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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/2/25 has been entered.
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.
Claims 1-12 and 21-26 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
By going through the wands factors analysis, at least the following factors indicate that there is a lack of enablement:
(C) The State of the prior art:
No prior art appears to disclose this limitation. In fact, prior arts disclose the opposite. For example, US 2007/0056939 discloses that cooling a melt actually prevents migrations of particles ([0062]). This would make sense since the hardening of a melt would make it more difficult for particles to move. It should be noted that US 2007/0056939 teaches using particles but does not exclude the particles from being fibers. In fact, the conventional definition of particles merely states “a small piece of anything;” thus, it does not exclude a particle being in fiber-form.
(D) The level of one of ordinary skill in the art and (E) the level of predictability in the art. It does not appear that one of ordinary skill in the art would understand how to make or use this invention since it is counter-intuitive that particles would migrate during the hardening of a melt. Further, since it is a mixture, it would appear that hardening of the melt would just ensure that the glass particles remain in its mixture in a dispersed state.
(F) The amount of direction provided by the inventor and (G) existence of working examples.
There is no direction provided by the inventor as to how to achieve this migration of glass fibers/particles during hardening of the mixture. The specification only mentions that it migrates while providing no further step or clarification on how this is achieved.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reder (USP2016/0318196) in view of Johnson et al (USPN 5679067).
Regarding claim 1, Reder teaches:
A method of manufacturing a label degrading device (Reder: opener 10 with teeth members 18 can cut a seal disposed around a bottle cap; paras. 0021-0024; figs 1-3) including a generally cylindrical collar (Reder: body portion 14 including body wall 20; figs 1-3) having a circumferential wall with an inner surface and an outer surface , a plurality of teeth (Reder: teeth member 18; figs 1-3) extending radially inwardly from the inner surface of the circumferential wall and a longitudinal slot (Reder: the space between the gripping arms 12a that intersect the central opening 26 constitutes the slot; figs 1-3) formed along and passing completely through the circumferential wall to define opposing edges of the circumferential wall, such that when the collar is squeezed by a user, the circumferential wall flexes inwardly and the opposing edges defined by the slot move toward each other, wherein each of the plurality of teeth of the invention has a point, the points of the plurality of teeth collectively defining a generally cylindrical shape (Reder: the points of the teeth members collectively define a generally cylindrical shape; figs 1-3), said method comprising the steps of:
providing a mixture of a polymeric material (Reder: the opener 10 can be injection molded from polycarbonate; 0040-0041); and
molding the label degrading device by injecting the mixture into a mold such that the cylindrical collar and the plurality of teeth are created as an integrally formed monolithic structure (Reder: the opener 10 can be injection molded from polycarbonate; 0040-0041).
However, Reder does not teach providing a mixture of a polymeric material and a glass additive; and during said molding step, points of the plurality of teeth harden first and the glass additive migrates towards the points, thereby providing additional strength, durability and cutting capability to the plurality of teeth. Johnson et al teach injection molding an abrasive polycarbonate brush having integrally glass fiber filler in the abrasive bristles and base, wherein the tips of the bristles comprise glass particles and glass fiber fillers (col 9:40-62; col 12:4-7; col 12:39-40 and 45-46; col 14:46; figs 1, 4 and 7-8). It should also be noted that Johnson et al teach using TPE incorporated with glass fibers as the material for the brush and bristles (col 12:39-40). Since Reder and Johnson et al are analogous with respect to articles having teeth for cutting or abrading, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to form the teeth members of Reder from the glass-filled polycarbonate material as taught by Johnson et al in order to form an opener having greater durability and strength.
Regarding claim 2, such is taught by Reder (Reder: opener 10 with teeth members 18 can cut a seal disposed around a bottle cap; paras. 0021-0024; figs 1-3).
Regarding claim 3, Reder does not teach the claimed key formed on the collar. The specific design of the articles is a mere obvious matter of choice dependent on the desired final product. Since keys are well-known in objects to be joined, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include a key into the collar of Reder to allow for the opener device of Reder to securely attach or join the bottle.
Regarding claim 4, Reder teaches the vessel being a bottle but does not teach the vessel being a prescription bottle. Since it is well-known in the bottle art to use an opening device to open prescription bottles, especially amongst the elderly people, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use the opening device of Reder on a prescription bottle in order to facilitate its opening and destruction of labels for privacy’s sake.
Regarding claim 5, such is taught by Reder (Reder: the opener 10 can be injection molded from polycarbonate; 0040-0041).
