DETAILED CORRESPONDENCE
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 .
Response to Arguments
Applicant's arguments have been fully considered.
Applicant argues that the prior art impregnation agent does not form a primer.
Examiner does not find this persuasive because impregnating a fibrous material inherently primes the material by sealing the material. Sealing is priming as evidenced by the instant specification at paragraph 68 of the publication: “Immersion not only fills the pores of the fiber material, but also covers at least the fibers on the outer side of the container with the impregnation. The impregnation thus also forms a primer for a coating applied on top”.
Stein forms a fibrous structure, impregnates it, and coats it (see, e.g., “portioning container can be sprayed with wax and/or a coating or be coated… impregnate fiber materials with wax” [P0016]). The impregnated fibers would seal (“prime”) the surface for coating. Sealing is priming as evidenced by the instant specification at paragraph 68 of the publication: “Immersion not only fills the pores of the fiber material, but also covers at least the fibers on the outer side of the container with the impregnation. The impregnation thus also forms a primer for a coating applied on top”.
Applicant argues that “the Office Action is using the barrier layer taught by Stein to arguably teach both the step of impregnation and the step of coating. Applicant respectfully disagrees and submits that these are two separate and distinct steps of the present application, which use different agents and serve different purposes/function”
Examiner does not find this persuasive because the claim does not require the that the steps occur sequentially in a particular order1 or that the agents have any particular composition. Stein expressly teaches that the fibrous material can be both impregnated and coated by an agent (paragraph 16, quoted above). When Stein teaches that the fibrous structure is treated with an agent (e.g., wax) that impregnates and coats the article, this meets the claim.
Applicant argues that Stein fails to teach "wherein the coating is different than the at least one impregnation agent" in claim 20.
Examiner does not find this persuasive because this is not claimed.
Applicant argues that Stein’s teaching to “allow the liquid solution content in the final-shaped portioning container to be so low that the portioning container is particularly dimensionally stable." Para. [0062] does not teach dewatering and drying a container as in the present application.
Examiner does not find this persuasive because the claim requires dewatering and drying. Reducing liquid of a fibrous structure meets this limitation.
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 are not recited in the rejected claim(s). 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).
Election/Restrictions
Newly submitted claims 31-34 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Claims 20-25 and Claims 31-34 lack unity of invention because even though the inventions of these groups require the technical feature of fiber material being impregnated, and coated, as claimed, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of over Stein (US 20240367895 A1) and in view of Spender (US 20200095731 A1) (see prior art rejection below).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 31-34 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 20-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stein (US 20240367895 A1) and in view of Spender (US 20200095731 A1).
In reference to claim 20, Stein discloses a method of mechanically reinforcing a biodegradable container (“container (1) made of biodegradable fiber material (11)” [Abstract]), comprising:
molding a three-dimensional container, wherein molding the three-dimensional container includes (“molded fiber system (100), and to a method (200) for manufacturing such portioning containers (1)” [Abstract]):
applying an aqueous pulp solution to a mold, wherein the mold is in the shape of the container (“using a molded fiber system (100) by means of a molded fiber process, from a pulp (7, 7a, 7b) as a liquid solution containing the biodegradable fiber material (11),” [Abstract]);
negatively pressurizing the aqueous pulp solution, wherein a fibrous material suspended within the aqueous pulp solution is compacted into a fibrous matrix in the shape of the mold to form the container, and wherein the fibrous matrix of the container comprises a plurality of pores; and (“a molding station 20 having a suction tool 20s” [P0095])
dewatering and drying the container; (“allow the liquid solution content in the final-shaped portioning container to be so low that the portioning container is particularly dimensionally stable.” [P0062])
impregnating… wherein the at least one impregnation agent penetrates the plurality of pores in the fibrous matrix of the container;
hardening the at least one impregnation agent; (“it possible to saturate or impregnate fiber materials with wax. The process of the wax penetrating the fiber material can be supported by elevated temperatures above the melting point” [P0016])
coating the container with a coating, wherein the coating increases the gas impermeability of the container; and (“the barrier layer includes one or more of: a wax layer, a coating layer, a layer of PTFE, or a ceramic layer” (Claim 54))
applying a cover to at least one flange of the container, wherein the at least one flange extends radially outwards from at least one opening of the container (Fig 1), wherein the cover forms a gas impermeable seal over the at least one opening of the container (“wherein at least the receptacle (2), preferably also the cover (6), is provided with a barrier layer system (8) which has a barrier effect at least against penetration of moisture, water, aromatic substances, flavoring agents, odorants, and/or non-food-grade substances” [Absract]).
