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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/6/2026 has been entered.
Response to Arguments
Applicant's arguments regarding the 112A of claim 5 have been fully considered but they are both moot and not persuasive. Applicant does not address the entirety of the rejection, most importantly the “may” issue noted in the rejection. This is important as the same issue has been amended into claim 1. As for the 102 rejections under Saram, the Examiner notes that the Applicant’s arguments do not apply to the current claim set. There exists no “one-piece composite paper structure”, “cooperating inner and outer functional layers”, or “pore closure coatings”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 and all subsequent dependent claims are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the claim limitation “an outer layer comprising a biodegradable protective film” is not supported by the specification and therefore represents a written description violation and a new matter situation. Primarily, the specification does not specifically state that this feature is contained in the invention. According to [0037], “The outer layer of the bag … may contain a protective film or resin”. The statement “may” indicates mere possibility, not possession of the feature by the Applicant. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 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 5, the claim limitation “the outer layer is configured to … provide transient impermeability” renders the claim indefinite, as the this term does not have any definition in the specification and is not obviously understood by the Examiner. Simply put, what exactly is “transient impermeability”? A glass window that can open and close would be transiently impermeable, but the Examiner can find no structure of this sort in the current application. In the interest of compact prosecution, the Examiner will interpret this to include at least a measure of at least temporary impermeability.
Claim Rejections - 35 USC § 103
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Saram in view of Nielsen, US 20090216207.
Regarding claim 1, Saram discloses: ENVIRONMENTALLY FRIENDLY DISPOSABLE WASTE BAG comprising a bag (Figs. 5a-5b, waste pick up receptacle 522) for the collection and the disposal or the composting of animal waste, made of paper or paperboard (Col. 2, line 1, “The receptacle can be made from a flexible material such as paper or plastic, and the hard surfaces can be made from an at least semi-stiff material such as paperboard.”), wherein there are disposed sealing components that are shaped and glued in the bag forming a pair of locking (Col. 15, line 32, “In an embodiment, the taller sides 514 can be sealed to prevent spillage. In an embodiment, the receptacle can be sealed by … mechanical couplings.”)handles (Figs. 5a-5b, grips 512 in taller sides 514), having an attached and detachable (Col. 15, line 1, “ In an embodiment, the waste device of FIGS. 5A and 5B includes a panel 518 having a detachable portion. The panel 518 is attached to a tall sides 514 such that it supports the tall side 514 to which it is fixedly attached. A detachable portion of the panel overlaps with at least a portion of the tall side 514 that extends beyond the shorter sides of the receptacle 522. The detachable portion can be attached to any location of the receptacle 522. The detachable portion can be attached by a removable adhesive. In an embodiment, the detachable portion can be attached to the surface of the receptacle by a removable adhesive. The detachable portion is removed from the adhesive when the receptacle is in waste pick-up mode. Remaining adhesive on the surface of the receptacle 522 can then be used to seal the receptacle after waste pick-up mode.”) folding piece of hardened cardboard mode in layered material that is etched in its handle (Figs. 5a-5b, panel 518), said handle deriving a shovel (Abstract
The present invention is a waste pick-up and storage device for scooping solid and semi-solid pet waste. The device includes a bag portion and a scoop portion. In an embodiment, two scoops scoop the pet waste into the bag. In an embodiment, a portion of the scoop is detachable, and another portion is secured to the bag for providing support”)(Figs. 5a-5b, panel 518) when detached and formed or folded (Col. 8, line 5, “FIG. 5A is a perspective view of an example of a single-scoop waste pick-up and storage device according to an embodiment of the present invention.”); and having a locking system (4 and 5) being obtained by to matching cuts and creases or holes in the piece of cardboard when connected the opposite sides of such a handle, or when said handles are folded in half (Col. 15, line 32, “In an embodiment, the taller sides 514 can be sealed to prevent spillage. In an embodiment, the receptacle can be sealed by adhesives or mechanical couplings. In an embodiment, an adhesive can be tape with a removable cover strip, VELCRO, or other conventional methods for sealing containers when desired. The receptacle 522 can be sealed by any adhesives, including but not limited to glue, epoxy, and tape.”), wherein the bag (1) comprises an inner layer coated with a resinous film impregnated with bactericidal agents configured to neutralize pathogens in the animal waste (Col. 20, line 60, “The an embodiment described herein can be made of materials including but not limited to paper, plastic, and/or metal. For example, receptacles can be made from a flexible plastic bag, and/or a flexible paper bag. The panels and covers can be made from inflexible material, such as plastic, metal, and/or cardboard. In an embodiment, the paper is uncoated. In an embodiment, the paper can be coated. For example, the paper can have a wax coating, coatings to increase durability, and/or coatings to waterproof the paper. The coatings can have antibacterial, anti-odor, and/or disinfectant for the user's benefit. The coating can be a non-stick coating, to prevent residue from remaining on the device. The coating can include baking soda as a deodorant.”) and an outer layer (Col. 20, line 60).
Saram does not explicitly disclose: an outer layer comprising a biodegradable protective film.
Nielsen teaches: an outer layer a biodegradable protective film ([0009] “This film meets the following requirements: [0010] 1) It is biodegradable, i.e. 90 percentage of the weight of the film is degraded after six months (as determined by ISO 14852); [0011] 2) It is impervious to water and faeces odour for at least for 10 hours; examples 2 and 3 illustrates a marked reduction in oxygen permeability and smell penetration when a biodegradable film is coated with a substantially exfoliated silicate filler material.”).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of invention to utilize the protective film coating of Nielsen in combination with the bag or Saram, thereby combining prior art elements to achieve a predictable result. The benefit of this coating is that when combined with a biodegradable bag, both bag and coating will biodegrade, reducing the environmental impact of the total device.
