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 .
Claims Status
Claims 1-19 are pending. Claim 1 is amended. Claims 8-19 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Response to Amendments/Arguments
Applicant's amendments and arguments with respect to the rejection of present claim(s) 1 and 3-6 under 35 U.S.C. 103 as being unpatentable over Koenig et al. (US 2016/0348318; “Koenig”) in view of Lohnas et al. (US 3,060,044; “Lohnas”) have been fully considered but they are not persuasive.
Applicant contents that (1) Koenig does not teach the instantly claimed container of claim 1, as Koenig does not teach a surface treatment comprising aluminum salts together with the recited polyol/acrylic polymer/starch system (remarks, page 8), and (2) neither Koenig nor Lohnas contains any teaching or suggestion that would have led a person of ordinary skill to formulate a paper material having all of the ingredients of claim 1 in the recited ranges for use as an outer shell possessing the unique rigidity, fragility, and barrier characteristics described in the present application. (remarks, page 10, last para).
In response to contentions (1) and (2), Applicant's arguments have been carefully studied and fully considered but they are not persuasive for at least the following reasons.
As an initial matter, the examiner disagrees with applicant’s characteristic of the claimed invention currently recited in instant claim 1. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a surface treatment layer/coating comprising aluminum salts together with the recited polyol/acrylic polymer/starch system) are not recited in the rejected claim(s). Instant claim 1 does not recite or require a separate surface- treatment layer or coating distinct from the base substrate, contrary to applicant’s assertion. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The instant claim 1 recites (see below) a base substrate of a mixture includes five elements in the mixture, including “cellulose fibres... polymeric substance… inorganic filler… polyol and/or acrylic polymer and/or starch, and aluminum salts. Indeed, as discussed below, the relationship between the recited components of the base-substrate formulation and the subsequently recited “surface treatment” is unclear.
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The rejections below are updated to address the present claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-7 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The term “the aluminum salts and the at least one polyol and/or acrylic polymer and/or starch forming a surface treatment applied to the outer surface of the outer shell to impart barrier properties against water, oils, greases and gases” in claim 1, as amended, renders the claim indefinite. It is not clear if the recited “aluminum salts and the at least one polyol and/or acrylic polymer and/or starch” are components of the base substrate formulation (as initially recited in claim 1, as is part of the mixture includes cellulose fibres... polymeric substance… inorganic filler… polyol and/or acrylic polymer and/or starch, and aluminum salts of claim 1), or whether those materials constitute a separate surface treatment applied to the already-formed base substrate. Claim 1 as currently written renders the claim indefinite because the structural relationship between the base substrate and the surface treatment is unclear, such that one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Such indefiniteness is further noted because instant claim 1 recites “…a mixture of cellulose fibres...at least one polyol and/or acrylic polymer and/or starch, between 1% and 10% by weight; aluminum salts, between 1% and 30% by weight…”, and it is not clear what the recited weight % refer to the base-substrate formulation, or the subsequently recited surface treatment.
For purpose of examination, the examiner considers any prior art container having an outer shell made of paper material comprising a base substrate having the formulation of the mixture (i.e., a mixture includes cellulose fibres... polymeric substance… inorganic filler… polyol and/or acrylic polymer and/or starch, and aluminum salts …) otherwise meeting the claimed limitations as to read on the instantly claimed invention.
Claims 2-7 are rejected due to their dependency of claim 1. Appropriate correction and clarification is required.
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 (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 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 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.
Claim(s) 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Koenig et al. (US 2016/0348318; “Koenig”) in view of Lohnas et al. (US 3,060,044; “Lohnas”).
