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, claims 1-12, in the reply filed on November 26, 2025 is acknowledged.
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on November 26, 2025.
Therefore, after the election, claims 13-16 are withdrawn and claims 1-12 are pending for examination as filed with the preliminary amendment of April 3, 2025.
Specification
The disclosure is objected to because of the following informalities: Throughout the specification, reference to figures 2a and 2b should be to 2A and 2B to correspond to the form used in the drawings.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: spraying device in claim 1 and molding device in claim 8.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2, 7, 8 and 11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2, lines 2-7, at lines 2-4 “the longitudinal extension of said upper portion . . . hollow container (100)” is repeated at lines 5-7, which is confusing and indefinite as worded. Was the repeat at lines 5-7 intended to actually refer to the bottom portion? For the purpose of examination, referring to either the upper or bottom portion at lines 5-7 is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Claim 7, line 3, as to “e.g. a metal wire”, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “a wire”, and the claim also recites “e.g. a metal wire” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, simply “a wire” is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
Clam 8, line 5, “said shoulder portion” lacks antecedent basis.
Claim 11, lines 2-3, “3 to 15 %, e.g. from 5 to 10 %” is vague and indefinite as to what is actually covered, as no units are provided as to the %’s. For example, is the moisture content measured in weight % or volume % or atomic %, etc.? For the purpose of examination, any unit or % that is within the described range is understood to meet the claimed requirements, but applicant should clarify what is intended, without adding new matter.
Claim 11, lines 2-3, line 3, as to “e.g. from 5 to 10 %”, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “from 3 to 15 %”, and the claim also recites “e.g. from 5 to 10 %” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of examination, simply “from 3 to 15 %” is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
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.
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over West et al (US 2012/0097632) in view of Appel (US 2020/0262599), Itoh (US 4211339) and Sprengling (U S4496415).
Claim 1: West provides a method for providing a barrier coating on a hollow container (note figure 1, 0027, 0029, 0034, with lumen/hollow 118). A hollow container is provided comprising molded pulp (note figure 1, 0027, 0029). The hollow container can comprise a bottom portion (note area around 108), a main portion (note area around 110), and an upper portion (note area around 116), where the main portion is arranged between the bottom and upper portions (note figure 1, 0027-0034). The hollow container comprises a bottom surface (note 108), and sidewalls extending from the bottom surface (note 130, 132) to an opening (note 128) of the hollow container, where the sidewalls and bottom surface define an exterior surface and an interior surface of the hollow container (note figure 1, 0027-0034). West indicates the desire to provide a barrier coating 120 (permeation barrier coating) onto the interior surface of a predetermined portion (the neck or upper portion 116) of the hollow container, where the barrier coating can include polymeric material (note figure 1, 0034, 0018-0019, such as PLA). Furthermore, the coating can be desired to be applied to this specific area of the container and not other areas (note that while barrier coating material 106, for example, can be provided on the interior portion of the main portion, these coatings can have different compositions, so that the specific composition/material of layer 120 would only be applied to a specific portion of the container) (note 0029, 0034, figure 1), and alternatively, a side wall of the main portion can be provided without a coating, as the sidewall itself could have the polymeric barrier material (note figure 2, 0037), and therefore, a non-uniform barrier coating on a hollow container can be provided. West notes that paper pulp can be used (note 0013).
West does not provide the specific application method for depositing the barrier coating and treating the applied barrier coating material.
However, Appel also describes providing a hollow container formed from molded pulp, that would also have what can be divided into bottom, main (between bottom and upper portions) and upper/neck portions, with a bottom surface and sidewalls extending from the bottom surface to an opening of the container, with the sidewalls and bottom surface defining an exterior surface and interior surface of the container (note figures 11, 12, 14-16, 0213, 0214, 0222, 0225-0227). Appel also describes providing a barrier coating on interior surfaces of the container (note 0214, 0193, 0159—barrier to moisture, giving water tightness). It is indicated that the barrier coating can be a polymeric material that is provided as a polymer material that can be spray coated on the interior surface, where the spraying device (using nozzles to spray charged powder, understood to correspond to the 35 USC 112(f) requirements of a spray device as described by applicant) would be capable of charging the polymeric powder prior to or during deposition of the polymeric powder (note 0159 with polymer materials including PLA, etc., 0193, 0214). Appel further indicates to treat the hollow container with heat under conditions that melt and/or cure the applied polymeric powder (note 0214, 0193).
Itoh further describes how a barrier (sealing) resin powder material can be applied to a hollow container (here made with paper) to form a barrier (sealing) layer (note column 1, lines 30-60, column 3, lines 1-5, figure 1), where the barrier material is applied to the interior of the hollow container by a spraying device capable of charging the resin/polymeric powder prior to deposition of the powder (note figure 1, column 3, lines 1-45). The barrier material is applied to a predetermined portion of the container, with use of an electrode system that would provide charge to the predetermined portion of the container where the barrier material coating is to be applied during the application of the powder material (note figures 1-3, column 2, line 40 to column 3, line 65, note electrodes 28, 29, 47), where the applied material can be heat treated (note column 5, lines 55-65, including heating to molten, column 3, lines 1-5).