Stein further discloses the “coating of the receptacle and/or the cover with functional layers such as barrier layers” (P0010); “barrier layer system can comprise one or more functional layers” (P0011); and “it possible to saturate or impregnate fiber materials with wax” (P0016); and “the barrier layer includes one or more of: a wax layer, a coating layer, a layer of PTFE, or a ceramic layer” (Claim 54).
Stein does not disclose that the impregnating occurs by immersing at least a portion of the container into a bath comprising at least one impregnation agent.
In the same field of endeavor or reasonably pertinent to the particular problem faced by the inventor, surface treatment of cellulosic articles (Abstract), Spender discloses that it was known in the art to apply surface treatments by dipping (P0149).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to configure the method such that impregnating occurs by immersing at least a portion of the container into a bath comprising at least one impregnation agent.
A person having ordinary skill in the art would have been specifically motivated to configure the method such that impregnating occurs by immersing at least a portion of the container into a bath comprising at least one impregnation agent in order to combine prior art elements according to known methods to yield predictable results; achieve the simple substitution of one known element for another to obtain predictable results; and/or apply a known technique to a known device (method, or product) ready for improvement to yield predictable results.
Stein forms a fibrous structure, impregnates it, and coats it (see, e.g., “portioning container can be sprayed with wax and/or a coating or be coated… impregnate fiber materials with wax” [P0016]). The impregnated fibers would seal (“prime”) the surface for coating by sealing the fibrous structure. Sealing is priming as evidenced by the instant specification at paragraph 68 of the publication: “Immersion not only fills the pores of the fiber material, but also covers at least the fibers on the outer side of the container with the impregnation. The impregnation thus also forms a primer for a coating applied on top”.
In reference to claim 21 the cited prior art discloses the invention as in claim 20.
Stein further discloses wherein the at least one impregnation agent is exclusively applied to at least one top portion of the container and/or at least one bottom portion of the container (“the barrier layer system is also applied to an outer surface of the receptacle and/or the cover” [P0017]).
In reference to claim 22 the cited prior art discloses the invention as in claim 1.
Spender further discloses wherein the coating comprises cellulose fibers, casein, whey, agar-agar, and/or psyllium husks. (the barrier coating may contain other proteins, polysaccharides and lipids, including but not limited to, milk proteins (e.g., casein, whey protein and the like) [P0103])
In reference to claim 23 the cited prior art discloses the invention as in claim 1.
Stein further discloses wherein the at least one impregnation agent includes carnauba wax, beeswax, shellac, and/or sugar cane wax (“carnauba wax” [P0016])
In reference to claim 24 the cited prior art discloses the invention as in claim 20.
Stein further discloses the cover is a sealing film, wherein the sealing film comprises a fibrous sealing material (“a molding station having a suction tool with a large number of suction heads adapted to the contour of the receptacle and/or cover by sucking the pulp into the respective suction heads” [P0068])
In reference to claim 25 the cited prior art discloses the invention as in claim 20.
Stein further discloses further coating the cover with the coating before applying the cover, such that the container and the cover are coated in the same coating, and further comprising pressing the cover together with the at least one flange, wherein the coating of the cover and the coating of the container are materially connected (Fig 5 shows coating station occurring prior to assembly station. See P0095. This renders the idea of coating the covers before assembly to be taught by Stein.)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 As a general rule, "[u]nless the steps of a method [claim] actually recite an order, the steps are not ordinarily construed to require one." Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed.Cir.2001)