DETAILED ACTION
Response to Amendment
Due to applicant’s amendment filed on August 8, 2025.
The status of the claim(s) is as follows:
Claims 1-2, 9-13, 17 and 22-25 were previously presented,
Claims 3 and 5-8 have been cancelled,
Claims 4, 14-16, 18-21 were and still are withdrawn from further consideration.
Therefore, claims 1-2, 9-13, 17 and 22-25 are currently pending.
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 9 and 23-25 is/are rejected under pre-AIA 35 U.S.C. 103 as being unpatentable over Schneider et al. (US Claims 5083415 A; hereinafter Schneider) in view of Kriegel et al. (US 20090246430 A1 – art of record; hereinafter Kriegel).
Regarding claims 1, 24 and 25, Schneider teaches a tennis ball container (10) comprising:
an elongated body portion (14) comprising a first plastic material (specifically PETG polyester 6763; see Col. 2 ln. 17-24), the elongated body portion having a first end (12) and a second end, at least the first end being open;
a first enclosure portion (i.e. in the form of a sealing disk (22)) comprising a second plastic material (specifically non-permeable polymer membrane is manufactured by 3M and marketed under the trademark Safe-Gard 102; see Col. 2 ln. 53-56) that is welded to the elongated body portion at the first end; and
a hollow interior chamber containing a plurality of tennis balls (20), wherein the hollow interior chamber is hermetically sealed by the elongated body portion being welded (i.e. through sonic and induction welding) to the first enclosure portion around an entirety of a perimeter of a joint between the elongated body portion and the first enclosure portion to form an air-tight seal via a fusion of the first plastic material of the elongated body portion and the second plastic material of the first enclosure portion that is capable of holding an internal pressure of at least 12 pounds per square inch greater than atmospheric pressure (specifically up to 28 psi) when an exterior pressure to which the tennis ball container is exposed is at atmospheric pressure (see Col. 2 ln. 57 – Col. 4 ln. 1), wherein the hollow interior chamber has an interior pressure that is at least 12 pounds per square inch greater than atmospheric pressure (Schneider Col. 2 ln. 13 – Col. 4 ln. 10 and Figs. 1-7).
However, Schneider fails to teach the elongated body portion comprising a first biodegradable plastic material and the first enclosure comprising a second biodegradable plastic material.
Kriegel is in the same field of endeavor as the claimed invention in particular the use of a biodegradable plastic material (i.e. bio-based PET). Kriegel teaches a method of making a bio-based polyethylene terephthalate (i.e. bi0-based PET hereinafter), the method comprises: using a terephthalate component with a diol additive or component (derived from at least one bi0-based material) OR other bio-based additives (see Kriegel [0016]). Kriegel also teaches the various application of this newly produced bio-based PET, such as making various bio-based containers and their corresponding components (i.e. biodegradable as claimed; Kriegel [0009-0028]).
Examiner’s note: Kriegel also teaches the various application of this newly produced bio-based PET, such as making various bio-based containers and their corresponding components. These bio-based containers include but not limited to soft-drinks or alcoholic beverages (see Kriegel [0003,0005]). It is well known that soft-drinks and alcoholic beverage containers are always carbonated (i.e. pressurized) to maintain the freshness and taste of the content by minimizing the oxygen exposure. Therefore, examiner construes that the disclosure of Kriegel to be relevant and pertinent as it is directed to a pressurized container made from bio-degradable material (much like the claimed invention); emphasis added.
With this in mind, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the elongated body portion (i.e. first material) and the first enclosure portion (i.e. second material; of Schneider) out of a similar bio-based PET (as taught by Kriegel), in order maintain their mechanical strength during practical use, and yet break down into low-weight compounds and non-toxic byproducts at the end of their lifecycle.
Further, 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. See MPEP §2144.07
Regarding claim 2, modified Schneider as above further teaches wherein the elongated body portion is cylindrical (see Schneider Figs. 1-7).
Regarding claim 9, modified Schneider as above further teaches wherein the first biodegradable plastic material and the second biodegradable plastic material are transparent.
Regarding claim 23, modified Schneider as above further teaches wherein an internal pressure of the plurality of tennis balls is equal to the interior pressure (Schneider Col. 3 Ln. 53-68).
Claims 10-13, 17 and 22 is/are rejected under pre-AIA 35 U.S.C. 103 as being unpatentable over the applied references (as applied to claim 1 above) and further in view of Hepp et al. (US 20130233481 A1 – art of record; hereinafter Hepp).
Regarding claims 10-13, 17 and 22, Schneider as above further teaches wherein the first enclosure portion is welded to the elongated body portion (i.e. through sonic and induction welding; see Schneider Abstract and Col. 2 ln. 57 – Col. 3 ln. 10).
Examiner’s note: With respect to the following limitation(s), “…is welded to the body portion…” and “…according to a laser plastic welding process…” are directed to product-by-process limitation(s), to which no patentable weight is given by the examiner for the following reason(s): Applicant is reminded of the following regarding product-by-process limitation: Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even 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” See MPEP §2113.
However, in arguendo Schneider fails to teach a laser welding process.
Hepp is in the same field of endeavor as the claimed invention and Schneider, which is container having an elongated body portion and a first enclosure portion that are secured to each other through a laser welding process. Hepp teaches a container embodiment (as shown in Fig. 2) comprising: an elongated body portion (2) comprising a first plastic material (i.e. PET), the elongated body portion having a first end and a second end, at least the first end being open;
a first enclosure portion (1) comprising a second plastic material (i.e. PET) that is welded (specifically laser welding) to the elongated body portion at the first end; and
a hollow interior chamber, wherein the hollow interior chamber is hermetically sealed by the elongated body portion being welded to the first enclosure portion (Hepp [0018-0027]).
With this in mind, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to secure the first enclosure portion to the elongated body portion (of Schneider) using a similar laser welding process (as taught by Hepp) INSTEAD of the sonic and induction welding process (currently employed by Schneider) to established a much stronger joint between the first enclosure portion and the elongated body portion and the resultant structure(s) will work equally well.
Further, regarding claim 22, modified Schneider as above further teaches wherein the first biodegradable plastic material is absorptive of laser energy and the second biodegradable plastic material is transmissive of laser energy (Hepp [0019-0023]).
Response to Arguments
Applicant's arguments regarding the pending claims have been fully considered but they ARE NOT persuasive for the following reason(s):
Applicant’s argument: Applicants argues that the applied art relied upon by the examiner is considered hindsight (see Remarks bottom of pg. 6 to top of pg. 7).
Examiner’s response: In response to applicant's argument that the examiner's conclusion of
obviousness is based upon improper hindsight reasoning; it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See MPEP §2145(X)(A)
Applicant’s argument: Furthermore, it is noted that majority of applicant’s arguments are against the references individually (see Remarks pg. 7-9).
Examiner’s response: In response to applicant’s argument, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See MPEP §2145(IV)
Furthermore, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See MPEP §2145(III)
Applicant’s argument: To further support their assertion, applicant essentially argues that the 103 rejection is improper as the applied art ARE NOT combinable with each other (i.e. non-analogous and address different problems; see Remarks pg. 7-9).
Examiner’s response: Examiner respectfully disagrees with applicant’s assertion because in the art rejection above (specifically the Examiner’s note after Kriegel is introduced) to see how Kriegel is analogous and can be combined with Schneider.
Conclusion
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 extension fee 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 date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited documents are listed on the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIJESH V. PATEL whose telephone number is (571)270-1878. The examiner can normally be reached on Monday - Thursday 6:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached on 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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/B. V. P./
Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736