`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.mptogov
`
`15/465,037
`
`03/21/2017
`
`7-59”-
`94””
`Winthrop & Welnstlne, P.A.
`Capella Tower, Suite 3500
`225 South Sixth Street
`
`°W°18
`
`Minneapolis, MINNESOTA 55402
`
`H“‘“El‘m—RNEYDOCKE”0-—“Mm
`Luke Logan Wagner
`13813.57.3.US.1U
`4147
`
`WILLIAMS= LELA
`
`1 792
`
`PAPER WEE
`
`NOTIFICATION DATE
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`DELIVERY MODE
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`01/24/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
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`patent@winthrop.c0m
`
`PTOL-90A (Rev. 04707)
`
`

`

`017709 A0110” Summary
`
`Application No.
`15/465,037
`
`Examiner
`LELA S WILLIAMS
`
`Applicant(s)
`Wagner, Luke Logan
`
`Art Unit
`1792
`
`AIA Status
`Yes
`
`- The MAILING DA TE ofthis communication appears on the cover sheet with the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1). Responsive to communication(s) filed on 3/21/2017
`.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`2a)[:| This action is FINAL.
`2b)
`This action is non-final.
`
`3)|:| An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)I:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparfe Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`
`
`Disposition of Claims"
`5)
`Claim(s)
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`1-18 is/are pending in the application.
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`5a) Of the above Claim(s)
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`is/are withdrawn from consideration.
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`6) El Claim(s)
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`is/are allowed.
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`7)
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`8)
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`Claim(s) 1-18is/are rejected.
`
`I] Claim(s)
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`is/are objected to.
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`are subject to restriction and/or election requirement
`9) El Claim(s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
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`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)l:| The specification is objected to by the Examiner.
`
`is/are: a)[:| accepted or b)|:| objected to by the Examiner.
`11)|:| The drawing(s) filed on
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)l:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or ( ).
`Certified copies:
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`a)I:I All
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`b)l:l Some**
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`c)I:I None of the:
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`1.[:|
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`Certified copies of the priority documents have been received.
`
`2.l:|
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`Certified copies of the priority documents have been received in Application No.
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`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/OSa and/or PTO/SB/Oab)
`2)
`Paper No(s)/Mail Date
`US. Patent and Trademark Office
`
`3) |:| Interview Summary (PTO—413)
`Paper No(s)/Mail Date
`4) D Other'
`
`PTOL—325 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20180108
`
`

`

`Application/Control Number: 15/465,037
`Art Unit: 1792
`
`Page2
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`DETAILED CORRESPONDENCE
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`Notice ofPre-AIA or AM Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined under the
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`first inventor to file provisions of the AIA.
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`2.
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`35 U.S.C. 101 reads as follows:
`
`Claim Rejections - 35 USC § 101
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`Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
`matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
`conditions and requirements of this title.
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`Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is
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`directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of
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`the four categories of patent eligible subject matter because the claims are not clear as to what
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`statutory category “System” falls under. Applicant can overcome this rejection by amending the
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`preamble of claims 1-18 to read, “A flavor release article. . .”, “A flavor enhancing article. . .”, or
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`the like.
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`Claim Rejections - 35 USC § 102
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`3.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`4.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(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.
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`

