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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-11 and 14-20 in the reply filed on June 02, 2026 is acknowledged.
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 02, 2026.
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.
Claims 1-11 and 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshiaki et al., (hereinafter Yoshiaki), JP 2001-1303500 A (translation previously mailed).
With regard to claims 1-2, 5, 14 and 17, Yoshiaki shows in Fig. 2a-d a:
Method for producing a container (1) with a hollow body (11) made of fibrous material and having an opening, and a connecting element (13) arranged on the hollow body (11) and surrounding the opening, the method comprising the following method steps:
Providing a split suction mold (21, 22) with a porous wall (see ¶-[0015]), which, when closed, encloses at least one cavity (C) with a mold opening;
Arrangement of the insert member (13), (corresponding to the connecting element) and a filling Nozzle (3) (corresponding holding device, holder) and insertion of the holder (3) into the cavity (C) of the suction mold (21, 22) in such a way that the holder (3) projects through the mold opening and holds the connecting element in the mold opening;
Closing the divided suction form (21, 22) and injecting a papermaking slurry of fibers into the cavity
Compacting the formed hollow body (11) with the connecting element (13) arranged thereon; and (see Figures 2b-c, ¶-[0018]-[0019])
Drying the hollow body. (¶- [0020]); see ¶-[0013]-[0021] and figures 2(a)-2(d) also shows similar process in figure 4(a)-4(f).
The only difference being that the paper slurry is not suctioned through the mold as claimed, but injected, but injection slurry through mold(s) is well-known in the art as evidenced by United State Patent No. 6,605,187 B1 (column 7, lines 24-37); United State Patent No. 6,752,910 B2 (paragraph bridging columns 4 and 5); United State Patent No. . 6,841,041 B2 (column, lines 29-38), United State Patent No. 7,008,509 B1 (column 1, lines 19-38) just to cite a few. Therefore, adding the pulp by submerging/immersing/dipping the mold into the slurry and sucking it to form the layer(s) of the product as oppose to injecting into the mold are as shown by the evidentiary references equivalent process and therefore obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if it were done an equivalent process. Also it has been held that “[W]here two equivalents are interchangeable for their desired function, substitution would have been obvious and thus, express suggestion of desirability of the substitution of one for the other is unnecessary.” In re Fout 675 F. 2d 297, 213 USPQ 532 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 152 USPQ 618 (CCPA 1967).
Regarding to claims 3 and 18, Yoshiaki shows in figures 2(a)-2(d) and figure 4(a)-4(f) that shows the different stages of the process including introducing the hollow body onto a similar split mold, complimentary mold; see also ¶-[0019]-[0020].
With regard to claim 4, while the reference does not explicitly teach the pivoting of the holder, removing the holder by twisting/rotating it, i.e., pivoting it would have been obvious to one of ordinary skill in the art and considered obvious, absent a showing of unexpected results.
Regarding to claims 6 and 19, Yoshiaki teaches inserting and expandable device, core (4), to expand and compress the layer(s) in the hollow body; see figures 2(b) and 4(d) discussed on ¶-[0017], [0021], [0026], etc.
With regard to claims 7 and 15, Yoshiaki teaches that the product is dewatered and heated with hot air or hot oil; ¶-[0018] in a drying mold which is similar to core (4) is inserted and expanded with using hot air or hot oil as discussed on ¶-[0018]; see ¶-[0020]-[0021]. As to the introduction of a hot rod of claim 15, using any type of known-drying process is within the level of ordinary skill in the art and thus considered obvious, absent a showing of unexpected results.
Regarding to claims 8 and 20, although Yoshiaki does not explicitly teach that the connection element, the insert member (13) were made by injection molding, Yoshiaki teaches that insert member is preferably made of a material with higher strength and greater shape accuracy than the rest of the body (10) and teaches that the making with thermoplastic resins; see ¶-[0012], which is usually made by injection molding and thus the reference teaches the claimed limitation or at the very least making the insert member by injection molding would have been obvious to one of ordinary skill in the art.
With regard to claim 9, while Yoshiaki does not teach the pre-heating of the dewatered member in an oven, this is and obvious design choice, that it is well-known in the art and within the level of ordinary skill in the art.
Regarding to claims 10-11 and 16 Yoshiaki teaches the coating of the product by impregnating, injection of resins on/in the formed product; see ¶-[0038], [0041], [0043], etc., and using a biodegradable resin would have been obvious to one of ordinary skill in the art for environmental reason(s).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Method and Device for the Production of a Biodegradable Hollow Body with a Connection Element.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 PM.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
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