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 with traverse of Group I, claims 1-10 and 16-20 in the reply filed on May 28, 2026 is acknowledged. The traversal is on the ground that the restriction has not been properly established because the restriction fails to describe a materially different process for the apparatus of Group II. In particular, the traversal asserts that it is not correct to take the position that the apparatus could be used in a process that merely compresses or reshapes a container without coating it because this does not constitute a materially different process as the apparatus is specifically configured for and directed to the coating function recited in the method claims . This is not found persuasive. The apparatus as claimed must only be configured to/capable of coating a container while the method as claimed requires coating the container with the bladder. It is correct and proper for the examiner to point out that the same apparatus could be used in a materially different process that does not coat the container because this is not something that necessarily happens by using such an apparatus. It is not inherent that pressurizing a bladder sufficiently to blow/expand a container to fill a mold results in that bladder coating the interior of the container at the end of the process. Such a bladder may be configured to or capable of coating the interior, but this does not necessarily happen merely by pressuring the bladder. Indeed, this is a clear scenario where “the apparatus as claimed” can be “used to practice another and materially different process” because a method of molding a container that does not also coat the container is a materially different process and it is clear that the claimed apparatus can be used in such a method (e.g. by applying the pressure at a lower temperature to keep it from melting/adhering to the interior walls of the container or by applying a lower pressure to the bladder such that it does not sufficiently cause adhesion of the bladder material to the wall of the container upon removal of the lower pressure). It follows that an apparatus that reads on the claimed apparatus and that would merely be capable of having the coating bladder adhere to the container would be an apparatus that does not necessarily read on the claimed method.
Further, the apparatus as claimed could also be used to practice another materially different method of molding and coating a container that does not comprise fibers. The claimed apparatus is not limited to the materials worked upon and could be used to coat a container made solely of thermoplastic materials. As such, while the method necessarily requires a container comprising fibers, this is not a structural limitation in the apparatus claims. It follows that the position taken in the restriction requirement is correct.
Further still, based on the differences in scope between the inventions, a different field of search would be required to search both inventions and that the prior art applicable to one invention would not likely be appliable to the other invention. Also, the different classifications for each of the inventions demonstrates a separate status in the art. As such, there would be a search and/or examination burden placed upon the examiner if restriction were not required.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-15 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.
Claim Objections
Claims 16-18 are objected to because of the following informalities: at line 1 of claim 16, “wherein fibers” should be - - wherein the fibers - -. At line 1 of claim 17 “wherein biodegradable” should be - - wherein the biodegradable - -. At line 1 of claim 18, “wherein plastics” should be - - wherein the plastics - -. At line 2 of claim 17, the semicolon should be replaced with a comma Further, in each of claims 17 and 18, the first recitation of the recited materials should include its full name and not only an abbreviation. 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.
Claims 1-10 and 16-20 are 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.
Regarding claim 1, the claim recites the “container elements comprise an opening”. The limiting effect of the recitation is unclear. In one reading, it appears the intent is to suggest that when the distinct elements are placed together in the mold, they are arranged such that a corresponding container opening is formed in a manner similar to the container opening that is formed when a complete container is positioned in the mold earlier in the claim. In a second and arguably more literal reading, the recitation suggests the elements themselves individually have openings (e.g. holes, perforations) distinct from any container opening that may be ultimately produced.
As to claim 2, the claim recites a mixture of “the said materials”. The recitation lacks antecedent basis in the claims. For the purposes of examination, the recitation is understood to intend for the scope to be directed to “a mixture thereof” of the biodegradable material and the plastic material. Appropriate correction and clarification are required.
As to claim 3, the claim recites “the container parts”. The recitation lacks antecedent basis in the claims. Appropriate correction and clarification are required.
Claim 10 is indefinite for substantially the same reasons as claim 1 for the recitation “which elements comprise an opening”. For the purposes of examination, the first reading is understood to apply to the unclear recitations. Appropriate correction and clarification are required. Further, claim 10 recites “the individual container elements”. The recitation lacks antecedent basis in the claims due to the word “individual”. Appropriate correction and clarification are required.
The other claims are rejected as dependent claims.
Claim Rejections - 35 USC § 102
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, 2, 4, 5, 8-10 and 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumamoto et al. (US 2002/0189776).
Regarding claim 1, Kumamoto et al. teach a method for molding and coating a container comprising fibers (Abstract; Figures 5a, 5b, 6a-6c; paragraphs [0001] and [0016]) wherein the method comprises molding a container comprising fibers, which container comprises an opening, wherein the container is provided in a mold or molding container elements comprising fibers, which container elements comprise an opening, wherein the container elements are provided in a mold (Figures 5a, 5b, 6a-6c; paragraphs [0013], [0018]-[0020], [0023] and [0024]); molding a coating bladder which is at least temporarily and/or partially surrounded by the container or the container elements (Figures 6a-6c; paragraphs [0024]-[0035]); applying a pressure medium from a pressure source to the coating bladder to expand it, so that the coating bladder is at least partially applied to an inner wall of the container or the container elements and optionally at least partially compressing the wall thickness of the container (Figures 6a-6c; paragraphs [0024]-[0035]); and, separating the coating bladder from the pressure source, while the coating bladder remains at least partially as a container coating in the container or the container elements (Figure 6c; paragraphs [0030] and [0035]).
