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 .
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 4 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 4 recites a molecular weight without reciting the units of the molecular weight. It is thus unclear what the units of the molecular weight are. For purposes of examination, claim 4 is interpreted such that the molecular weight is in the units of g/mol.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mirone et al. (US 20050171229 A1). Claim 4 is further evidenced by Dow TONE 305 polyol (Dow TONE 305 polyol, 2026, Songhan Plastic Technology Co, LTD, Page 1).
Regarding claim 1, Mirone teaches a container comprising an oxygen barrier layer formed from an active energy ray (see UV) curable composition comprising an alicyclic epoxy compound that is 3,4-Epoxycyclohexylmethyl 3,4-epoxycyclohexanecarboxylate (Mirona, Abstract, Par. 0001-0002, 0014-0019 0046, and 0055-0057), which is the same as the alicyclic epoxy compound of the instant invention per the instant specification Par. 0049-0050 and therefore satisfies the formula (1) limitation. Regarding the limitation of the container being a squeeze container, Mirone teaches the container is a flexible plastic container for beverages and is thus able to be squeezed, satisfying the limitation of a squeeze container (Mirone, Par. 0001-0003, 0015, and 0049).
Alternatively, regarding the limitation of the container being a squeeze container, Applicant’s attention is drawn to MPEP 2106(II)(C) which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Mirone discloses a flexible container as presently claimed, it is clear that the container of Mirone would be capable of performing the intended use, i.e. being used as a squeeze container presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 2-3, Mirone teaches the active energy ray curable composition comprises a softness imparting agent that is polycaprolactone triol (Mirone, Par. 0055 and 0058).
Regarding claim 4, Mirone teaches the softness imparting agent is TONE caprolactone 0305 (Mirone, Par. 0058) which has a molecular weight of 540 g/mol as evidenced by Dow TONE 305 polyol (Dow TONE 305 polyol, Page 1), which lies within the claimed range of 1000 g/mol or less and therefore satisfies the claimed range, see MPEP 2131.03.
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 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Mirone et al. as applied to claims 1-2 above.
Regarding claim 5, Mirone teaches that a content of the softness imparting agent is 2-15 mass% with respect to 100 mass% of a nonvolatile content of the active energy ray curable composition (Mirone, Par. 0059, which overlaps the claimed range of 7 to 20 mass% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claim 6, Mirone teaches that a thickness of the oxygen barrier layer is 4 to 10 µm (Mirone, Par. 0098), which overlaps the claimed range of 5 to 10 µm and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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