherein the plug insert is hermetically sealed to the fitment.
(claim 6) … a plug assembly removably and sealably attachable to a spout … wherein the plug assembly comprises a plug and a plug insert;
3. The apparatus of claim 1, wherein the plug insert is hermetically sealed to a spout.
(claim 5) … the plug insert and the spout comprise a means for engaging in order to retain the plug insert in the spout when the plug is separated from the plug insert.
6. The apparatus of claim 1, wherein the plug insert and the fitment comprise a means for engaging in order to retain the plug insert in the fitment when the plug is separated from the plug insert.
(claim 5) … wherein the plug insert comprises a plug insert body adapted to be removably attached to the plug and a means for inhibiting a flow of a flowable material through the spout;
7. The apparatus of claim 1, wherein the plug insert comprises a plug insert body and a means for inhibiting a flow of a flowable material through a spout.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 3 and 8-10 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 3, the claim is indefinite because the full scope of the claim has the plug assembly (which comprises a plug and plug insert) hermetically to a fitment, and the plug insert hermetically sealed to a spout. It is unclear if the spout is the fitment, or a different component, and if the full assembly can be hermetically sealed to a fitment, while only the plug insert is hermetically sealed to a spout.
Regarding claim 8, the term “the inner plug wall” lacks proper antecedent basis in the claims.
Further regarding claim 8, it is unclear how the central plug insert portion (202) extends in a vertical plane. Examiner notes this could be true if limited to the cross-section. As understood by the Examiner, the element is annular, and thus shaped more like a cylinder.
Regarding claim 9, from which claim 10 depends, it is unclear how the central plug insert portion (202) extends in a vertical plane. Examiner notes this could be true if limited to the cross-section. As understood by the Examiner, the element is annular, and thus shaped more like a cylinder.
Claim Interpretation
6. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
7. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Regarding claim 6, the term “means for engaging in order to retain the plug insert in the spout” is not explicitly disclosed in the Specification; however, it is believed to be described as comprising tabs (216) engaging spout tabs (414) when spout tabs (414) are positioned within recess (206; see para. [0050]).
Regarding claim 7, the term “means for inhibiting a flow of a flowable material through the spout” is not explicitly disclosed in the Specification; however, it is believed to be described as a “flow inhibitor” which can comprise a valve or baffle (para. [0004]).
Claim Rejections - 35 USC § 102
8. 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.
9. Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3,318,496 (Ayotte).
Regarding claim 1, Ayotte teaches an apparatus, comprising:
a plug assembly attached to a fitment (14);
wherein the plug assembly is removable from the fitment (closure 20 can be unscrewed from the neck; plug 18 is taught to be interlocked at bead 22 and annular undercut 38; however, the reference is silent as to the permanence of the connection, and it is noted the plug 18 is formed of “suitable rubber-like material” in col. 2, lines 66-71, and thus able to be resiliently distorted for removal);
wherein the plug assembly is hermetically sealed to the fitment (Examiner notes the seal of bead 22 into annular undercut 38, as well as flange-like wall portion 36 into annular shoulder 30, which collectively form a seal at that location; the limitation is not read such that the plug hermetically seals the entire container; the plug 20 seals to insert 18 by stem 62);
wherein the plug assembly comprises a plug (20) and a plug insert (18); and
wherein the plug is removably attached to the plug insert (closure 20 can be unscrewed from the container which includes removing plug 62 in order to dispense container contents).
Regarding claim 2, the plug insert is hermetically sealed to the fitment (Examiner notes the seal of bead 22 into annular undercut 38, as well as flange-like wall portion 36 into annular shoulder 30, which collectively form a seal at that location; the limitation is not read such that the plug hermetically seals the entire container).
Regarding claim 3, the plug insert is hermetically sealed to a spout (sealing described above with regard to claim 1; fitment 14 is a neck which is read as a spout).
Regarding claim 4, the plug is hermetically sealed to the plug insert (stem 62 seals outlet 42; see col. 3, lines 47-52).
Regarding claim 5, the plug is comprised of a flexible material (cap 20 is formed of “polypropylene” in col. 3, lines 16-19, which is a flexible material).
Regarding claim 6, the plug insert and the fitment comprise a means for engaging (22 and 38) in order to retain the plug insert in the fitment when the plug is separated from the plug insert (see Fig. 5).
Regarding claim 7, the plug insert comprises a plug insert body (32) and a means for inhibiting a flow of a flowable material through a spout (see inlet member 40).
Regarding claim 8, the plug insert body comprises, a distal plug insert portion (42), a central plug insert portion (32), and a proximal plug insert portion (34); and where the central plug insert portion extends in a vertical plane between the inner plug wall and at least one plug insert recess (Examiner notes this limitation is rejected above under 35 U.S.C. 112(b) for being indefinite; the central portion 32 extends in a vertical plane in cross-section).
Regarding claim 9, the distal plug insert portion is in sealable contact with an inner plug wall (42 seals against the underside of the closure as seen in Fig. 4); and wherein the central plug insert portion extends in a vertical plane between the inner plug wall (34) and at least one plug insert recess (38).
Allowable Subject Matter
10. Claim 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
11. The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 10, Ayotte fails to teach that the proximal plug insert portion comprises the at least one plug insert recess and at least one plug insert tab; and wherein the at least one plug insert tab is adapted to engage at least one internal spout tab when the at least one internal spout tab is situated within the at least one plug insert recess. No such tab, recess, or engagement thereof is taught.
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.
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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.
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/JAMES N SMALLEY/Examiner, Art Unit 3733
