DETAILED ACTION
Claim Objections
Claim 5 is objected to because of the following informalities: “the a foodgrade paper” is believed to be in error for --the substrate is a food-grade paper-- . Appropriate correction is required.
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.
Claim 20 is 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 20 recites that “the force or pressure is 100~250 kg m/s2”. The units listed are a force; however, the claim recites a force or pressure, making it unclear what range or units are used for the claimed pressure, rendering the claim vague and indefinite. Further, paragraph [0015] of the instant application recites “The pressure exerted by the external force is in the range of about 100~250 kg m/s2”, where it is stated that the pressure applied is a range of forces, making it unclear whether the units are meant to be a force or pressure.
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.
Claims 1, 5, 8-9, 12-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Li CN 110623502 A in view of Ade 2010/0068097 and Chen CN 114043782 A.
In regards to Independent Claim 1 and Dependent Claims 8-9 and 12, Li teaches a paper straw (100, made of paper as described in abstract), comprising: a tubular straw body (tubular shape of 100 shown in figure 1) having an end (20) and formed of a substrate (paper substrate 10 shown in cross-section in figure 5), wherein the substrate has a first long side (first side 102 in figure 2A), a second long side (second side 102 in figure 2A) and a first thickness (thickness shown in cross-section of figure 5), the first long side overlaps with the second long side to form an overlapping portion having a second thickness (overlapping width W with thickness shown in figure 5), characterized in that: the overlapping portion has two longitudinal sides being straight (as shown in figure 2B), and the end of the tubular straw body has a beveled end having a sharp point (as shown in figure 2B); the sharp point has at least a part of the overlapping portion (point is within overlapping portion W in figure 2B); the overlapping portion is subjected to a force or pressure when being heated and sealed so that a material density of the overlapping portion is larger than that of a non-overlapping portion of the substrate (portion of W is crimped, i.e. compressed, and melting of adhesive, i.e., heating to connect sides to form straw, where crimping will increase density by compressing material, paragraph [0033]); and the substrate has a first surface entirely coated with a coating (10 has coatings 60 and 70 covering the entirety of each side of 10 as shown in figure 5). However, Li does not teach that the heating uses ultrasonic welding to seal the straw creating an overlap ratio of the second to first thickness is from 1.43 to 1.8, or that the coatings are hydrolytically degradable. Chen teaches using a polylactic acid coating for a straw (polylactic acid is a coating susceptible to hydrolytic degradation, paragraph [0042]). Ade teaches using ultrasonic welding of two components as an alternative to crimping (abstract) which reduces the thickness of the welded components to less than the initial thickness of the two components (paragraph [0032]), and is a function of the amount of vibration and force applied (paragraph [0032]). It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to replace the coatings of Li with the polylactic acid coatings of Chen, and to ultrasonically weld the overlapping components instead of crimping, as taught by Ade, in order to allow the coating to degrade in the natural environment so that the straw is not destructive to the environment (paragraph [0002] of Chen), and to substitute one known method, crimping, with another, ultrasonic welding, in order to couple two components by melting a different material between them (see abstract of Ade), KSR, 550 U.S. at ___, 82 USPQ2d at 1396, MPEP 2141 III B. Therefore, the thickness of two ultrasonically welded components is also recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that applying more force and vibration to the two components during welding will further reduce the resultant thickness of the combined components. Therefore, since the general conditions of the claim, i.e. that ultrasonic welding will reduce the thickness of the welded components, was disclosed in the prior art by Ade, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to have a thickness of the overlapping parts be between 1.43 to 1.8, in order to provide adequate adhesion of the parts together through an ultrasonic welding process. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A).
Regarding Dependent Claim 5, Li in view of Ade and Chen teaches the invention as claimed and discussed above, and Li further teaches that the paper straw is made of a food-grade paper (paragraph [0015]).
Regarding Dependent Claim 13, Li in view of Ade and Chen teaches the invention as claimed and discussed above, and Li further teaches a ratio of overlapping width to first width of 1/6 to 1/3 (paragraph [0014]). However, Li in view of Ade and Chen does not teach that the ratio of the overlapping width to the first width ranges from 0.051 to 0.131. Chen teaches an overlapping ratio of 0.047 to 0.238 (1 to 5 mm overlapping width, paragraph [0041] and 21 mm first width, paragraph [0040]). It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to reduce the ratio of Li in view of Ade and Chen to 0.047 to 0.238, as taught by Chen, in order to improve the uniformity of the straw pipe wall (abstract).
Regarding Dependent Claim 18, Li in view of Ade and Chen teaches the invention as claimed and discussed above, and Li further teaches one of the two longitudinal sides is not in a straight line with the sharp point wherein the straight line is parallel to the axis of the longitudinal axis of the paper straw (neither line is parallel with the sharp point of 20 as shown in figures 2A and 2B).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Ade and Chen as applied to claim 1 above, and further in view of Horie JP 2000308558 A.
Regarding Dependent Claim 3, Li in view of Ade and Chen teaches the invention as claimed and discussed above. However, Li in view of Ade and Chen does not teach that the nominal diameter is selected from the group consisting of 4, 6, 8, 10, and 12 mm. Horie teaches a straw (4) with a diameter of 4 mm or 6 mm (paragraph [0022]). It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to make the diameter of the straw of Li in view of Ade and Chen 4 or 6 mm, as taught by Horie, in order to use the straw for drinking fluids using the commercially available straw diameters used of 4 and 6 mm (paragraph [0022]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Ade and Chen as applied to claim 1 above, and further in view of Lee KR 102259702 B1.
