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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/30/2026 has been entered.
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.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima (US5588544A) and further in view of Dinzinger (US20220041319A1).
Regarding claim 33, Takashima teaches a molded product made of a fiber material, comprising (fig.1A shows the container which can be molded from a fiber material):
a connection element, wherein the connection element includes a connecting wall with a plurality of openings through which the fiber material of the molded product projects (fig.1A-1B shows the connecting elements 2A that includes a wall 3A with openings 15A that can have the material of the bottle pass through; “Through-holes 15 are formed in the cylindrical wall of the cylindrical body 3A, permitting bottle resin 23 material to pass through.” Col.8 lines 37-39)
wherein the connection element is operable to be inserted into a suction mold having a porous surface to form the molded product (it is noted that due to phrase “operable to be inserted” is a capable of/configured to language and does not positively claim “a suction mold” and has no patentable weight therefore the connection element 2A is capable of being inserted into a suction mold having a porous surface to form the molded product; see under response to arguments for the MPEP section);
wherein the connecting wall of the connection element is configured to be located at a small distance from the porous surface of the suction mold when inserted into the suction mold (Fig.1A-1B the connecting wall 3A of the element 2A is capable of being located at a small distance from the porous surface of the suction mold when inserted into the suction mold; once again due to configured to language the distance is not positively claimed and the prior art does not have to actively disclose it).
Regarding the specific process of forming the molded product, the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Takashima does not teach wherein the fiber material is a cellulose fiber material.
Dinzinger teaches wherein the fiber material is a cellulose fiber material (fig.1 shows the beverage cup that is made from a fibre/cellulose starch mix). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the fiber material disclosed by Takashima by adding the teaching of fiber cellulose material as disclosed by Dinzinger in order to make cups out of recyclable material and have positive carbon footprint. “While conventional cups are made of plastic or else paper coated with plastic or wax, cups of the present invention are made of purely plant-based materials, such as cellulose hydrate and cardboard or fiber/cellulose starch mix, as well as non-vulcanized natural rubber or plant-based wax and a mix of cellulose hydrate, cardboard, fiber/cellulose and/or starch. The cups are thus not only easy to recycle or compost, they are also produced from renewable raw materials that have a positive carbon footprint. Due to the plant-based starch content, the cups can even be used as plant fertilizer or serve as fish food should they ever end up in the sea. Therefore, the cups of the present invention form a very good, environmentally friendly and environmentally conscious alternative to common disposable beverage cups.” (0006, Dinzinger)
Claim(s) 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 33 above and further in view of Dinzinger (US20220041319A1).
Regarding claim 34, the references as applied to claim 33 above discloses all the limitations substantially claimed. Takashima further teaches wherein the molded product is a container having at least one opening, wherein the connecting wall surrounds the at least one opening (fig.1A shows the perform 11 that will be a container that will be molded from the product and will have an opening similar to bottle 13 and the wall 3A will be surrounding the middle of the opening), wherein the container includes a cover (fig.1A a cap can be added to container molded to cover the opening “The bottle neck structure of claim 18 further comprising means for mechanically strengthening said resin core member so that said cap may be affixed to said bottle when said bottle is filled with a hot liquid”-Claim 20) wherein the connection element is injection molded (fig.1A connecting element 2A’s is injection molded). Takashima does not teach wherein the container is coated with a biodegradable or bioinert coating, wherein the connection element is injection molded, and/or wherein the connection element is made of a biodegradable material.
Dinzinger teaches wherein the container is coated with a biodegradable or bioinert coating and wherein the connection element is made of a biodegradable material (“wherein a first layer consists of cellulose hydrate and is connected to a second layer by a coating with primer material, wherein in both layers the bottom and the side wall are produced in one piece, and a method for producing a cup with at least two layers, wherein a first layer consists of natural rubber or plant-based wax and a second layer consists of a mixture of cellulose hydrate ,cardboard, fiber/cellulose and/or starch and the bottom is produced together with the cup”-0140, Dinzinger and “By using non-vulcanized natural rubber or wax and a mix of cellulose hydrate, cardboard, fiber/pulp and/or starch, the cups and lids of the present invention are functional and versatile, but unlike conventional disposable cups, are fully biodegradable or even compostable.”-0070; “This is the case, for example, when at least one layer of the base and sidewall are produced by a compression molding process or casting process (e.g., hot compression molding process or injection molding process).”-0105). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the container and the connecting element disclosed by Takashima by adding the biodegradable material and coating as disclosed by Dinzinger in order to make the containers fully biodegradable and compostable. “Preferred primers of the present invention are vegan, fully biodegradable, compostable, acid-free, and/or crystal clear.”(0079, Dinzinger)
Regarding claim 35, the references as applied to claim 34 above discloses all the limitations substantially claimed. Takashima as modified in claim 34 further teaches wherein the coating is a primer including cellulose fibers, casein, whey, agar-agar, psyllium husks, and/or silicon dioxide (“wherein a first layer consists of cellulose hydrate and is connected to a second layer by a coating with primer material, wherein in both layers the bottom and the side wall are produced in one piece, and a method for producing a cup with at least two layers, wherein a first layer consists of natural rubber or plant-based wax and a second layer consists of a mixture of cellulose hydrate ,cardboard, fiber/cellulose and/or starch and the bottom is produced together with the cup”-0140, Dinzinger).
7. Claim(s) 34 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 33 and further in view of Huang (US 20100181372 A1).
