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 .
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1, 4, 5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akiyama et al. (US-7115309-B2).
Akiyama discloses a copolyester container (1, col. 5, lines 4-13) that is stretch blow molded from a preform (col. 1, lines 7-10) comprising a stretched container body (Fig. 1) having a container neck (at 2) attached thereto, the container neck having an outlet opening, and the container body (5) having a second opening closed by a weld seam (col. 4, lines 46-55), wherein the container comprises a tube having a tube neck (at 3) and a tube end opposite the tube neck, wherein the outlet opening is situated in a region of the tube neck and the second opening is situated in a region of the tube and the second opening is sealed by the weld seam (Fig. 1), wherein the container is comprises of a single layer for easier recycling (Fig. 2), wherein the copolyester of the container includes a copolymer (col. 5, lines 4-13). Note that the relation of the final container to the upstretched container and the welding and welding temperatures of the preform are being treated as product by process limitations, and prior art container reads on the final structure claimed. Where the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products.” [In re Best, 562 F2d 1252, 1255, 195 USPQ 430, 433-4 (CCPA 1977); MPEP §2112.01].
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama.
Akiyama teaches wherein the weld can with stand strains but fails to specifically teach wherein the weld is 5 mm and can withstand a tensile force of 100 N. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the weld to withstand a tensile strength, in order to ensure that the container can be used normally. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the weld to be 5 mm, in order to correspond to the container sizer and since such a modification would have been a change in size of an existing component. A change in size is generally recognized as being within the level of ordinary skill in the art.
Applicants may rebut a prima facie case of obviousness based on optimization of a variable disclosed in a range in the prior art by showing that the claimed variable was not recognized in the prior art to be a result-effective variable. E.I. Dupont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1008, 128 USPQ2d 1193, 1202 (Fed. Cir. 2018). ("The idea behind the 'result-effective variable' analysis is straightforward. Our predecessor court reasoned that a person of ordinary skill would not always be motivated to optimize a parameter 'if there is no evidence in the record that the prior art recognized that [that] particular parameter affected the result.' Antonie, 559 F.2d at 620.) For example, in Antonie the claimed device was characterized by a certain ratio, and the prior art did not disclose that ratio and was silent regarding one of the variables in the ratio. Id. at 619. Our predecessor court thus reversed the Board’s conclusion of obviousness. Id. at 620. Antonie described the situation where a 'parameter optimized was not recognized to be a result-effective variable' as an 'exception' to the general principle in Aller that 'the discovery of an optimum value of a variable in a known process is normally obvious.' Id. at 620. Our subsequent cases have confirmed that this exception is a narrow one. … In summarizing the relevant precedent from our predecessor court, we observed in Applied Materials that '[i]n cases in which the disclosure in the prior art was insufficient to find a variable result-effective, there was essentially no disclosure of the relationship between the variable and the result in the prior art.' 692 F.3d at 1297. Likewise, if the prior art does recognize that the variable affects the relevant property or result, then the variable is result-effective. Id. ('A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.')"). Applicants must articulate why the variable at issue would not have been recognized in the prior art as result-effective. However, it should be noted that after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See subsection II.B above for additional information about consideration of result-effective variables within an obviousness analysis
Claim(s) 2 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama in view of Krishnakumar et al. (US-5989661-A).
Akiyama teaches all the claimed limitations as shown above and the product by process limitation of weld temperature, but fails to teach wherein the copolyester is polyethylene terephthalate (PET) having a copolymer content between 4 wt. % and 10 wt. %, and the copolymer is isophthalic acid, diethylene glycol, furan dicarboxylic acid, propylene glycol, or butylene glycol, and the PET is bio-based in a proportion of at least 30% or produced from as much as 30% regenerate.
Krishnakumar teaches that it is known in the art to manufacture a container with polyethylene terephthalate (PET) having a copolymer content between 4 wt. % and 10 wt. %, and the copolymer is isophthalic acid, diethylene glycol, furan dicarboxylic acid, propylene glycol, or butylene glycol (col. 10, lines 27-36), and the PET is produced from a regenerate (col. 10 lines 65-67).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the container with polyethylene terephthalate (PET) having a copolymer content between 4 wt. % and 10 wt. %, and the copolymer is isophthalic acid, diethylene glycol, furan dicarboxylic acid, propylene glycol, or butylene glycol, in order to adjust the durability of the container and since 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. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have to have manufactured the container with 30% regenerate for recycling purposes and since 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.
Claim(s) 3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama and Krishnakumar in view of Vandormael et al. (US-20180117871-A1).
Akiyama fails to teach wherein the container is polyethylene furanoate (PEF) having a copolymer content below 5 wt. %, wherein the copolymer is terephthalic acid, isophthalic acid or diethylene glycol, propylene glycol, spiro- glycol or butylene glycol, and wherein the container has an integral handle formed with a reach-through opening, wherein the weld seam bounds off the reach-through opening by joining a first and second wall end bordering on the reach-through opening.
Vandormael teaches that it is known the art to manufacture a container that is polyethylene furanoate (PEF) having a copolymer content below 5 wt. %, wherein the copolymer is terephthalic acid, isophthalic acid or diethylene glycol, propylene glycol, spiro- glycol or butylene glycol (par. 29), wherein the container has an integral handle formed with a reach-through opening, wherein a bottom of the container bounds off the reach-through opening by joining a first and second wall end bordering on the reach-through opening (Fig. 2).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the container with polyethylene furanoate (PEF) having a copolymer content below 5 wt. %, wherein the copolymer is terephthalic acid, isophthalic acid or diethylene glycol, propylene glycol, spiro- glycol or butylene glycol, in order to adjust the durability of the container and since 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. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the container with a handle, in order to make it easier to hold the container.
Response to Arguments
Applicant's arguments filed 10/13/2025 have been fully considered but they are not persuasive.
Product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case the, the final container implied by the steps has the same structure as the prior art discussed above and therefore the prior art reads on the limitations as currently claimed.
"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983) (The claims were directed to a zeolite manufactured by mixing together various inorganic materials in solution and heating the resultant gel to form a crystalline metal silicate essentially free of alkali metal. The prior art described a process of making a zeolite which, after ion exchange to remove alkali metal, appeared to be "essentially free of alkali metal." The court upheld the rejection because the applicant had not come forward with any evidence that the prior art was not "essentially free of alkali metal" and therefore a different and nonobvious product.).
An argument by the applicant is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art.
Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY R ALLEN whose telephone number is (571)270-7426. The examiner can normally be reached 9:00 am - 5:00 pm, Monday-Friday.
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/JEFFREY R ALLEN/Primary Examiner, Art Unit 3733