Regarding Dependent Claim 7, Li in view of Ade and Chen teaches the invention as claimed and discussed above. However, Li in view of Ade and Chen does not teach that the coating has a thickness of 14 to 20 microns. Lee teaches using a coating for a straw with a thickness of 10-35 microns (paragraph [0020]). It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to make the thickness of the coating of Li in view of Ade and Chen 14 to 20 microns, as taught by Lee, in order to prevent the straw from being torn or allowing the beverage to be absorbed by the straw (paragraph [0020]).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Ade and Chen as applied to claim 1 above, and further in view of Toft 2020/0384752.
Regarding Dependent Claims 10 and 11, Li in view of Ade and Chen teaches the invention as claimed and discussed above. However, Li in view of Ade and Chen does not teach that the coating is waterproof and water-based. Toft teaches using PAA (polyacrylic acid) as a barrier coating for paper (paragraph [0125]) that is water-based (paragraph [0128]) and waterproof (PAA is the example polymer disclosed in the instant application). It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to replace the coating of Li in view of Ade and Chen with the PAA coating of Toft, in order to provide a very thin and homogenous coating over the paper after drying (paragraph [0127]).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Ade and Chen as applied to claim 1 above, and further in view of Salomaki 2021/0037999.
Regarding Dependent Claim 19, Li in view of Ade and Chen teaches the invention as claimed and discussed above. However, Li in view of Ade and Chen does not teach that the distance between a line through the sharp point and one of the longitudinal sides ranges from 0 to 1 mm. Salomaki teaches a straw (1) with an overlapping portion (4) with different dimensions of the cross-section of the straw dependent upon the viscosity of the fluid passing through the straw (paragraph [0043]). Therefore, the scale of the straw including the distance between the sharp point and longitudinal sides is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that increasing the size of the cross-section of the straw, including the distances between components along the circumference of the straw, will allow more viscous fluids to be consumed with the straw. Therefore, since the general conditions of the claim, i.e. that the scale of the cross-section of the straw can be changed, was disclosed in the prior art by Salomaki, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to have a distance between the sharp point and longitudinal side between 0 and 0.1 mm, in order to provide an optimal cross-section of the straw for the viscosity of fluid used in the straw. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Ade.
In regards to Independent Claim 23, Li teaches a paper straw (100, made of paper as described in abstract), comprising: a tubular straw body (tubular shape of 100 shown in figure 1) having an end (20) and formed of a substrate (paper substrate 10 shown in cross-section in figure 5), wherein the substrate has a first long side (first side 102 in figure 2A), a second long side (second side 102 in figure 2A) and a first thickness (thickness shown in cross-section of figure 5), the first long side overlaps with the second long side to form an overlapping portion having a second thickness (overlapping width W with thickness shown in figure 5), characterized in that: the overlapping portion has two longitudinal sides being straight (as shown in figure 2B), and the end of the tubular straw body has a beveled end having a sharp point (as shown in figure 2B); the sharp point has at least a part of the overlapping portion (point is within overlapping portion W in figure 2B); the overlapping portion is subjected to a force or pressure when being heated and sealed so that a material density of the overlapping portion is larger than that of a non-overlapping portion of the substrate (portion of W is crimped, i.e. compressed, and melting of adhesive, i.e., heating to connect sides to form straw, where crimping will increase density by compressing material, paragraph [0033]); and the substrate has a first surface entirely coated with a coating (10 has coatings 60 and 70 covering the entirety of each side of 10 as shown in figure 5). However, Li does not teach that the heating uses ultrasonic welding to seal the straw creating an overlap ratio of the second to first thickness is from 1.43 to 1.8. Ade teaches using ultrasonic welding of two components as an alternative to crimping (abstract) which reduces the thickness of the welded components to less than the initial thickness of the two components (paragraph [0032]), and is a function of the amount of vibration and force applied (paragraph [0032]). It would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to ultrasonically weld the overlapping components instead of crimping, as taught by Ade, to substitute one known method, crimping, with another, ultrasonic welding, in order to couple two components by melting a different material between them (see abstract of Ade), KSR, 550 U.S. at ___, 82 USPQ2d at 1396, MPEP 2141 III B. Therefore, the thickness of two ultrasonically welded components is also recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that applying more force and vibration to the two components during welding will further reduce the resultant thickness of the combined components. Therefore, since the general conditions of the claim, i.e. that ultrasonic welding will reduce the thickness of the welded components, was disclosed in the prior art by Ade, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art prior to the filing date of the invention to have a thickness of the overlapping parts be between 1.43 to 1.8, in order to provide adequate adhesion of the parts together through an ultrasonic welding process. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A).
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: prior art fails to teach, in combination with the other limitations of dependent claim 17, that one of the two longitudinal sides is in a straight line with the sharp point and that the sharp point has at least a part of the overlapping region. The sharp point having at least part of the overlapping portion has been interpreted as the sharp point at the furthest point of the beveled end comprising overlapped sides of the paper straw.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/STEVEN M SUTHERLAND/Primary Examiner, Art Unit 3752
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