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 .
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.
Claims 1-21 are pending. Applicant’s previous election of 1-2, 13-21 still applies and claims 3-12 remain withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/20/24 has been entered.
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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-2, 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malchuk (CA 3012780, provided by Applicant) in view of Duan et al. (U.S. 2013/0020328) in view of Middleton et al. (U.S. 2011/0065556).
Regarding claims 1-2, 13-20, Malchuk teaches a resealable lidding film for a container comprising a first layer 13 having inner and outer score lines to create peripheral, flange and cover sections as in claims 18-19, and with a releaseable adhesive 12 between the first layer 13 and a second layer 11 that lacks score lines, followed by a permanent adhesive 24 and a third layer 22 as in claim 2, with the function of the film inherently requiring a greater adhesive force between the bottom of the first layer 13 and the container 20 than between the first layer 13 and the second layer 11/adhesive 12 (otherwise the portion of the first layer 16 would not remain attached to the container), as in claim 17 and 20 (Fig. 4, [0015]-[0022]).
Malchuk does not disclose a release layer between the first layer 13 and the adhesive 12 or the use of EVA. However, Duan is also directed to resealable lids for containers with a similar mechanism to Malchuk and teaches that a release layer between the first layer and the adhesive layer allows for easier peeling of the film by the user (a reduction in peel force at the peel tab as in claim 15) and discloses that EVA was a suitable material for bonding the first layer to the container (see abstract, FIG. 6-7, [0031], [0058]-[0059], [0096]). Thus, it would have been obvious to have used a release layer between the first layer 13 and the adhesive 12 in Malchuk as taught by Duan to allow easier release of the layers by the consumer and to have used EVA between the first layer and the container, as in claim 16, as taught by Duan because EVA is disclosed as a suitable material for creating the type of bond desired by Malchuk.
Having applied the above release coating from Duan between the first layer 13 and adhesive 12 in Malchuk, the portion of the release layer on the flange portion 16 of the first layer 13 would lie peripherally to the inner score line (the score line that defines the left edge of the flange portion in FIG. 4 of Malchuk).
The intended use related to fiber-based compostable containers/coated fiber-based compostable containers is not given patentable weight because it is merely and intended use, but the above film of modified Malchuk is inherently capable of being used in this manner.
Even if the intended use was given patentable weight, Middleton discloses that coated fiber based containers with a flange benefit from same type of adhesive film covering as taught by modified Malchuk in the packaging/container industry ([0014], [0210], [0211]) such that it would have been obvious to have applied the film of modified Malchuk to a fiber based container in order to maximize the commercial applications of the film (i.e., to apply the film to as many types of film-sealable packaging containers as possible). As explained above, Malchuk already discloses that the film should remain attached to the container in the flange portion as in claims 17 and 20.
The flood/spot treatment limitations of claims 13-14 carry no patentable weight because the method of applying the release coating is immaterial to the final product, because regardless of the method of applying the release layer, the layer would still have the same location in the final product (i.e., at or near the peel tab) and contacting the first layer. “[E]ven 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.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Malchuk (CA 3012780, provided by Applicant) in view of Duan et al. (U.S. 2013/0020328), in view of Middleton et al. (U.S. 2011/0065556), as applied to claim 20 above, and further in view of Blyth et al. (U.S. 2019/0329954).
Regarding claim 21, modified Malchuk teaches all of the above subject matter but does not disclose the claimed polyamide resin as the release layer. However, Blyth is also directed to resealable, peel tab packaging films with release coatings for the resealable mechanism and teaches that a polyamide release coating can provide the resealable mechanism with a release force that is suitable for a consumer while still allowing resealing (see abstract, [0015]), such that it would have been obvious to have used such a release coating material from Blyth for the release coating called for in modified Malchuk in order to provide the desired functionality (release/resealabilty) and a peel force usable by the typical consumer.
The “percentage coating” limitation of claims 21 carries no patentable weight because the method of applying the release coating is immaterial to the final product, because regardless of the method of applying the release layer, the layer would still have the same location in the final product. There is also no limitation on the “percentage” of coating. Similarly, the “dispersion” aspect is only related to the coating composition being applied, not the final release coating, and therefore also does not carry any patentable weight (i.e., a dispersion coating composition can create a continuous polyamide layer produced by a non-dispersion coating composition). Furthermore, there is no limitation on the concentration of the dispersion. “[E]ven 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.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant argues that the cited references do not disclose the location of the release layer being peripheral to one or more score line. This is not true. Malchuk shows that when the film is peeled from the container there is a portion that remains on the flange which is outside/peripheral to the inner score line (FIG. 4). As explained in the rejection, Duan teaches applying a release coating to make the separation of this portion of the first layer 13 from the adhesive 12 easier (i.e., the release coating would be applied at least one the portion of the first layer 13 in the flange where it needs to separate from the adhesive 12 in order to stay on the container). This arrangement is the same as in FIG. 6A from the present specification as cited by Applicant, where the release layer is peripheral to the inner score line 18a and where the two score lines 18a and 18b cause the flange portion to remain attached to the container and the inner and outer portions to be peeled away (as in Malchuk).
Applicant then argues about the “spot treatment” limitation but this is not given patentable weight in the claims. Applicant also cites portions of the specification that are related to aspects of the spot treatment that are not recited in the claims (and would appear to have no patentable weight if they were recited anyway).
Applicant then again argues about the “fiber based container” aspect of the claims but this is also not given patentable weight. Applicant continues to argue that only the present invention provides a film “capable” of sealing to a fiber based container, while providing no explanation as to why this would have been incapable or even merely challenging to one of ordinary skill in the art. If there was any challenge in attaching a film (or coating or adhesive or release layer) to a fiber based container (and it is maintained that it would be trivial to one of ordinary skill in the art) then the present specification would have serious problems in terms of enablement because there is almost no detail provided in the present examples (in terms of the materials used to form the seal) for how this seal is achieved (i.e., if sealing to a fiber based container is difficult, then the disclosure would have to provide details regarding how this difficult task is achieved). As explained above, this is moot because this aspect is not given patentable weight anyway.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787