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 (i.e., changing from AIA to pre-AIA ) 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.
Prosecution Reopened
In view of the appeal brief filed on April 25, 2025, PROSECUTION IS HEREBY REOPENED. A new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
Claim Rejections - 35 USC § 103
Claim(s) 1-5, 16-19, 24-26, 29, 32 and 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4386576) in view of Williams et al. (US 9334072), Fu et al. (US 20130303351) and Knauf et al. (US 20170225423).
As to claim 1, Johnson discloses a method of forming a container sleeve from a sleeve blank defined by a pair of opposing side edges and opposing top and bottom edges, the method comprising: applying a second coating 17 of an adhesive on a sleeve blank having a first coating 15 of the adhesive such that the second coating overlies at least a portion of the first coating, resulting in an adhesive portion having a combined thickness of the first and second coatings, wherein the adhesive portion extends along at least one of the side edges of the sleeve blank; after printing, supplying the sleeve blank to a container forming station and wrapping the sleeve blank into a sleeve such that the side edges overlap and adhere together the overlapping side edges with the adhesive portion to form a seam seal along the overlapping side edges of the sleeve (Fig. 1-2; C3, L49 – C4, L30).
Johnson fails to specifically teach or disclose that the thickness of the adhesive layer is controlled by making multiple coatings. Applying multiple coatings to achieve a desired thickness of adhesive would amount to a mere duplication of parts and would have been obvious to one of ordinary skill in the art at the time of filing. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Furthermore, using either a single coating or multiple coatings to achieve a desired coating thickness would be obvious to try, since such would have a reasonable expectation of success of achieving a desired coating thickness, and would require no more than common sense by one of ordinary skill in the art. “A person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but or ordinary skill and common sense." KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
Johnson fails to specifically teach or disclose that the coater glue applicator may be replaced with a potentially “complicated and more expensive” printing equipment known and conventional in the art. Both Williams (C12, L15-23), Fu (paragraph 64) and Knauf (paragraph 37) all disclose that glue printers and glue coaters are known functional equivalents for creating a layer of glue upon a desired surface. It would have been obvious for one of ordinary skill in the art at the time of the invention to utilize a glue printer in place of a glue coater in the method of Johnson because Williams , Fu and Knauf disclose they are known functional equivalents.
As to claims 2-4, the method of claim 1 is taught as seen above. Johnson discloses that an adhesive portion extends along at least one side edge and the bottom edge along the edge’s respective entireties (Id.).
As to claim 5, the method of claim 1 is taught as seen above. Johnson discloses that the coatings comprise of a glue (Id.) which one of ordinary skill would recognize commonly comprises of a pressure sensitive adhesive.
As to claim 16, the method of claim 1 is taught as seen above. As to the claim limitations that printing the graphic or second coating prior to cutting a sleeve from a web material supply and prior to processing by the container forming station would amount a mere selection of the order of process steps which is prima facie obvious. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). The order of steps would not affect the product which is formed.
As to claim 17, the method of claim 1 is taught as seen above. It is the position of the Examiner that using an adhesive forming the seam seal that would be 0.2 to 0.7 wt% of the container would have been obvious since this relates to the amount of adhesive used (i.e. thickness) of the adhesive used. The claimed weight percentage of adhesive in relation to the weight of the container, i.e. the amount/thickness of the adhesive, would have been the result of routine experimentation by a person having ordinary skill to achieve a desired/required adhesive strength.
Claims 18-19 are rejected for the same reasons as claims 1-4 above.
As to claims 24 and 25, Johnson discloses that an adhesive portion extends along the bottom edge and overlaps the side edges of the sleeve to form a cup (Fig. 1-2).
Claim 26 is rejected for the same reasons as claim 5 above.
As to claim 29, the method of claim 18 is taught as seen above. Johnson would obviously render that the printing of the second coating occurs prior to supplying the sleeve blank to a container forming station (Id.).
As to claim 32, the method of claim 5 is taught as seen above. Johnson discloses that the seam seal is formed from the top edge to the bottom edge of the blank (Fig. 2-4).
As to claims 37-38, the method of claims 1 and 18 respectively are taught as seen above. Johnson discloses that the sleeve blank comprises of paper (Abstract).
Claim(s) 6, 13 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4386576), Williams et al. (US 9334072), Fu et al. (US 20130303351) and Knauf et al. (US 20170225423), as applied to claims 1-5, 16-19, 24-26, 29, 32 and 37-38 above, and further in view of Neale et al. (US 6265040).
As to claim 6, the method of claim 5 is taught as seen above. Johnson fails to specifically teach or disclose that there is a printed graphic on the outer surface of the sleeve. Neale discloses a method of making a container sleeve (Abstract). Neale discloses that it is known and conventional in the art to print a graphic on the outer surface of a container sleeve (C6, L50-57). It would have been obvious to one of ordinary skill in the art at the time of filing to use the method of Neale in the method taught by Johnson because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional method of providing a desired graphic on a cup. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
As to claim 13, the method of claim 1 is taught as seen above. Claim 13 is rejected for the same reasons as claim 6 above, wherein glue strips are printed on an inner surface of the sleeve and a graphic is printed on the outer surface of the sleeve.
As to claim 27, the method of claim 18 is taught as seen above. Claim 27 is rejected for the same reasons as claim 6 above.
