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 Invention I, claims 1-8 in the reply filed on 12/14/2025 is acknowledged.
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 4 and 7 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 the limitation "poly(butylene succinate". It is not clear whether the limitation is a typographical error of “polybutylene succinate” or another compound. For the purposes of examination, the limitation will be interpreted as “polybutylene succinate”.
Claim 7 recites the limitation “the two layers”. There is a lack of antecedent basis for this limitation in the claim, since it is unclear which of the “at least two layers” of the fiber paper are being considered as “the two layers”.
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 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(s) 1 and 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 5,257,865 (Tani hereinafter) in view of US PG Pub No. 2010/0252617 (Dayton et al. hereinafter).
In re claim 1, with reference to Figs. 3 and 5 below, Tani discloses: An eco-friendly soft tube packaging comprising: a body (3); the body having a bottle mouth (5a), a liner (liner formed from 3a and plastic coating of paper bag 2) with a hollow cavity and connected to a lower part of the bottle mouth (see Fig. 3 below), and a joining recess (11) disposed around a periphery of the body and located between the bottle mouth and the liner (see Fig. 3); the bottle mouth being a tubular component (See Figs. 3 and 5) and communicating with an inner space of the liner by a hole (9) disposed on one end of the bottle mouth; a cap (6) detachably connected to the bottle mouth to close or open the bottle mouth; a tightening member (4), able to be mounted (at 12) into the joining recess (11), and having a shape the same as a shape of the joining recess (see elements 11 and 12, Fig. 3); an outer tube (2) which is a paper tube produced by waterproof paper (plastic coated paper sheet, column 3, lines 9-13); the outer tube covering the liner and the joining recess (see Fig. 3) and a head portion of the outer tube fixed in the joining recess of the body by tightening of the tightening member (column 3, lines 53-57); a rear end of the outer tube adhered and connected to a rear end of the liner and the liner is closed (as liner material is coated to paper tube).
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In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e the body, does not depend on its method of production, i.e. blow molding. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Tani fails to disclose wherein the body, cap, and tightening member are formed from biodegradable or recyclable materials.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected a recyclable material such as plastic or a biodegradable material as taught by Dayton et al. in paragraph 0109 for container elements such as the body, cap and tightening member of Tani, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07. Please note that in the instant application, paragraph 0027 applicant has not disclosed any criticality for the claimed limitations.
Tani fails to disclose wherein the outer tube is a spiral paper tube.
However, Dayton et al. discloses containers formed by spiral winding for various liquid products (paragraph 0192).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have formed the paper outer tube of Tani by spiral winding of waterproof paper as taught by Dayton et al., since the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (MPEP 2144.04, IV, B). Please note that in the instant application, paragraph 0031, applicant has not disclosed any criticality for the claimed limitations.
In re claim 5, with reference to the Figs. noted above, Tani in view of Dayton et al. disclose the claimed invention including wherein the tightening member is composed of a first tightening unit (4a) and a second tightening unit (4b), but not wherein the tightening member is in a circular form.
However, it would have been obvious to one of ordinary skill in the art at the time of the invention to have formed the tightening member in a circular form, since the court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant (MPEP 2144.04, IV, B). Please note that in the instant application, paragraph 0030, applicant has not disclosed any criticality for a circular form over another shape, such as an ellipse.
In re claim 6, with reference to the Figs. noted above, Tani in view of Dayton et al. discloses the claimed invention including wherein the spiral paper tube is produced by at least two layers of fiber paper (“several layers of paper stock” paragraph 0192) and an inner surface of the spiral paper tube is provided with a waterproof layer (“resin coating of PLA”, paragraph 0192).
In re claim 7, with reference to the Figs. noted above, Tani in view of Dayton et al. discloses the claimed invention including wherein long fibers of the two layers of the fiber paper extend and intersect each other (note that paper fibers lie across one another and thereby intersect within a single layer, and that providing two or more layers would further cause paper fibers to further intersect with fibers from the other layer, therefore one of ordinary skill in the art would understand it to be inherent that at least two fibers would intersect).
In re claim 8, with reference to the Figs. noted above, Tani in view of Dayton et al. discloses the claimed invention including wherein an outer surface of the bottle mouth is provided with a second thread and an inner surface of the cap is provided with a first thread; the cap and the bottle mouth are detachably connected by the first thread engaged with the second thread to close or open the bottle mouth (cap 6 is screwed on the nozzle 5a, column 3, lines 29-31).
Claim(s) 2, 3, and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tani in view of Dayton et al. as applied to claim 1 above, and further in view of US PG Pub No. 2017/0022357 (Sokoly hereinafter).
In re claims 2, 3, and 4, with reference to the Figs. noted above, Tani in view of Dayton et al. discloses the claimed invention except wherein the biodegradable or recyclable material is formed by bamboo powder mixed with plastic capable of being broken down naturally, the plastic capable of being broken down naturally includes polyvinyl alcohol (PVA) and polylactic acid (PLA), the plastic capable of being broken down naturally is selected from the group consisting of starch-based blends, polybutylene adipate terephthalate (PBAT), poly(butylene succinate (PBS), and polyhydroxyalkanoates (PHAs).
However, Sokoly discloses a biodegradable composition for the material of lids, caps, covers, and containers (Abstract, paragraph 0050), said compositions include plant based solids (bamboo powder, corn starch, and bran coat) thereby a starch-based blend, and at least one bio-derived polymer (PLA) (paragraph 0041).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have formed the soft tube packaging of a known biodegradable composition such as bamboo powder mixed with plastic (PLA) or a starch based blend as taught by Sokoly, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07. Please note that in the instant application, paragraph 0027, applicant has not disclosed any criticality for the claimed limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T KIRSCH whose telephone number is (571)270-5723. The examiner can normally be reached Mon-Fri, 9a-5p EST.
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/ANDREW T KIRSCH/Primary Examiner, Art Unit 3733