Regarding claim 6, such is taught by the above combination of Reder and Johnson et al since Johnson et al teach using silica like glass fibers (col 9:40-62; col 12:4-7; col 12:39-40 and 45-46; col 14:46; figs 1, 4 and 7-8).
Regarding claims 7-8, such is taught by the above combination of Reder and Johnson et al since Johnson et al teach the claimed percentage (Table 1).
Regarding claim 9, Reder does not teach the claimed arrangement of teeth. Since the claimed arrangement of teeth are well-known in the opener and cutting devices, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to arrange the teeth members of Reder according to the claimed arrangement in order reduce material costs without compromising performance.
Regarding claim 10, Reder does not a removable cap. Since waste bins are well-known in the cutting art (e.g. pencil sharpeners), it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include a removable cap on the end of the body portion of Rederin in order to collect the abraded waste.
Regarding claim 11, such is taught by Reder since Reder teach projections on the gripping surface 22 that extend to the body portion (figs 1-3).
Regarding claim 12, such is taught by Reder since Reder teach projections on the gripping surface 22 that extend to the body portion (figs 1-3).
Claim(s) 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Reder (USP2016/0318196) in view of Johnson et al (USPN 5679067).
A method of manufacturing a label degrading device (Reder: opener 10 with teeth members 18 can cut a seal disposed around a bottle cap; paras. 0021-0024; figs 1-3) including a generally cylindrical collar (Reder: body portion 14 including body wall 20; figs 1-3) having a circumferential wall with an inner surface and an outer surface, a plurality of teeth (Reder: teeth member 18; figs 1-3) extending radially inwardly from the inner surface of the circumferential wall and a longitudinal slot (Reder: the space between the gripping arms 12a that intersect the central opening 26 constitutes the slot; figs 1-3) formed along and passing completely through the circumferential wall to define opposing edges of the circumferential wall, such that when the collar is squeezed by a user, the circumferential wall flexes inwardly and the opposing edges defined by the slot move toward each other, wherein each of the plurality of teeth of the invention has a point, the points of the plurality of teeth collectively defining a generally cylindrical shape (Reder: the points of the teeth members collectively define a generally cylindrical shape; figs 1-3), said method comprising the steps of:
providing a mixture of a polymeric material (Reder: the opener 10 can be injection molded from polycarbonate; 0040-0041) ; and
molding the label degrading device by injecting the mixture into a mold such that the cylindrical collar and the plurality of teeth are created as an integrally formed monolithic structure (Reder: the opener 10 can be injection molded from polycarbonate; 0040-0041).
However, Reder does not teach providing a mixture of a polymeric material and a glass additive; and during said molding step, points of the plurality of teeth harden first and the glass additive migrates towards the points, thereby providing additional strength, durability and cutting capability to the plurality of teeth. Johnson et al teach injection molding an abrasive polycarbonate brush having integrally glass fiber filler in the abrasive bristles and base, wherein the tips of the bristles comprise glass particles and glass fiber fillers (col 9:40-62; col 12:4-7; col 12:39-40 and 45-46; col 14:46; figs 1, 4 and 7-8). It should also be noted that Johnson et al teach using TPE incorporated with glass fibers as the material for the brush and bristles (col 12:39-40). Since Reder and Johnson et al are analogous with respect to articles having teeth for cutting or abrading, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to form the teeth members of Reder from the glass-filled polycarbonate material as taught by Johnson et al in order to form an opener having greater durability and strength.
Regarding claim 22, such is taught by the above combination of Reder and Johnson et al since Johnson et al teach using polypropylene as the material of the bristles/teeth (col 9:40-50 and 65).
Regarding claim 23, such is taught by the above combination of Reder and Johnson et al since Johnson et al teach using polycarbonate as the material of the bristles/teeth (col 9:40-50 and 62)
Regarding claim 24, Reder (modified) does not teach the claimed acetate. Since acetate is a well-known substitutable alternative to polycarbonate and polypropylene for its availability and strength, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use acetate as the polymer of Reder (modified) since it a substitutable alternative to polycarbonate and polypropylene.
Regarding claims 25-26, such is taught by the above combination of Reder and Johnson et al since Johnson et al teach the claimed percentage (Table 1).
Applicant’s arguments with respect to claim(s) 1-12 and 21-26 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDMUND H LEE whose telephone number is (571)272-1204. The examiner can normally be reached M-Th 9AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao (Sam) Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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EHL
/EDMUND H LEE/Primary Examiner, Art Unit 1744
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