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 .
Response to Amendment
In the Amended Claims of October 16, 2025, Claims 12, 13, and 17-18 are pending. Claim 12 is amended. Claim 18 is new.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boese (US 2022/0134799).
Please note that Boese has a filing date of November 4, 2020 and is used as a 35 USC 102(a)(2) reference. The present application has an earliest priority date of February 23, 2021 to provisional application 63/152673 with an effective filing date of February 21, 2022.
Regarding Claim 12, Boese discloses a system comprising a paint tray (46) wherein the housing 12 may be used as a paint tray liner for a paint tray as discussed in Paragraphs 0029 and 0033 and a liner housing (12). This housing has a flexible body (Paragraph 0020) made of an elastic material, the flexible body having a front wall (30), a back wall (32), a floor (14), and two side walls (34, 36), wherein the front wall is shorter than the back wall and the depths of the side wall vary along a length of the housing. Boese also discloses a continuous liner lip (38) defining an open top portion of the liner, with said continuous liner lip having a continuous flat surface extending from the front wall, the back wall, and the two sidewalls
Boese also discloses a lid (56) made of silicone material (Paragraph 0030) connected to the paint tray, the lid having a periphery (60) that extends downward with a lip that wraps around the at least one lip of the paint tray.
Regarding Claim 13, Boese discloses the lid is made from a silicone material.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Boese (US 2022/0134799) as applied to claims 12 and 13 above, and further in view of Killian (US 7083044).
Regarding Claims 17 and 18, Boese discloses the lid has a periphery that extends downward with a lip. Boese does not disclose the lid lip wraps around a lip of the paint tray. Rather, Boese does identify that the perimeter lip (60) of the cover (56) is extendable around and engagable with the perimeter wall (28) such that a substantially airtight seal is formed between the cover (56) and the perimeter wall (28) to prevent the drying out of paint located within the housing (12) (Paragraph 0030).
Killian discloses a similar paint tray (22) having a lip (26) and a flexible elastomeric cover (24) with a corresponding lip (32) configured to cover the open top portion of the pan and in full contact with the pan lip. Boese and Killian are analogous inventions in the art of flexible airtight lids for paint trays.
It would have been obvious for one having ordinary skill in the art before the effective filling date of the claimed invention to modify the paint tray and liner of Boese lip of Killian in order to provide a means to preserve and maintain paint within the tray and liner for extended periods of time without the paint drying out by engaging with the lip of the container body (26) (Killian Col. 7 Lines 50-60 and Col. 8 Lines 5-9).
Response to Arguments
Applicant’s arguments with respect to claim 12 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant provides affidavit evidence of Dr. Kevin Rollick PhD that one having ordinary skill would not have sufficient knowledge to know that silicone is a polymeric or elastomeric material. Alternatively, Applicant argues that one having ordinary skill in the art would also know that silicone is one of the worst barrier materials and would not be an obvious choice of materials for the lid in Killian.
Applicant is unfortunately mistaken.
It appears that Applicant believes that one having ordinary skill in the art as an active worker in the field is a PROFESSIONAL PAINTER and not a designer and developer of paint trays. This is made explicit on Page 7 of the Remarks and Arguments dated October 16, 2025.
A person having ordinary skill in the art for the evaluation of obviousness is NOT AN END USER of the product.
Rather, it would be one who has experience in designing, developing, and manufacturing of the product. Please see MPEP 2141.03: “The "hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art." Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988)
By way of analogy, to evaluate the obviousness of a diesel engine design modification, the appropriate standard would be a developer or designer of engines and not a diesel truck driver.
Therefore, Applicant’s affidavit evidence regarding the education level of professional painters or DIYers is irrelevant.
Similarly, the Inventor’s own affidavit as to whether the use of silicone material is obvious is also not apropos. The inventor’s own inexperience in the field is not an objective consideration in determining obviousness as a legal standard.
Finally, Applicant’s arguments as to unexpected results is a consideration of non-obviousness which is not a factor within the present rejection as the invention is anticipated by Boese. Boese also explicitly considers silicone as a flexible elastomer in Paragraph 0030.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIDEON R. WEINERTH whose telephone number is (571)270-5121. The examiner can normally be reached Monday-Friday 10AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando 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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/GIDEON R WEINERTH/Examiner, Art Unit 3736