`

`Application/Control Number: 15/465,037
`Art Unit: 1792
`
`Page3
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`S.
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`Claim(s) 1-2, 4, 5, 10, 12, 13, are rejected under 35 U.S.C. 102(a)(1) as being
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`anticipated by Ashcraft US 5,249,676.
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`Regarding claims 1-2, 4, 5, 10, 12, 13, Ashcraft discloses a flavor burst structure
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`comprising a multilayer film with a flavor carrier label disposed between barrier layers
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`(Abstract). Given the broadest reasonable interpretation of “label”, the multilayer film of
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`Ashcraft is expected to meet the claimed limitation. The flavor burst film comprises a flavor
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`carrier layer, a first polymeric barrier layer on one side of the flavor carrier layer and a second
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`barrier layer on the other side of the flavor carrier layer (col. 2, lines 15 -20). Ashcraft teaches the
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`film comprises an adhesive between the flavor layer and barrier layers (col. 2, line 45) and in use
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`an overwrapped package with a tear tape, a strip of the flavor burst film is adhesively bonded to
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`the package beneath the overwrap so that the entire tear tape or a portion thereof overlies the
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`flavor burst film and is adhesively bonded to the separable barrier layer of the film. To open the
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`package the tear tape is pulled to slit the overwrap. At the same time, the tear tape separates the
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`outermost barrier layer from the flavor burst film thereby exposing the surface of the flavor
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`carrier layer and simultaneously releasing a burst of flavor from the film. The flavor burst film
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`can also be incorporated in the tear tape of an overwrapped package (col. 4, lines 10-25) or a
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`flavor burst film comprising one barrier layer and a flavor carrier layer may be applied to the
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`surface of a metal or glass container or package so that removal of the one barrier layer will
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`release the flavorant (col. 4, line 65-001. 5, line 5). Ashcraft further teaches flavors may
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`comprises essential oils and flavors such as dessert flavors (vanillin flavor) (col. 3, lines 5 -30,
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`col. 4, lines 2).
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`

`

`Application/Control Number: 1 5/465 ,03 7
`Art Unit: 1792
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`Page4
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`Claim Rejections - 35 USC § 103
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`6.
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`In the event the determination of the status of the application as subject to AIA 35 U.S.C.
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`102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the
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`statutory basis for the rejection will not be considered a new ground of rejection if the prior art
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`relied upon, and the rationale supporting the rejection, would be the same under either status.
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`7.
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`This application currently names joint inventors. In considering patentability of the
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`claims the examiner presumes that the subject matter of the various claims was commonly
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`owned as of the effective filing date of the claimed invention(s) ab sent any evidence to the
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`contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and
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`effective filing dates of each claim that was not commonly owned as of the effective filing date
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`of the later invention in order for the examiner to consider the applicability of 35 U.S.C.
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`102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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`8.
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`The text of those sections of Title 35, US. Code not included in this action can be found
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`in a prior Office action.
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`9.
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`The factual inquiries set forth in Graham v. John Deere Ca, 383 US. 1, 148 USPQ 459
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`(1966), that are applied for establishing a background for determining obviousness under 35
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`U.S.C. 103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`

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`Application/Control Number: 15/465,037
`Art Unit: 1792
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`Page5
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`10.
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`Claims 3, 6-9, 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over
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`Ashcraft US 5,249,676.
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`Regarding claim 3, claim 1 is applied as stated above. Ashcraft discloses a pull-tab
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`removably affixed to the multilayer film. The prior art does not expressly disclose the presence
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`of multiple pull-tabs, however, the use of multiple pull tabs would have been an obvious
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`modification to one of one ordinary skill in the art depending on the desired amount of flavor(s)
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`to be released or the size of the packaged product the multilayer film is attached to.
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`Regarding claims 6, 7, 14 claim 1 is applied as stated above. Ashcraft discloses wherein
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`the multilayer film is attached to packages such as cigarette packages, baked goods, cake mixes,
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`pharmaceuticals, etc. (col. 4, line 1 and lines 45-60). Ashcraft teaches the overwrap material or
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`“tear tape” as an oriented polypropylene film (col. 7, lines 30-40). Although the prior art does
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`not expressly state the pull-tab is water and tamper-proof or elastic, an oriented polypropylene
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`film would have necessarily been water-proof and it would have been obvious to one of ordinary
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`skill in the art to use water and tamper-proof material to protect the listed products, especially
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`cigarettes given the purpose of smoking, and an elastic material to make it easier to access the
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`products.
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`Regarding claims 8 and 9, claim 7 is applied as stated above. Ashcraft teaches wherein
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`the flavor burst film comprises one barrier layer and a flavor carrier layer may be applied to the
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`surface of a metal or glass container or package so that removal of the one barrier layer will
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`release the flavorant (col. 4, line 65-001. 5, line 5). Ashcraft does not expressly disclose the
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`claimed adhesive limitations; however, Ashcraft does teach a portion of the overwraps is a heat
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`sealable material and comprises a “tear tape” which projects slightly from the package as a tab,
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`therefore it would have been void of any adhesive (col. 7, lines 30-55). It would have been
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`