Regarding claims 1 and 4-5, Koenig teaches a container for fluid material (para [0002] [0086], [0093], Koenig teaches its paper substrate is suitable for making various articles, including container for fluid material), including an outer shell made of paper material (para [0002] [0086]) comprising a base substrate having the following formulation (para [0002] [0020], the paper base substrate, Fig. 1 and Fig. 3):
- a mixture of cellulose fibres, cotton fibres and synthetic fibres (para [0004] [0026], Koenig teaches its paper base substrate is of the mixture of cellulose fibres, cotton fibres and synthetic fibres, meeting the claimed limitations), in the suitable amount of at least about 70% (para [0093]), which range overlaps with the instantly claimed range of between 50% and 80% by weight;
- at least one polymeric substance (para [0036] [0037], [0091], of which the suitable polymeric substance/the sizing agent includes rosin, i.e., which is resins based on colophony, and includes alkyl ketene dimer, meeting the claimed material limitations of instant claim 4), in the suitable amount of 0.2% to about 1.5% (para [0094]), which range overlaps with the instantly claimed range of between 1% and 10% by weight;
- at least one inorganic filler (para [0034], [0096], suitable fillers include mineral filler, and calcium carbonate, talc, and mixtures thereof, meeting the claimed material limitations of instant claim 5), in the suitable amount of from about 1 to about 50 parts, per 100 parts of the surface sizing starches, which amount if calculated as % by weight is about 0.99% to 33.3% by weight (para [0096]), which range overlaps with the instantly claimed range of between 10% and 50% by weight;
- at least one polyol and/or acrylic polymer and/or starch (para [0095] [0101], starch, i.e., surface sizing starch, meeting the claimed limitations), and that the starch is present in at least an outer surface of said outer shell (para [0002] [0086] [0095]), in the suitable amount of from about 1 to about 6 lbs/3 msf (i.e., MSF = thousand square feet, para [0095] and Table 1, basis weight of 165 lbs/3000 ft2), which amount if calculated is about 0.6% to 3.6 % (i.e., 1/165 * 100, to 6/165 *100), which range overlaps with the instantly claimed range of between 1% and 10% by weight.
In the case where the claimed ranges “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). MPEP 2144.05.
Koenig does not specifically teach the inclusion of aluminum salts in the specific manner as instantly claimed, i.e., of between 1% and 30% by weight, and wherein said aluminum salts and said at least one polyol and/or acrylic polymer and/or starch is present in at least an outer surface of said outer shell, as instantly claimed in claim 1.
Lohnas teaches a coating composition as surface sizing for paper and paperboard that is suitable for food packaging applications (col. 1, lines 10-13, col. 4, lines 43-50). Lohnas teaches its coating composition is a starch-based coating that includes modified starch, carboxymethylcellulose, and aluminum salts/hydrated aluminum sulfate in the desired amount (col. 1, lines 55-67). Lohnas teaches its coating composition provides improved grease barrier and moisture resistance (col. 4, lines 43-50). Lohnas teaches that the suitable amount of aluminum salts/hydrated aluminum sulfate is about 2½% by weight (col. 4, lines 56-66), which range overlaps with the instantly claimed range of between 1% and 30% by weight of claim 1. In the case where the claimed ranges “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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify the container for fluid material of Koenig in view the teachings of Lohnas, to include the coating composition of Lohnas to the outer surfaces of the container shell of Koenig, which coating is a starch-based coating that includes aluminum salts/hydrated aluminum sulfate (col. 1, lines 55-67), and which coating composition is taught by Lohnas as suitable surface sizing for paper and paperboard that is suitable for food packaging applications (col. 1, lines 10-13, col. 4, lines 43-50), to provide a container with improved grease barrier and moisture resistance as taught by Lohnas (col. 4, lines 43-50), which would have predictably arrived at a satisfactory container that is the same as instantly claimed, in claims 1 and 4-5.
It should be noted that the recitation “forming a surface treatment applied to the outer surface of the outer shell to impart barrier properties against water, oils, greases and gases” of claim 1 is considered as merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the mixture of modified Koenig is capable of impart (at least to some degree of) barrier properties against water, oils, greases and gases.