Claim(s) 11, 12 and 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4386576), Williams et al. (US 9334072), Fu et al. (US 20130303351) and Knauf et al. (US 20170225423), as applied to claims 1-5, 16-19, 24-26, 29, 32 and 37-38 above, and further in view of Wiedmeyer (US 20080121681).
As to claim 11, the method of claim 1 is taught as seen above. The above references as combined fail to specifically teach or disclose that the adhesive may comprise of a material to make it a barrier layer. Wiedmeyer discloses a method of making a three-layered containers (Abstract; Fig. 1). Wiedmeyer discloses that it is known and conventional in the art to use polyethylene to serve as both a barrier layer (waterproof coating) and an adhesive coating (¶24). It would have been obvious to one of ordinary skill in the art at the time of filing to use polyethylene as the adhesive in the above references as combined and would have been motivated to do so because Wiedmeyer teaches that polyethylene can act as both a waterproof layer and adhesive layer.
As to claims 30-31, the method of claim 18 is taught as seen above. Claims 30-31 are rejected for the same reasons as claims 11-12 above.
Claim(s) 7-10, 14-15, 28 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4386576) , Williams et al. (US 9334072), Fu et al. (US 20130303351), Knauf et al. (US 20170225423) and Neale et al. (US 6265040) as applied to claims 6, 13 and 27 above, and further in view of Swoboda et al. (US 20100012712).
As to claims 7-9, the method of claim 6 is taught as seen above. The above references as combined are silent as to whether the sleeves are cut from a web. Swoboda (paragraph 2 and 53) discloses that it is known and conventional in the art to cut/blank a sleeve from the base stock at the cup machine, but the above references as combined fail to specifically teach or disclose the means which is used to cut a sleeve blank from the stock material. It would have been obvious to one of ordinary skill in the art at the time of filing to use the method of Swoboda in the method taught by the above references as combined because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a known successful and conventional means of producing a sleeve from a material supply. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
As to the claim limitations that printing the graphic or second coating prior to cutting a sleeve from a web material supply and prior to processing by the container forming station would amount a mere selection of the order of process steps which is prima facie obvious. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). The order of steps would not affect the product which is formed.
As to claim 10, the method of claim 9 is taught as seen above. It is the position of the Examiner that using an adhesive that would be 0.2 to 0.7 wt% of the container would have been obvious since this relates to the amount of adhesive used (i.e. thickness) of the adhesive used. The claimed weight percentage of adhesive in relation to the weight of the container, i.e. the amount/thickness of the adhesive, would have been the result of routine experimentation by a person having ordinary skill because Woods and Carignan teaches that the thickness/amount of adhesive is a known parameter affecting the adhesive strength in bonding.
As to claims 14-15, the method of claim 13 is taught as seen above. Claims 14-15 are rejected for the same reasons as claims 7-9 above.
As to claim 28, the method of claim 18 is taught as seen above. Claim 28 is rejected for substantially the same reasons as claim 8 above which would cut the blank after printing the second coating.
As to claim 36, claim 7 is taught as seen above. Johnson discloses that the sleeve blank comprises of paper (Abstract).
Claim(s) 33-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (US 4386576), Williams et al. (US 9334072), Fu et al. (US 20130303351) and Knauf et al. (US 20170225423), as applied to claims 1-5, 16-19, 24-26, 29, 32 and 37-38 above, and further in view of Busse (US 4409045).
As to claim 33, the method of claim 32 is taught as seen above. Johnson fails to specifically teach or disclose that the first and second adhesive coatings are in the form of a single adhesive pattern which is printed along the extend of a side and bottom edge. Busse discloses that it is known and conventional in the art to utilize a single adhesive pattern which runs along the side and bottom edges of a cup blank (Fig. 1). It would have been obvious to one of ordinary skill in the art at the time of filing to use the adhesive pattern of Busse in the method taught by the above references as combined because one of ordinary skill in the art would have been able to carry out such a substitution to achieve the predictable result of providing a knowns successful and conventional adhesive pattern for use on a cup blank. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 82 USPQ2d 1385 (2007).
As to claims 34-35, the method of claim 33 is taught as seen above. The method of claim 33 would have an adhesive portion along the bottom edge continuously extending between opposing side edges of the blank (Fig. 2-4).
Response to Arguments
Applicant’s arguments, see Argument, filed April 25, 2025, with respect to the rejection(s) of claim(s) 1-19 and 24-38 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Johnson (US 4386576) in view of Williams et al. (US 9334072), Fu et al. (US 20130303351) and Knauf et al. (US 20170225423).
Examiner will address only those arguments pertinent to the rejection above.
Applicant argues on page 20 that Johnson (C2, L13-23) teaches away from a printing step. In arguendo, even if Johnson states that a “complex mechanism” is needed to use a printing press plate, it is the position of the Examiner that this does not constitute a teaching away of printing adhesive, since printing of adhesive would result in a known successful and conventional means of providing a desired adhesive coating, not an inoperable coating step incapable of being used as an adhesive coating step in the method/apparatus of Johnson. A known or obvious composition does not become patentable because it has been described as somewhat inferior to some other product for the same use. In re Gurley, 27 F.3d 551, 554.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER C CAILLOUET whose telephone number is (571)270-3968. The examiner can normally be reached M-F 9AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PHILLIP TUCKER can be reached on (571)272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER C CAILLOUET/Examiner, Art Unit 1745
/PHILIP C TUCKER/Supervisory Patent Examiner, Art Unit 1745
Prosecution Insights