Regarding claim 34, the references as applied to claim 33 above discloses all the limitations substantially claimed. Takashima further teaches wherein the molded product is a container having at least one opening, wherein the connecting wall surrounds the at least one opening (fig.1A shows the perform 11 that will be a container that will be molded from the product and will have an opening similar to bottle 13 and the wall 3A will be surrounding the middle of the opening), wherein the container includes a cover (fig.1A a cap can be added to container molded to cover the opening “The bottle neck structure of claim 18 further comprising means for mechanically strengthening said resin core member so that said cap may be affixed to said bottle when said bottle is filled with a hot liquid”-Claim 20). Takashima does not teach wherein the container is coated with a biodegradable or bioinert coating, wherein the connection element is injection molded, and/or wherein the connection element is made of a biodegradable material.
Huang does teach where the container is coated with a biodegradable or bioinert coating (“The cup 2 may be made by first forming the container body 21 with a predetermined shape, followed by applying the first and second biodegradable coating compositions respectively onto the inner and outer surfaces 211, 213 to form the inner and outer protecting layers 22, 33. Alternatively, opposite surfaces of a paper sheet may be coated respectively with the first and second biodegradable coating compositions so as to form the inner and outer protecting layers 22, 33 thereon..”-0026, Huang). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the container disclosed by Takashima by adding the teaching of first and second biodegradable coating as disclosed by Huang in order to coat the container with biodegradable coating that are both food safe and protect the environment.
Regarding the specific process of forming the connection element, the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 37, the references as applied to claim 34 above discloses all the limitations substantially claimed. Takashima as modified in claim 34 further teaches wherein the container is coated with a second biodegradable coating or a second bioinert coating (“The cup 2 may be made by first forming the container body 21 with a predetermined shape, followed by applying the first and second biodegradable coating compositions respectively onto the inner and outer surfaces 211, 213 to form the inner and outer protecting layers 22, 33. Alternatively, opposite surfaces of a paper sheet may be coated respectively with the first and second biodegradable coating compositions so as to form the inner and outer protecting layers 22, 33 thereon..”-0026, Huang).
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takashima (US5588544A), Dinzinger (US20220041319A1), Huang (US20100181372A1) and further in view of Dinzinger (US20220041319A1).
Regarding claim 35, the references as applied to claim 34 above discloses all the limitations substantially claimed. Takashima as modified in claim 34 does not teach wherein the coating is a primer including cellulose fibers, casein, whey, agar-agar, psyllium husks, and/or silicon dioxide.
Dinizinger does teach wherein the coating is a primer including cellulose fibers, casein, whey, agar-agar, psyllium husks, and/or silicon dioxide (“wherein a first layer consists of cellulose hydrate and is connected to a second layer by a coating with primer material, wherein in both layers the bottom and the side wall are produced in one piece, and a method for producing a cup with at least two layers, wherein a first layer consists of natural rubber or plant-based wax and a second layer consists of a mixture of cellulose hydrate ,cardboard, fiber/cellulose and/or starch and the bottom is produced together with the cup”-0140, Dinzinger). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the coating disclosed by claim 34 by adding the teaching of cellulose fiber as disclosed by Dinizinger in order to make the entirety of the container including the coating to be biodegradable and to provide with a positive carbon footprint. “The cups are thus not only easy to recycle or compost, they are also produced from renewable raw materials that have a positive carbon footprint. Due to the plant-based starch content, the cups can even be used as plant fertilizer or serve as fish food should they ever end up in the sea. Therefore, the cups of the present invention form a very good, environmentally friendly and environmentally conscious alternative to common disposable beverage cups.” (0006, Dinizinger)
Claim(s) 38 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 37 and further in view of Patel (US 20160360783 A1).
Regarding claim 38, the references as applied to claim 37 above discloses all the limitations substantially claimed. Takashima as modified in claim 37 does not teach wherein the second biodegradable coating or the second bioinert coating includes linseed oil, carnauba wax, and/or beeswax.
Patel does teach wherein the biodegradable coating includes linseed oil, carnauba wax, and/or beeswax (“In some embodiments the coating 310 may comprise, by way of example, a varnish, a paint, a wax (e.g., beeswax, Chinese, lanolin, shellac, spermaceti, bayberry, carnauba, candelilla, castor, esparto, Japan, jojoba, ouricury, rice bran, soy, tallow tree, ceresin, montan, ozocerite, peat, paraffin, microcrystalline, petroleum jelly, polyethylene wax, Fischer-Tropsch, esterified, saponified, substituted amide, and polymerized α-olefins)..”-0116, Patel). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the second biodegradable coating disclosed by claim 37 by adding the teaching of beeswax coating as disclosed by Patel in order to provide additional moisture resistance to protect the units of the product or performs other functions. “while the coating 310 provides additional moisture resistance to protect the units of the product or performs other functions.” (0116, Patel)
Allowable Subject Matter
Claims 13-20 are allowed.
Response to Arguments
Applicant's arguments filed 01/30/2026 have been fully considered but they are not persuasive. Applicant discusses how the new limitation that are added to the claim are not taught by the prior art this is not persuasive and applicant failed to claim any of those limitations positively. Applicant’s limitation regarding “a suction mold” is not even positively claimed because prior to it that limitation claim recites “operable to be inserted” that is a configured to language and as long as prior art is capable of performing that function it can be read on the claim. IF the claim recited a suction cup positively before having that limitation, then it would be different and the arguments would hold more weight. In the fourth paragraph, applicant does the same thing again when trying to claim the distances by stating “configured to be located at a small distance…” by reciting configured to applicant leaves the claim much more open ended. Regarding the intended use of the claimed invention “configured to.....”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). In the last paragraph, applicant just recites how the molded product is formed which is a product by process. The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). To overcome the art, applicant is recommended to positively claim the new structure so it can bring the claims more towards the actual invention because as of right now the new limitations hold little to no patentable weight.
Conclusion
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/PRINCE PAL/Examiner, Art Unit 3735