Regarding claim 3, Koenig teaches the mixture of fibres including cellulose fibres, cotton fibres and synthetic fibres (para [0004] [0026]). Koenig teaches the suitable content of various fibers in the fiber mixtures is a result effective variable and can be adjusted as desired and Koenig teaches the suitable content of synthetic fibres is about 2 to 8% (para [0093]). Koenig does not specifically teach a content of cotton fibres and synthetic fibres is in the specific proportion as instantly claimed, varying between 1% and 10% by weight.
It would have been obvious to a person of ordinary skill in the art to adjust the content amount of the cotton fibres in the mixture of fibres and adjust the content amount of synthetic fibres in the mixture of fibres through routine experimentation in order to achieve the desired properties (strength, barrier performance, etc.) of the paper base substrate of the container once produced, which would have arrived at a workable amount of cotton fibres and a workable amount of synthetic fibres, of which the calculated proportion ratio would fall within the broad range as instantly claimed, i.e., between 1% and 10% by weight. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 6, Koenig teaches the suitable grammage of the paper material is about 105 to 300 lbs/ 3000 ft2 (3 msf) (see para [0046], Table 1), of which the grammage if calculated, is about 171 to 488 g/sqm (para [0046], 1 lb = 453 grams, 1 ft2 = 0.09 m2, 453/278 is about 1.627), which range overlaps with the instantly claimed range of between 50 g/sqm and 900 sqm. In the case where the claimed ranges “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). MPEP 2144.05.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Koenig in view of Lohnas as applied to claim 1 above, further in view of Tripier et al. (US 9,580,628; “Tripier”).
The limitations of claim 1 are taught by Koenig and Lohnas as discussed above.
Regarding claim 2, Koenig teaches the mixture of fibres including cellulose fibres, cotton fibres and synthetic fibres (para [0004] [0026]). Koenig does not specifically teach the fiber length of cellulose fibres as instantly claimed.
Tripier teaches a fibrous paper material suitable for packaging applications (col. 2, lines 49-59, col. 4, lines 55-67). Tripier teaches its fibrous paper material includes mixtures of cellulose fibres, cotton fiber and synthetic fibres (col. 4, lines 60-65). Tripier teaches the length of the fiber including the cellulose fibres is a result effective variable that affects the material’s air permeability and barrier performance (col. 5, lines 29-40), and teaches that the suitable length of the cellulose fibres is about 0.1 mm to 30 mm (col. 5, lines 11-15), which range overlaps with the instantly claimed range of 0.2 mm and 5.0 mm. In the case where the claimed ranges “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). MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to modify the container for fluid material of Koenig in view the teachings of Tripier, to select and include suitable cellulose fibres with suitable fiber length as taught by Tripier (i.e., which fiber length overlaps with the instantly claimed range, as discussed above), to provide a container with desired barrier performance (col. 5, lines 11-40), which would have predictably arrived at a satisfactory container that is the same as instantly claimed. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Koenig in view of Lohnas as applied to claim 1 above, further in view of Myerscough (US 2017/0240334).
The limitations of claim 1 are taught by Koenig and Lohnas as discussed above.
Regarding claim 7, Koenig does not specifically teach the inclusion of an inner plastic shell as instantly claimed.
Myerscough teaches a container for fluid material that includes an inner plastic shell for containing the fluid material and an outer shell of paperboard (para [0058]), wherein the inner plastic shell is coupled to the outer shell, which in turn acts as a substrate for the inner plastic shell (para [0058] [0059]).
It would have been obvious to one of ordinary skill in the art to modify the container for fluid material of Koenig in view the teachings of Myerscough, to include to the paperboard container of Koenig with an inner plastic shell coupled to the paperboard/outer shell as taught by Myerscough for the obvious benefit of containing and holding the fluid material therein (para [0058]), which would have predictably arrived at a satisfactory container that is the same as instantly claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782