Regarding claim 2, the modified Saram further discloses: : the sealing components comprises two separate and matching cuts that are printed or etched in the pair of locking handles, said cuts acting as a locking set that aims to seal the bag by locking its sides and ensuring that the bag remains closed (Col. 15, line 32, “In an embodiment, the taller sides 514 can be sealed to prevent spillage. In an embodiment, the receptacle can be sealed by … mechanical couplings.”).
Regarding claim 3, the modified Saram further discloses: the pair of locking handles has a permanent seal for the contexts of the bag that makes use of adhesive strips printed or glued along the cutting of the locks that fix the same to make bag sealed (Col. 15, line 32, “In an embodiment, the taller sides 514 can be sealed to prevent spillage. In an embodiment, the receptacle can be sealed by adhesives or mechanical couplings. In an embodiment, an adhesive can be tape with a removable cover strip, VELCRO, or other conventional methods for sealing containers when desired. The receptacle 522 can be sealed by any adhesives, including but not limited to glue, epoxy, and tape.”).
Regarding claim 4, the modified Saram further discloses: the bag is made for containing and conditioning pet waste before disposal and its innermost layer or film is made of material that can be treated with and or carry reagents or reactants to react with its contents and that may contain one or more biologically or chemically active reactant substances for neutralizing bacteria and other pathogens present in the content, said layer being bactericide and suitable (Col. 20, line 60, “The an embodiment described herein can be made of materials including but not limited to paper, plastic, and/or metal. For example, receptacles can be made from a flexible plastic bag, and/or a flexible paper bag. The panels and covers can be made from inflexible material, such as plastic, metal, and/or cardboard. In an embodiment, the paper is uncoated. In an embodiment, the paper can be coated. For example, the paper can have a wax coating, coatings to increase durability, and/or coatings to waterproof the paper. The coatings can have antibacterial, anti-odor, and/or disinfectant for the user's benefit. The coating can be a non-stick coating, to prevent residue from remaining on the device. The coating can include baking soda as a deodorant.”).
Regarding claim 5, the modified Saram further discloses: the outer layer is configured to reduce odor permeability and provide transient impermeability ([0009] “This film meets the following requirements: [0010] 1) It is biodegradable, i.e. 90 percentage of the weight of the film is degraded after six months (as determined by ISO 14852); [0011] 2) It is impervious to water and faeces odour for at least for 10 hours; examples 2 and 3 illustrates a marked reduction in oxygen permeability and smell penetration when a biodegradable film is coated with a substantially exfoliated silicate filler material.”).
Regarding claim 6, the claim limitation “bag is manufactured by laminating multiple cellulose-based paper layers and applying a biodegradable resin coating by pore closure rollers.” Represents a product by process claim. This claim represents a Product by Process Claim. According to MPEP 2113 “Product-by-Process Claims [R-08.2017]”, III. THE USE OF 35 U.S.C. 102/103 REJECTIONS FOR PRODUCT-BY-PROCESS CLAIMS HAS BEEN APPROVED BY THE COURTS
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; "[T]he lack of physical description in a product-by-process claim makes determination of the patentability of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith." In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claim 7, the modified Saram further discloses: the bag is formed from at least one of: a virgin paper, and a recycled paper (Col. 20, line 60, “The embodiment described herein can be made of materials including but not limited to paper”).
Alternative Rejection
Based upon the figures and disclosure of the Saram reference, the examiner is confident that the reference clearly reads on the claim limitations of claim 2 However, in the interest of both compact prosecution and the interest of assisting the applicant in obtaining the most legally trustworthy and sound Patent, the examiner would like to include the following rejection.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Saram in view of Ring, US 5564762.
Regarding claim 2, Saram discloses the device of claim 1.
Saram does not explicitly disclose: the sealing components comprises two separate and matching cuts that are printed or etched in the locking handles, said cuts acting as a locking set that aims to seal the bag by locking its sides and ensuring that the bag remains closed.
Ring teaches: the sealing components comprises two separate and matching cuts that are printed or etched in the locking handles, said cuts acting as a locking set that aims to seal the bag by locking its sides and ensuring that the bag remains closed (Col. 6, line 65, “The cover portion 22 is bent downwardly about fold line 46 over the open end of the container, and the forward edge is snapped into slot 34, which is provided for this purpose. Cover portion 22 then acts as a lid, covering the contents of the container, as illustrated in FIG. 9“).
Therefore, it would have been obvious to none having ordinary skill in the art at the time of filing to utilize the locking cuts as taught by Ring, in combination with the device of Saram, thereby combining prior art elements to achieve a predictable result. This alteration represents a simple substitution of one closing method for another, as Saram has previously detailed sealing methods to achieve the same purpose (Col. 15, line 32). A further benefit of this alteration is that by eliminating glue or Velcro, the manufacturing process can be simplified.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL JEREMY LEEDS whose telephone number is (571)272-2095. The examiner can normally be reached Mon-Thurs, 0730-1730.
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, Anna Kinsaul can be reached at 571-270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL JEREMY LEEDS/Primary Examiner, Art Unit 3731