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 .
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12/162659. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are identical except the current claims do not require a specific range of PLA fibers in the independent claim, this limitation is present in the dependent claims.
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.
Claim(s) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 3059066 to Magrin in view of WO-2017/063680 to Zweed.
Regarding Claims 1-19
Magrin teaches a compostable lid for sealing a beverage capsule comprising a film containing a PHA polymer other than PLA (Magrin, abstract, paragraph [0044], [0069]) having a thickness between 10 and 1000 microns which overlaps the claimed range of between 100 and 200 micrometers (Id., paragraph [0053]). Magrin teaches that the polymer matrix (PHA) comprises between 5 and 95% by weight of the film which overlaps the claimed range of between 90 and 95% (Id., paragraph [0051]). Magrin teaches a coffee container comprising the lid and a use in a machine dispensing individual beverages (Id., paragraph [0007]).
Magrin does not appear to teach the inclusion of a non-woven layer. However, Zweed teaches a compostable lid for sealing a beverage capsule comprising a non-woven material of polylactic acid fibers which are known in the art as being heat-sealable (Zweed, abstract, page 10, line 4 to page 11, line 17, claims 1 and 3). Zweed teaches that the lid may comprise multiple of these nonwoven carrier layers (Id., page 3, liens 29-34). Zweed teaches that the nonwoven has a basis weight between 10 and 30 g/m2 (Id.). Zweed teaches that the nonwoven material comprises a PLA glue component on the inner face (Id., page 12, lines 20-40). Zweed teaches that this non-woven material improves stiffness of the lid (Id., page 12, lines 20-40). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the compostable lid of Magrin and to include the non-woven carrier layer of Zweed, which would necessarily result in the film being placed directly on the non-woven material, motivated by the desire to form a conventional compostable lid having improved stiffness and durability.
Regarding the inner face having a melting point lower than the outer face, Zweed teaches that utilizing two different PLA materials with differing melting points is beneficial to provide heat-sealable effects (Id., page 11, lines 1-12) and that when multiple carrier layers are utilized, one layer may provide the additional function as a moisture barrier while the other carrier layer functions primarily as the carrier (Id., page 3, lines 29-34). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the composite of the prior art combination and wherein the inner nonwoven PLA layer has a lower melting point thus providing a heat-sealed moisture barrier configuration.
Regarding Claim 5
Zweed does not specially teach the percentage of fibers by weight in the non-woven layer. However, teaches that the nonwoven may comprise fibers and a glue component layer. It should be noted that the amount of fibers is a result effective variable. As the amount of fiber increases, the material exhibits increased strength and rigidity at the expense of decreased adhesion between layers. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the percentage of fibers since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the percentage of fibers in order to maximize the strength, stiffness, adhesion and durability of the lid.
Regarding Claims 9 and 19
Regarding the grammage of the PHA layer, although the prior art does not disclose the grammage of the PHA layer, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention (PHA polymer film having the claimed thickness). Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding Claim 10
Regarding the percentage of PLA fibers, Zweed teaches the non-woven material may comprise a combination of natural and synthetic fibers, natural fibers or synthetic fibers (Id., page 10, line 4 to page 11, line 17), and further teaches that preferably the non-woven material comprises cellulose, cellulose and PLA or PLA (Id., page 12, lines 20-40), which necessarily meets the limitation of containing at least 50% (such as 100%) of polylactic acid fibers. Alternatively, it would have been obvious to one of ordinary skill to adjust, vary and optimize the range, such as within the claimed range, motivated by the desire to form a conventional synthetic/natural nonwoven fabric based on the totality of the teachings of the prior art combination.
Regarding Claim 13
Magrin teaches that the container portion is preferably also made of biodegradable and compostable material (Id., paragraph [0063]) and that the biodegradable materials known to be suitable in the art are polylactic acid and PHA (Id., paragraph [0039], paragraph [0044]). It would have been obvious to one of ordinary skill in the art to form the biodegradable capsule cup portion utilizing PLA or PHA motivated by the desire to form a full biodegradable capsule utilizing known biodegradable materials suitable in the art.
Regarding Claim 14
Regarding the container being compostable to the standard EN13432, although the prior art does not disclose the compost standards of the container, the claimed properties are deemed to naturally flow from the structure in the prior art since the prior art reference teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VINCENT A TATESURE whose telephone number is (571)272-5198. The examiner can normally be reached Monday-Friday 7:30AM-4PM EST.
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, Jennifer Chriss can be reached at 5712727783. 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.
/VINCENT TATESURE/Primary Examiner, Art Unit 1786
Prosecution Insights