DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 30, 2025 and December 19, 2025 have been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Claims 13 – 21, 23 – 29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 20, 2024 as modified in the Office Action filed on October 10, 2025.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/392520, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular:
Regarding claim 3:
The prior-filed application does not expressly recite the operating window for the temperature of the coating material. While there is no in haec verba requirement, newly added claims or claim limitations must be supported in the specification through express, implicit, or inherent disclosure. See MPEP 2163.02 and In re Oda, 443 F.2d 1200, 170 USPQ 268 (CCPA 1971). If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. MPEP 2163.02.
The closest recitations of the prior-filed application to the subject matter encapsulated in claim 3 include the recitation found at the bottom of page 3 to page 4, which discusses heating a screw extruder to a pre-determined temperature within its operating temperature window, but gives no express, implicit or inherent support for defining the coating material window to be approximately 10°C. Accordingly, the prior filed application does not provide adequate support for the limitations found in claim 3.
Regarding claim 4:
The closest recitations of the prior-filed application to the subject matter encapsulated in claim 4 include the recitation found at the Example provided from page 5 to page 6, which discusses a hose temperature of particular coating materials being within the claimed range. However, the scope of present claim 4 is much broader than that of the hose heating temperatures that carry any coating material. When there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). The particular coating materials refer to polyhydroxyalkanoate and poly(lactic acid), which are biodegradable polymers. But such polymers do not provide sufficient reflection of the variation within the broad genus of “coating material”.
Accordingly, the prior-filed application does not provide adequate support for the limitations found in present claim 4.
Regarding claims 5 and 6:
There is no express recitation in the prior-filed application does not expressly recite the act of “heating at least a portion of the connector assembly to maintain the temperature of the coating material in the connector assembly within the operating window” likewise there is a lack of recitations that would provide reasonable inference for such a step. Accordingly, the prior-filed application does not provide adequate support for the limitations found in present claim 5 and claim 6 as dependent on claim 5.
Regarding claims 11 and 12:
The lack of support for the limitations in present claims 11 and 12 are based on similar grounds as those for claim 4 as discussed above, mutatis mutandis.
For the purposes of art rejections, the effective filing date of claims 3, 4, 5, 6, 11, 12 (which include the subject matter of claim 1 by dependency) is July 26, 2023. The effective filing date of the remainder present claims are July 27, 2022.
Claim Rejections - 35 USC § 103
The rejections of the claims under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
Claim(s) 1, 3 – 5, 10 – 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Innes et al. US 6495196 B1 (hereinafter “Innes”) in view of Kim KR 101860086 B1 (hereinafter “Kim”, machine translation provided and referenced alongside original figures).
Regarding claims 1, 5, 9, 10:
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Innes is directed to a process and apparatus for coating a strip article with a coating material (Abstract; col 1 lines 10 – 25). As depicted in Fig. 1 (reproduced below), Innes discloses an apparatus comprising (col 5 line 35 – col 7 line 5):
a coating head 12 (col 5 lines 50 – 67);
a coating slot/elongated extrusion slot [die] 15 as part of the coating head with integral heaters (col 5 lines 45 – 50, col 6 lines 25 – 40);
a rotating backup drum 16 (col 5 lines 50 – 55, col 6 lines 19 – 35);
a high-pressure hose 19 comprising an electrical heating element and wrapped with flexible insulation (col 6 lines 4 – 20); and
a screw extruder 18 having integral heaters 20 to heat the screw extruder materials and a connection nip [connector assembly] that communicates with the high-pressure hose (col 6 lines 4 – 20, Fig. 1 see connection point of hose 19 to overall screw extruder 18).
A moving sheet [material web] is arranged such that a portion to be coated is arranged in between the coating head and the rotating backup drum 16 (col 5 lines 45 –65). Innes discloses that their method of using their apparatus comprises:
heating a pelletized plastic coating material within a heated screw extruder to melt the plastic coating material into a heated molten polymer coating material (col 6 lines 4 – 20, col 6 lines 45 – 55, );
feeding the coating head with the heated molten polymer coating material through the heated high-pressure hose, thus moving heated molten coating material (col 6 lines 4 – 20); and
applying [outputting] the heated molten polymer from the coating slot to the moving sheet to coat the moving sheet as the sheet is moving (col 6 lines 19 – 36).