As to claims 2, 17 and 18, Kumamoto et al. utilize materials as claimed (paragraphs [0024] and [0032]).
As to claim 4, Kumamoto et al. teach a preferred/particular range of 0.1 to 3 MPa (i.e. 100,000 – 3,000,000 Pa). This preferred/particular range is within the claimed range.
As to claim 5, Kumamoto et al. teach increasing the temperature as claimed to thereby at least partially dry the container and at least partially adapting the coating bladder and optionally at least partially connecting the coating bladder to the inner wall of the container (paragraphs [0024]-[0035]).
As to claim 8, Kumamoto et al. increase the temperature to a value within the claimed range (paragraph [0032]).
As to claim 9, Kumamoto et al. utilize a pressure medium as claimed (paragraph [0026]).
As to claim 10, Kumamoto et al. teach the method comprises molding container elements comprising fibers and the elements are molded around a coating bladder as claimed to join the elements together by the coating bladder (paragraphs [0028], [0029] taken with [0033]-[0035]).
As to claim 19, Kumamoto et al. disclose the gas is air (paragraph [0026]).
As to claim 20, the rejection of claim 9 relies upon gas (paragraph [0026] – gases, such as air) and not liquid for the pressure medium. As such, since the claim does not positively require selection of the liquid, the rejection remains proper. It is further submitted for the purposes of clarity that an amendment that positively requires the selection of liquid would likely be rendered prima facie obvious over the art or understood to be a routine expedient.
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.
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 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto et al. (US 2002/0189776), as applied to claims 1, 2, 4, 5, 8-10 and 16-20 above, and further in view of Tojo et al. (US 7,048,975).
As to claims 3 and 7, Kumamoto et al. teach the method as set forth above. Kumamoto et al. teach the thickness of the container can be up to 10 mm (paragraphs [0019] and [0020]) and teach at least partially drying the container, but do not teach the relative weight of the bladder as claimed or drying to a 20% residual moisture content as claimed. However, Tojo et al. teach an analogous method wherein the bladder is as thin as 5 microns and wherein the residual moisture content is reduced to amounts that overlap the claimed range (Abstract; col. 3, line 35-col. 4, line 16; col. 5, lines 10-35 and col. 6, lines 50 and 51).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of the references and to have utilized a weight of coating bladder as claimed in the method of Kumamoto et al., as suggested by Tojo et al., for the purpose, as suggested by Tojo et al., of providing an adequate and effective coating thickness/amount while not taking too long to dry or causing runs/sags in the coating. The ranges of thicknesses disclosed between the coating thicknesses and the container thicknesses further suggests and renders the corresponding weight amounts as claimed.
Further, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of the references and to have dried the container to the amount as claimed by raising the temperature in the method of Kumamoto et al., as suggested by Tojo et al., for for the purpose, as suggested by Tojo et al. of effectively forming the coated container in an art recognized suitable manner.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto et al. (US 2002/0189776), as applied to claims 1, 2, 4, 5, 8-10 and 16-20 above, and further in view of either one of Asayama et al. (US 2008/0193687) or Greve (US 5,820,801).
As to claim 6, Kumamoto et al. teach the method set forth above. Kumamoto et al. do not teach the heating means as claimed. However, each of Asayama et al. (paragraph [0089]) and Greve (col. 8, line 63-col. 9, line 12; Figure 17) disclose analogous methods wherein heating means as claimed are utilized.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Kumamoto et al. and either one of the secondary references and to have utilized heating means as claimed to heat the container and the coating bladder in the method of Kumamoto et al., as suggested by either one of the secondary references, for the purpose, as suggested by the references of effectively heating the components/molds in an art recognized suitable manner.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto et al. (US 2002/0189776), as applied to claims 1, 2, 4, 5, 8-10 and 16-20 above, and further in view of either one of Myerscough (US 2013/0206023) or Nonomura (US 2003/0209337).
As to claim 7, Kumamoto et al. teach the method as set forth above, including at least partially drying the container, but do not teach drying to a 20% residual moisture content as claimed. However, each of Myerscough (Figures 1, 4 and 5; paragraphs [0001], [0009]-[0026]) and Nonomura (paragraphs [0005], [0006], [0030] and [0042]). teach analogous methods wherein the residual moisture content is reduced to amounts that overlap the claimed range.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Kumamoto et al. and either one of the secondary references and to have dried the container to the amount as claimed by raising the temperature in the method of Kumamoto et al., as suggested by either one of the secondary references, for the purpose, as suggested by the references effectively forming the coated container in an art recognized suitable manner and in a manner that improves water extraction efficiency and reducing costs.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kumamoto et al. (US 2002/0189776), as applied to claims 1, 2, 4, 5, 8-10 and 16-20 above. Note: this is an alternative rejection of claim 10.
As to claim 10, Kumamoto et al. teach the method comprises molding container elements comprising fibers and the elements are molded around a coating bladder as claimed to join the elements together by the coating bladder (paragraphs [0028], [0029] taken with [0033]-[0035]). In one understanding as set forth in the rejection above, the citations taken together are understood to anticipate the claim. Alternatively, it would have been prima facie obvious to have joined the articles in the heating mold/drying mold as claimed wherein the drying in the mold with the inflation of the bladder to form the lining joins the elements together.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references disclose analogous container molding and coating methods that should be considered prior to replying to this Office Action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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