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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 8/19/2025 is acknowledged.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1 and 3 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al, DE 19521687 (already of record) in view of Taccolini, US Patent Publication 2014/0300026.
Regarding claim 1, Mayer teaches a method for manufacturing an edible [0015] multi-ring can holder consisting of biodegradable materials [0014-0018], comprising: forming a pulp slurry (pulpy mass [0022]) comprising: dried and ground beer by-product [0002], plant fibers [0015-0018], an environment-friendly, water-repellent chemical (waxes [0020]); and water; and processed directly into a packaging material or packaging [0024] by injecting the pulp slurry into a mold [0021] having an interior cavity.
Mayer teaches the act of injection molding a pulp into a biodegradable container, but is silent on its shape only that a mold can be utilized [0021-0024].
In order to show that the act of injection molding a pulp material into the desired end product is conventional, Taccolini is presented.
In the same field of endeavor of injection molding packaging materials, Taccolini teaches a method for manufacturing a multi-ring, can holder [0064 and 0070-0073], comprising: molding pulp into a shape is formed into a molded liquid container carrier shape, [0012-0013 and 0021] defining six-open rings each sized to securable contain therein a standard soda can in a releasable manner (Figure 1B and [0037, 0060, 0071, and 0106-0109]; pressurizing and heating the molded pulp into a form (a cure-in mold process [0066-0069] and drying to forma 6 pack ring (see figure 1B).
It would have been obvious to utilize the combination of injection molding set up of Taccolini in the Mayer method for the benefit of utilizing a known shape and methodology to achieve the desired results when the primary reference is merely silent to the specifics but still teaches the same stated concept. The selection of the conventional injection molding process is an obvious choice in view of the pair of teachings.
Regarding claim 3, Mayer remains as applied above and further teaches that the plant fibers comprise one or more of wheat straw, bamboo, sugar cane, and miscanthus [0018].
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al, DE 19521687 (already of record) in view of Taccolini, US Patent Publication 2014/0300026 in further view of Milos et al, US Patent Publication 2013/0330791.
Regarding claim 2, Mayer remains as applied above and is silent on the beer by-product comprises one or more of barley, wheat, corn, rice, rye, and oat.
Mayer teaches that the beer malt is utilized and consists of the known material [0002] and that the goal is to reuse these “spent grains” [0012-0013]. There are also examples of rice husks and cereal straw, but no specific mention of the type of cereal.
While the average artisan would understand that the teachings of the malt and the use of different cereal byproducts would read on the claimed examples, a teaching reference is provided.
Milos is presented to show that it is understood that the fermentation by-products of beer mash components includes corn, wheat, rye, barley, and others [0247-0263].
It would have been obvious to select one of the known starting materials for making a beer malt or mash as taught by Milos in the Mayer method that teaches the same grain starting materials but is silent on naming the specific grains to be utilized.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al, DE 19521687 (already of record) in view of Taccolini, US Patent Publication 2014/0300026 in further view of Happiness Moon, Molded Paper Pulp (http:www.paperpulptableware.com/molded-paper-pulp.html).
Regarding claim 4, Mayer does not expressly disclose an environment-friendly oil-repellent chemical.
In the same field of endeavor of making a biodegradable package product, Happiness Moon teaches that biodegradable, molded pulp containers, made from pulp and vegetable fiber comprise FDA tested food-grade oil and water repellent and decompose fully (paragraphs 1-3).
It would have been obvious to one of ordinary skill in the art to modify the biodegradable multiple can holder of Mayer by adding an FDA tested food-grade oil and water repellent, as taught by Happiness Moon to protect the integrity and rigidity of the holder while in use and which would allow the biodegradable holder to fully decompose when disposed.
Claim(s) 5 is rejected under 35 U.S.C. 103 as being unpatentable over Mayer et al, DE 19521687 (already of record) in view of Taccolini, US Patent Publication 2014/0300026 in further view of Hoshino, USP 4,296,068.
Regarding claim 5, Mayer is silent to the step of disinfecting the multi-ring can holder.
While the act of disinfecting a product prior to delivery or after production is obvious to an average artisan, Hoshino is presented to show that the act of sterilizing food or beverage containers prior to utilizing them is common practice in the industry.
Hoshino teaches the act of sterilized food container after their manufacture and before there filling of first use and final sealing (see abstract and summary sections).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilizes the teachings of sterilizing a food container or package holder after manufacturing as taught by Hoshino int eh Mayer method for the benefit of having a disinfected and cleaned product that intended to be environmentally safe and biodegradable after use.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,788,235. Although the claims at issue are not identical, they are not patentably distinct from each other because the Parent claim includes all of the details of the instant application and provides additional limitations, which would still read on the current claim set.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748