Sprengling notes how resin powder can be used for electrostatic spraying, where to adhere the resin to the substate, the substrate can be electrically charged and the powder applied by giving the particles an electrical sign of opposite charge to that of the substrate, and the deposited particles can be fixed more firmly in position by quick heating to cause them to melt partially and adhere (note column 2, lines 45-60. Note column 3, lines 30-65).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify West to deposit the barrier layer by spraying a polymeric powder onto the interior surface to the predetermined portion of the hollow container using a spraying device capable of charging the polymeric powder prior to deposition of the powder, where electrical conductivity of the portion to be coated is higher than the electrical conductivity of the remaining portions of the hollow container during the deposition, and then treating the hollow container with heat to melt the polymer powder as suggested by Appel, Itoh and Sprengling in order to provide a desirable polymeric barrier layer coating application, since West indicates the desire to apply a polymeric barrier layer which can be applied to a predetermined portion of the interior of the hollow container (such as the neck area), and Appel also indicates the desire to apply polymeric barrier layer material to the interior of a similar hollow container, where it is indicated that the material can be spray applied onto the interior surface of the hollow container using a spraying device (understood to meet the requirements of such a sprayer under 35 USC 112(f) as discussed above) that would charge powder prior to deposition and then spray on the hollow container, to be followed by melt heating the powder, and Itoh further suggests that when spray applying barrier layer resin material as powder to the interior of a hollow container to a predetermined desired portion of the container, the resin powder can be charged and charge can also be applied to the portion of the substrate to be coated, and not to other areas, due to the placement of charging electrodes where coating desired, and Sprengling further suggests that when providing charge to the surface to be coated by electrostatic spraying with charged resin powder, the surface can be charged to have a charge opposite that of the powder, thus suggesting to charge the portion of surface of the hollow container where the coating is desired to be applied to be higher than the electrical conductivity of the remaining portions of the container not to be coated so that the charged polymeric powder suggested to be sprayed by Appel, etc. would deposit on the specific portion of the container desired.
Claim 2: As to the relative proportions of the upper position, main position and possibly lower position, it is the Examiner’s position that this would be a matter of design choice as to the specific selection of what can be considered upper, main and lower, where there is no limit as to where the measurements of each section can start and stop. Note In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947) and also note In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim 3: As to the at least one portion being in contact with grounded electrically conductive material, during step b) deposition, this would be suggested by Itoh (note the ground electrodes as shown in figures 1, contacting the hollow container where the coating is supposed to be applied, figure 1, column 2, line 40 to column 3, line 40).
Claim 4: As suggested by West, the predetermined portion can be in the neck of the hollow container, so in the upper portion (note figure 1, 0034).
Claim 5: West would provide that the upper portion of the hollow container can comprise a shoulder and neck portion, where the neck portion has a smaller cross sectional area than the main portion and is configured to circumferent at least the opening 128 of the container, and the shoulder tapers between the main portion and the neck portion (note figure 1).
Claim 6, as to the electrical conductivity higher in the neck and shoulder portion, this would be suggested for West, since as shown in figure 1, that is where coating 120 is desired to go (note figure 1, 0033-0034).
Claim 7: as to the electrically conductive material being an electrically conductive wire to be wrapped around the predetermined portion during deposition of step b), this would be suggested by Itoh, with an expectation of predictably acceptable results, because for Itoh, the electrically conductive material is provided where the coating is supposed to go, and can be surrounding the container and the electrically conductive material can be in strip shape (note figure 1, 2, column 3, line 40-60), and the shape and size and placement would be optimized based on the portion desired to be coated, and therefore the strip shape electrode can be narrowed to be considered a wire and wrapped around the container, based on the specific coating positioning desired, with an expectation of predictably acceptable results.
Claim 8:as to the electrically conductive material be considered to be in an electrically conductive molding device configured to enclose at least one predetermined portion during the deposition of step b), which can be part of the shoulder portion of the container, this would be suggested by Itoh, which shows how an enclosing device can be provided with electrically conductive parts (the electrodes) to provide the charge (note figure 1, column 2, lines 40-60), where these parts can be considered a molding device to the extent claimed, and a substantial equivalent under 35 USC 112(f) standards noting the enclosing/surrounding electrodes.
Claim 9, as to further depositing polymeric powder on to an exterior surface of at least a portion of the upper portion of the container by the spraying device, this would be suggested by Appel, note figure 14, and 0193.
Claim 10: as to step b’) being performed before step c), this would be suggested as indicated by Appel, which indicates coating an inside and surrounding edge (which can be considered an exterior surface) before heating (note 0193), and it is further indicated to perform further spraying of the outside after heating, followed by another heating step (note 0193), and it would have been obvious to that second heating step can be considered step c) to the extent claimed.
Claim 11: as to the moisture content of the hollow container during step b) deposition, Appel indicates that it can be 7% by weight (in the claimed range) (note 0193.
Claim 12: ss to conditioning step a’) the container at a relative humidity of 30-100 % after step a), Appel would suggest this with the relative humidity of 50% for coating (note 0193), so either conditioning can be considered as also occurring in step b) (so after step a)), or it would further be suggested that the container be exposed to the desired relative humidity for coating (giving an earlier conditioning) before coating, so that the containing becomes exposed to the desired conditions before coating actually starts so that the treatment is all under the desired conditions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718