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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/05/2025 has been entered.
Response to Arguments
Applicant's arguments filed 11/05/2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually i.e. the layers of the modifying reference are bonded thus aren’t peelable, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). However, the primary references of Miyajima and Gleixner already teach peelable layers (Miyajima: Col. 2, lines 48-50 & Gleixner: Col. 6, lines 29-32, peelable layers), and impart the container shape of DeGroff does replace the features already taught by the primary references.
In response to applicant's argument that modifying reference of DeGroff does not teach peelable layers, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Further, the Applicant argues with that the support for criticality is found in the specification itself and disagrees with the finding that “the merely alleges that there is a nexus between the claimed ratio diameter and proper blow molding without providing evidence establishing a nexus between the two. Applicant or patent owner bears the burden of establishing a nexus between the objective evidence of nonobviousness and the claimed invention. See In re Huang, 100 F.3d 135, 140, 40 USPQ 1685, 1689 (Fed. Cir. 1996). MPEP 716.01(b).” The specification’s evidence still fails to establish a nexus as it serves as a conclusory statement that the container’s particular shape imports the benefit of suppressing defective molding by satisfying the claimed ratio (of the diameter of the constricted bottom portion to the diameter of the outer peripheral edge of the should portion).
Applicant argues that the specification must be taken as true and may serve as evidenced for said veracity. However, “the law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In this case, paragraph 35 in which the Applicant directs the Examiner’s attention still recites that said conclusory benefits are speculative in nature, using terms such as “possibility,” “hardly,” and “it is possible.” The Office accepts the statements as true but they can’t be relied upon to establish criticality to overcome the 103 rejections as stated below. Attention is directed to MPEP 716.01(a) for providing evidence of said criticality, reminded where a prima facie case of obviousness is established, the failure to provide rebuttal evidence is dispositive. Further, it is suggested that additional delineation of structural features is needed to adequately define the claimed invention from the prior art of record.
Applicant further argues that the ratio is not taught by rejection of method claim 4. However, the claims have been modified with the teachings of DeGroff depicting claimed relative diameters of constricted portions to shoulder edge. Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). There is nothing prohibiting the container shape of DeGroff which is patently indistinguishable from claimed invention from having the same ergonomics. Further, Applicant is reminded that court held that the configuration of the claimed plastic container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
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.
Claim(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyajima (US Patent No. 9,387,951), and in further view of DeGroff et al. (US Patent No. 6,554,146).
Re: Claim 1, Miyajima discloses the claimed invention including a delamination container including an outer layer (11) formed from a first resin material and a bag-shaped inner layer (12) provided on an inner peripheral side of the outer layer and formed from a second resin material different from the first resin material (Col. 7, lines 33-35 different materials for the layers) the outer layer being provided with a hole (14) for introducing air into a gap between the outer layer and the inner layer (Fig. 1), wherein the inner layer is peelable relative to the outer layer (Col. 2, lines 48-50, peelable layers), the delamination container comprising:
a neck portion (2) having an opening communicating with an inside of the inner layer (Fig. 1);
a shoulder portion (3) continuously extending in the radial direction from the neck portion (Fig. 1);
a body portion (4) having a bottomed cylindrical shape (Fig. 1); and
Miyajima discloses the claimed invention except for a constricted portion. However, DeGroff discloses a constricted portion (18) interconnecting the shoulder portion and the body portion (12) (Depicted in Fig. 2);
It would have been obvious to one having ordinary skill in the art at the time of effective date to including a container with constricted portion as taught by DeGroff, since such a modification provides the user with enhanced gripping area, and further it has been held that the configuration of the claimed plastic container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Miyajima in view of DeGroff is silent regarding a specific diameter of an outer shoulder edge, the specific axial length between the edge and a constricted bottom portion, and a ratio of the diameter of the bottom portion to the diameter of edge. The Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Miyajima in view of DeGroff by causing the diameter of an outer peripheral edge of the shoulder portion is 40 mm or more and 55 mm or less, the axial length from the outer peripheral edge of the shoulder portion to a constricted bottom portion which has a smallest diameter in the constricted portion is 12 mm or more and 25 mm or less, and a ratio of the diameter of the constricted bottom portion to the diameter of the outer peripheral edge of the shoulder portion is 0.80 or more and 0.93 or less. Applicant appears to have placed no criticality on any particular angle (see Specification wherein it is stated that design changes may be made) and it appears that the device of Miyajima in view of DeGroff would work appropriately if made within the claimed range of dimensions.
Re: Claim 2, Miyajima as modified by DeGroff in the rejection of claim 1 above discloses the claimed invention including the constricted portion includes a first curved surface portion which is connected to the shoulder portion and having a diameter decreasing toward the constricted bottom portion (DeGroff: Depicted in Fig. 1), and a second curved surface portion which is connected to the body portion and having a diameter decreasing toward the constricted bottom portion (DeGroff: Depicted in Fig. 1, and a curvature radius of the first curved surface portion is smaller than a curvature radius of the second curved surface portion (DeGroff: Depicted in Fig. 1).