The heated molten polymer coating material is kept at temperatures between their melting point and their decomposition temperatures [operating window] to a (col 10 line 57 – col 11 line 6, col 6 lines 19 – 25); and the high-pressure hose, coating head and screw extruder is heated to arrive at and maintain such temperature [meeting claims 2, 5, 6, 7, 10] (col 6 lines 19 – 25).
Innes does not expressly teach that the die outlet has a rotary rod that extends along the die outlet and is disposed between the die outlet and the web of material, a rotary axis of the rotary rod being aligned with and within the internal passageway. Innes also does not expressly teach the step of transferring the coating material from the die outlet to the rotary rod, rotating the rotary rod about the rotary axis, and then transferring the coating material from the rotary rod to the web of material.
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Kim is directed to a slot die and method of using slot dies for coating objects ([0001]). Kim discloses a conventional slot die apparatus known in the prior art as Fig. 1, reproduced below:
The conventional apparatus comprises a rotatable coating bar [rotary rod] 18 within the slot die outlet 14 and in line with the coating passage 13 ([0005] – [0011], [0019]). The coating bar is used to help distribute the coating from the die to a substrate [transferring] ([0004] – [0005]) and help deliver a volume of coating liquid transferred according to the gap size of the slot unit ([0012]). In Figs. 3 and 4 Kim discloses an improvement to the conventional apparatus, reproduced below:
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As shown and mirrored, Kim’s embodiment comprises a rotatable coating bar [rotary rod] 150 in line with slot 125 and positioned at the end of the die [die outlet] ([0030] – [0043]). During operation, the coating bar 150 is in contact with a web of material while the coating bar rotates, transferring coating material from the slot 125 to the web of material ([0042], [0046]). The arrangement allows for improved control of the coating thickness on the web ([0047]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Innes by including a rotary rod within the coating die of Innes aligned with and within the internal passageway; and to include a step of transferring the coating material from the die outlet to the rotary rod, rotating the rotary rod about the rotary axis, and then transferring the coating material from the rotary rod to the web of material; because Kim teaches that the inclusion of rotary rods for such a transfer allows for improved control of the coating thickness dispensed onto a web of material.
Regarding claim 3:
Innes in view of Kim does not expressly teach that the operating window for the temperature of the coating material is approximately 10°C, i.e. that the operating window has a first temperature endpoint and a second temperature endpoint of approximately 10°C.
However, Innes discloses a desire to control the viscosity of the applied heated molten polymer coating material so as to render the viscosity e.g. uniform (col 5 lines 45 – 55, col 6 lines 20 – 25, col 10 lines 55 – 67); and that the temperature of the heated molten polymer coating material influences the viscosity of such a coating material (col 6 lines 19 – 30, col 7 lines 45 – 55).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the operating window for the coating process of Innes in view of Kim within the bounded range of 10°C as a matter of routine experimentation in order to maintain a desired and uniform viscosity of the heated molten polymer coating material during coating of the sheet. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claims 4, 11, 12:
Innes does not expressly teach that the heating of the heated hose comprises heating the heated hose to a temperature of approximately 185°C to approximately 190°C. Likewise Innes does not expressly teach heating at least a portion of the screw extruder to approximately 200°C and heating the slot die to approximately 185°C.
The discussion of the control of viscosity being dependent on the heating temperature of the process equipment in present claim 3 above also applies to the present rejections of claims 4 and 11.
It would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Innes in view of Kim to heat the heated hose and slot die to e.g. approximately 185°C and the screw extruder to approximately 200°C as a matter of routine experimentation in order to impart sufficient heat to the plastic coating material particles and resultant heated molten polymer coating material in order to establish and maintain a desired and uniform viscosity of the heated molten polymer coating material during coating of the sheet. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Response to Arguments
Applicant’s arguments, filed November 30, 2025, with respect to the rejection(s) of the claim(s) under 35 USC 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 Kim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717