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`Application/Control Number: 15/465,037
`Art Unit: 1792
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`Page6
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`within the ambit of one of ordinary skill in the art to apply the film to the packaged product in
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`any known means capable of allowing the multilayer film to stay in place on the packaged
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`product and also allow for easy grasping.
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`Regarding claims 15, 16, Ashcraft teaches a flavoring composition disposed on at least a
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`portion of an outside surface of a container of the consumable and a pull tab removably affixed
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`to the outside surface of the container and covering the flavoring composition in its entirety. The
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`flavor burst film comprises a flavor carrier layer, a first polymeric barrier layer on one side of the
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`flavor carrier layer and a second barrier layer on the other side of the flavor carrier layer (col. 2,
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`lines 15-20). Ashcraft teaches the film comprises an adhesive between the flavor layer and
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`barrier layers (col. 2, line 45). Ashcraft teaches the flavors may be compounded or blended with
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`the polymeric material and teaches the use of flavor oils (col. 3, lines 5 -30) to form a “flavor
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`burst structure” (col. 6, lines 10-20) but does not expressly disclose wherein the flavoring
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`composition is an emulsion. Although the physical form is not expressly disclosed as an
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`emulsion, it would have been within the skill level of one of ordinary skill in the art to use any
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`form of flavor capable of being blended with the polymeric material and able to supply the
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`desired flavor when applied to the product.
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`Regarding claim 17, Ashcraft filrther teaches flavors may comprises essential oils and
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`flavors such as dessert flavors (vanillin flavor) (col. 3, lines 5-30, col. 4, lines 2).
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`Regarding claim 18, Ashcraft discloses wherein the multilayer film is attached to
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`packages such as cigarette packages, baked goods, cake mixes, pharmaceuticals, etc. (col. 4, line
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`1 and lines 45 -60). Ashcraft teaches the overwrap material or “tear tape” as an oriented
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`polypropylene film (col. 7, lines 30-40). Although the prior art does not expressly state the pull-
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`tab is water and tamper-proof, an oriented polypropylene film would have necessarily been
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`

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`Application/Control Number: 15/465,037
`Art Unit: 1792
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`Page7
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`water-proof and it would have been obvious to one of ordinary skill in the art to use water and
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`tamper-proof material to protect the listed products, especially cigarettes given the purpose of
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`smoking.
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`11.
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`Claim 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ashcraft
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`US 5,249,676 in View of Carroll US 2006/0073190.
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`Regarding claim 11, claim 10 is applied as stated above. Ashcraft teaches applying the
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`multilayer film to products such as pharmaceutical compositions but does not disclose the use of
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`edible adhesives. Carroll teaches edible film strip packets for confectionery products and
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`pharmaceuticals compositions wherein the compositions comprises edible adhesives, thereby
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`making the products safe for human consumption [Abstract, 0017, 0020]. One of ordinary skill
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`in the art would have been motivated to modify the invention of Ashcraft by using an edible
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`adhesive on the confectionery products and pharmaceuticals compositions to make them safe for
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`human consumption.
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`Conclusion
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`12.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LELA S WILLIAMS whose telephone number is (571)270-1126.
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`The examiner can normally be reached on M-F 8am-5pm.
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`Examiner interviews are available via telephone, in-person, and video conferencing using
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`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto.gov/interviewpractice.
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`

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`Application/Control Number: 15/465,037
`Art Unit: 1792
`
`Page8
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Erik Kashnikow can be reached on 571-270-3475. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-directuspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`[Lela S. Williams/
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`Examiner, Art Unit 1792
`
`NIREN A THAKUR/
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`Primary Examiner, Art Unit 1792
`
`