Re: Claim 3, Miyajima discloses the claimed invention including a pump member (25) that ejects contents of the inner layer by pressuring a top portion is attached to the neck portion, and an axial length from the top portion of the pump member to the outer peripheral edge of the shoulder portion (Fig. 1) except for specifying the length being 65 mm or less/ However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Miyajima to have a length between the pump top portion and should edge be 65 mm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gleixner (US Patent No. 11,185,878), and in further view of DeGroff et al. (US Patent No. 6,554,146).
Re: Claim 1, Gleixner discloses the claimed invention including a delamination container including an outer layer (2) formed from a first resin material and a bag-shaped inner layer (3) provided on an inner peripheral side of the outer layer and formed from a second resin material different from the first resin material (Col. 1, lines 15-19, different materials for the layers) the outer layer being provided with a hole (14) for introducing air into a gap between the outer layer and the inner layer (Fig. 1), wherein the inner layer is peelable relative to the outer layer (Col. 6, lines 29-32, peelable layers), the delamination container comprising:
a neck portion (7) having an opening communicating with an inside of the inner layer (Fig. 1);
a shoulder portion (ref 2 points to shoulder) continuously extending in the radial direction from the neck portion (Fig. 1);
a body portion (23) having a bottomed cylindrical shape (18) (Fig. 1); and
Gleixner discloses the claimed invention except for a constricted portion. However, DeGroff discloses a constricted portion (18) interconnecting the shoulder portion and the body portion (12) (Depicted in Fig. 2);
It would have been obvious to one having ordinary skill in the art at the time of effective date to including a container with constricted portion as taught by DeGroff, since such a modification provides the user with enhanced gripping area, and further it has been held that the configuration of the claimed plastic container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Miyajima in view of DeGroff is silent regarding a specific diameter of an outer shoulder edge, the specific axial length between the edge and a constricted bottom portion, and a ratio of the diameter of the bottom portion to the diameter of edge. The Federal Circuit has held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04(IV)(A) (discussing Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Miyajima in view of DeGroff by causing the diameter of an outer peripheral edge of the shoulder portion is 40 mm or more and 55 mm or less, the axial length from the outer peripheral edge of the shoulder portion to a constricted bottom portion which has a smallest diameter in the constricted portion is 12 mm or more and 25 mm or less, and a ratio of the diameter of the constricted bottom portion to the diameter of the outer peripheral edge of the shoulder portion is 0.80 or more and 0.93 or less. Applicant appears to have placed no criticality on any particular angle (see Specification wherein it is stated that design changes may be made) and it appears that the device of Gleixner in view of DeGroff would work appropriately if made within the claimed range of dimensions.
Re: Claim 2, Gleixner as modified by DeGroff in the rejection of claim 1 above discloses the claimed invention including the constricted portion includes a first curved surface portion which is connected to the shoulder portion and having a diameter decreasing toward the constricted bottom portion (DeGroff: Depicted in Fig. 1), and a second curved surface portion which is connected to the body portion and having a diameter decreasing toward the constricted bottom portion (DeGroff: Depicted in Fig. 1, and a curvature radius of the first curved surface portion is smaller than a curvature radius of the second curved surface portion (DeGroff: Depicted in Fig. 1).
Re: Claim 3, Gleixner discloses the claimed invention including a pump member (40) that ejects contents of the inner layer by pressuring a top portion is attached to the neck portion, and an axial length from the top portion of the pump member to the outer peripheral edge of the shoulder portion (Figs. 5A-5C) except for specifying the length being 65 mm or less/ However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Miyajima to have a length between the pump top portion and should edge be 65 mm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Re: Claims 4, Gleixner as modified in the rejection of claim 1 above discloses a delamination container with the claimed properties found in claim 1 and further being capable of being manufactured by the following manufacturing method comprising:
injection-molding a first layer of a preform having a bottomed cylindrical shape from a first resin material as a first injection molding (Figs. 6-7, Col. 3, lines 15-46, injection-molding a first layer of a preform);
injecting a second resin material different from the first resin material to form a second layer on an inner peripheral side of the first layer as a second injection molding (Figs. 6-7, Col. 3, lines 15-46, injection-molding a second layer); and
blow-molding, in a state of having residual heat from injection molding, the preform obtained in the second injection molding, to manufacture the delamination container (Figs. 6-7, Col. 3, lines 15-46, blow molding with residual heat),
wherein, in the first injection molding, a first recess portion is formed by a first protrusion portion (9) in at least part of the first layer (Figs. 6-7, Col. 3, lines 15-46, first recess first protrusions),
in the second injection molding, a second recess portion which penetrates the first layer and through which a surface of the second layer is exposed is formed in the preform by inserting a second protrusion portion into the first recess portion (Figs. 6-7, Col. 3, lines 15-46, second recess second protrusions); and
in the blow molding, the second recess portion is stretched to form an air introduction hole in an outer layer of the delamination container (Figs. 6-7, Col. 3, lines 15-46, air hole formed in outer layer).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES P. CHEYNEY whose telephone number is (571)272-9971. The examiner can normally be reached Monday - Friday, 8:00 am - 4:30 pm.
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/CHARLES P. CHEYNEY/Primary Examiner, Art Unit 3754