Detailed Action
The communications received 07/10/2024 have been filed and considered by the Examiner. Claims 1-10 are pending.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 19/335,858 (reference application) hereinafter ‘858. Although the claims at issue are not identical, they are not patentably distinct from each other because:
As for claim 1, claims 1, 6, and 12 of ‘858 teaches the formation of a round microwavable container from kraft and old corrugated container slurry (understood to have both hardwood and softwood) which includes an embedded moisture barrier, and which is done via wire mesh molding from a aqueous slurry, vacuuming, removal, and drying in a press, along with the application of a topical barrier layer (as a coating) to the inside surface of the container.
As for claim 2, see claim 2 of ‘858.
As for claim 3, see claims 3-4 of ‘858.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al (US 2003/0111201) hereinafter SAT in view of Hemmes et al (US 2018/0148894) hereinafter HEM.
As for claim 1, SAT teaches a method of manufacturing a container of the type characterized by a bottom region bounded by a circumferential sidewall (a container) [Abstract; 0018], comprising the steps of:
providing a wire mesh mold approximating the shape of the container (mesh member) [Fig. 16(b) #340; 0180];
preparing an aqueous fiber based slurry comprising at least one of hardwood virgin fiber and softwood virgin fiber [Fig. 17(a) #2; 0189; 0088];
immersing the mold in the slurry [Fig. 17(a); 0189];
drawing a vacuum across the mold within the slurry until a desired thickness of fiber particles accumulates at a surface of the mold (using a pump to draw suction) [0189];
removing the accumulated particles from the mold [Fig. 17(b-e)];
drying and pressing the accumulated particles in a press to thereby form the container (by transferring to a drying station, it is understood that the removed accumulated particles would be transported to the drying station) [Fig. 23 and 25; 0069; 0252; 0256];
transferring the container from the press to a coating station (to a post treatment station) [0289];
and applying a topical barrier layer (a coating) to the container at the coating station (a coating as a post-processing, as no coating device step etc. is otherwise included in the device, this is understood to occur at a separate section therefore at a coating station) [0289].
It is understood that the selection of the inside of the container of SAT versus the outside of the container of SAT would amount to a selection between two known sides of a container to coat.
In accordance with the MPEP, “choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success” is an exemplary rationale of obviousness [MPEP(I)(E)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the inside of the container of SAT to coat as this would have amounted to a selection from a finite number of sides to coat with the expected result of providing a coating.
SAT’s container is understood to be microwaveable even if not explicitly stated as such as there is nothing that impedes one of ordinary skill in the art from placing this container into contact with microwaves.
SAT fails to teach:
adding an embedded moisture barrier to the slurry;
HEM teaches that one manner of improving the wet dimensional stability of a molded pulp article is to include an embedded moisture barrier in the slurry/pulp (a permanent wet strength resin) [Abstract].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added the embedded moisture barrier of HEM to the slurry of SAT in order to improve the wet strength of the molded article of SAT. As both SAT and HEM pertain to the art of pulp molding they are analogous art and one of ordinary skill in the art expects success in the combination.
As for claim 2, SAT/HEM teaches claim 1 and the embedded moisture barrier includes alkyl ketene dimer which composes 2-17% of the embedded moisture barrier [0029] which overlaps the claimed range.
In accordance with the MPEP, ‘ In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)’ therefore the overlapping range is obvious [see e.g. MPEP 2144.05(I)].
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAT/HEM as applied to claim 1 and further in view of Handel et al (US 2003/0188840) hereinafter HAN.
As for claim 3, SAT/HEM teaches claim 1 but fails to teach the dry strength additive.
HAN teaches that one manner of improving the dry strength of a paper product is by adding a dry strength agent with starch in amounts of 0.5-1.5 % (which falls within the claimed range) [Abstract; 0016].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have added the dry strength agent with the starch of HAN to the slurry of SAT/HEM in order to improve the resultant dry strength of the paper product. As both HAN and SAT/HEM pertain to paper products, they are analogous art and one of ordinary skill in the art expects success in the combination.
Claim(s) 4-5 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAT/HEM as applied to claim 1 and further in view of McDaniel et al (US 2010/0210745) hereinafter MCD.
As for claims 4 and 8, SAT/HEM teach claim 1 but fail to teach the solids content of the topical barrier layer.
MCD teaches that in topical barrier layers (coatings), that one factor which affects the properties of the topical barrier layer is the volume fraction of solids (as this is affected by the binder chosen which affects the other properties) [Abstract; 1459]. Such properties include properties beneficial to a container such as heat resistance, UV resistance, hardness, and adherence, etc. [1459].
In accordance with the MPEP "[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)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the claimed range of solid content in the topical barrier layer as this would amount to a prima facie optimization of biner selection to arrive to the desired UV resistance, hardness, and adherence beneficial/compatible with the container of SAT/HEM. As MCD can be applied in pulp molding [1440], it is understood that it is analogous art with SAT/HEM and one of ordinary skill in the art expects success in the combination.
As for claim 5, SAT/HEM/MCD teach claim 4 and MCD further teaches that a topical barrier layer with the advantageous properties of claim 4 can include a polyvinyl alcohol [0671], a sugar alcohol (xylitol, sorbitol, mannitol) [0738], citric acid [1565], and cellulose nanofibrils (a reinforcing cellulose filler which can be a nanofiber) [1358].
Claim(s) 6-7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over SAT/HEM/MCD as applied to claim 4 and further in view of PCI Paint and Coatings Industry (Formulating Fundamentals for Coatings, 2006) hereinafter PCI.
As for claims 6-7,and 9-10, SAT/HEM/MCD teach claims 4 and 8 and the constituents of claim 5 but does not explicitly teach the ranges.
PCI teaches that formulations of topical barrier layers (coatings) are adjusted in response to specific performance and property requirements of the coating in relation to the constituents of the coating (such as the solvent) [pg. 1-5].
In accordance with the MPEP "[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)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the claimed ranges as this would have amounted to routine experimentation of formulations in order to achieve the desired container properties of SAT/HEM/MCD. As PCI addresses the issue of how to formulate the topical barrier layer, it addresses the problem faced by one of ordinary skill in the art in how to determine an appropriate formulation of the topical barrier layer of SAT/HEM/MCD.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/E.V./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748