DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-20 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, it is not clear if the limitation “a plant-based solidifying blend placed inside the disposable bag” is reciting the intended use of the blend that is supplied with the device or if the claim requires that the plant-based solidifying blend be inside the bag as an inventive structural relationship between parts.
Since applicant is claiming a device, not claiming a “kit” of parts, for the purposes of examination, the limitation is interpreted to mean that the invention requires the blend to be inside the bag.
Although applicant agrees with the interpretation, claim 1 should be amended to remove the word “placed” or some other change in order to avoid ambiguity.
Claim 9 claims both an apparatus and the method step of treating the apparatus. Claim 9 has been amended yet it is still not clear. Claim 9 should be amended to recite structure instead of a method in order to avoid uncertainty because the language still creates confusion to when direct infringement occurs. The coating isn’t being created; it is present. For example, “the bag exterior further comprising a coating of white vinegar and oil to inhibit mold and control odor,” or something similar.
The claims not addressed above are rejected since they depend from a rejected claim.
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, 11, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Graves et al. (US 4555339) in view of Fukuda (US 5908377).
Regarding claims 1, 11, and 14, Graves discloses a device for storing used oil, grease, and fat, comprising: a disposable bag, 14 into which used oil, grease, and fat is poured; a container, 11 comprising a lid 20 and handle 18, and holding the disposable bag that fits inside the container, fig. 2.
Graves does not disclose a plant-based solidifying blend placed inside the disposable bag, wherein the plant-based solidifying blend causes the oil, grease, and fat to solidify after coming into contact with one another.
Fukuda teaches a solidifying agent (Z) formed from a solidifying blend of a protective material (II), oleic acid (E-2), col. 7: 1-5 and a gel-in-oil forming material (I) stearic acid (12-hydroxystearic acid), col. 5: 4-10. The solidifying agent taught by Fukuda aids in the prevention of pollution of drains, rivers and lakes, col. 1: 5-25, col. 21: 19-30.
The solidifying agent of Fukuda is held inside a container in the state of a solid or paste at room (“ordinary”) temperature, col. 10: 65-end, col. 11: 1. The blend taught by Fukuda serves the purpose of solidifying liquid oils, such as edible oils, col. 12: 4-20.
Fukuda further teaches, col. 9: 30-55, that the ratio of the protective material (II) to the gel forming material (I), (II)/(I) is from 1 to 10, or reversed (I)/(II), 10 to 1, which includes the claimed ratio of 4:1 and that methods can be changed based on type of oil and application, col. 20:52-60, and that choosing the correct ratio is a balance between obtaining a homogeneously solidified product and amount of material necessary for solidification, col. 9: 45-55.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the bag of Graves to include the oil solidifying agent paste taught by Fukuda in order to solidify used oils stored in the bag of Graves thereby preventing pollution of drains, rivers, and lakes as per the teaching of Fukuda.
Regarding claim 18, Graves further discloses that the lid is attached to the top of the container with a threaded sealing process and may include an O-ring 22, fig. 2.
Claim(s) 1, 8, 12, 17, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas (US 3184100) in view of Kirk (US 6365214)
Regarding claims 1 and 8, Thomas discloses a bag 30 in a container 10, comprising a lid, cover 14, and handle 13, the disposable bag fits inside the container fig. 2, to support the bag while oil, grease, or fat is dumped into the bag, col. 1:25-45.
Thomas does not teach that the bag is filled with a plant-based solidifying blend.
Kirk is analogous art in regard to a device for storing used oil, grease, and fat. Kirk teaches a disposable bag 12, into which used oil, grease, and fat is capable of being poured through opening at 20, fig. 1; the bag of Kirk is filled with a plant-based solidifying blend 14 placed inside the disposable bag, wherein the plant-based solidifying blend causes the oil, grease, and fat to solidify after coming into contact with one another, col. 4: 29-55, col. 5: 60-65. The device of Kirk is environmentally friendly and suitable for landfill or compost disposal when used with cooking oil and eliminates spills by immobilizing oil, col. 5: 35-65. Furthermore, Kirk teaches that the bag is closed with a cotton drawstring, col. 5: 10-20, while the bag of Thomas is only folded over to close, (fig. 5 of Thomas). Cotton is interpreted as meeting the limitation of “cloth.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the bag of Thomas with the device taught by Kirk in order to provide an environmentally friendly disposable item that avoids spills and is closeable with a drawstring as per the teaching of Kirk.
Regarding claim 12, Kirk further teaches that the solidifying blend can be in the form of pellets, Col. 6: 65-end, col. 7: 1-10. Pellets and tablets are synonyms. With this in mind, the pellets of Kirk are interpreted to meet the claimed “tablet” characteristic of the blend.
Regarding claim 17, the container of Thomas is flared into a funnel shape at its top, to funnel liquids into the container, fig. 4.
Regarding claim 19, the cover of Thomas has a peripheral flange at 15 that is an extended bottom portion, that dips into the container when fully attached, fig. 2 and 4, col. 2: 25-30, and is capable of prevent spillage by helping the closure engage with the inner wall of the container and helping to keep the lid from sliding laterally off the container.
Claim(s) 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Thomas and Kirk as applied to claim 1 above, and further in view of Kutumian (US 8206761).
Regarding claims 9 and 10, the references applied above teach all of claim 1, as applied above. The references applied above do not teach a white vinegar and essential oil treatment solution.
Kutumian teaches an all-natural multipurpose surface cleaner that disinfects, degreases, and deodorizes, col. 1: 5-11. The solution is made from white vinegar and essential oils, col. 2: 60-end, including jasmine essential oil, col. 3: 47-52. It is known to clean trash receptacles with spray cleaner.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to treat the device of Thomas as modified by Kirk with the spray taught by Kutumian in order to clean, disinfect, and deodorize as well as other benefits as per the teaching of Kutumian, col. 2: 35-40.
Claim(s) 1, 16, 17, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Santos (US 9856636) in view of Burton (US 5322196) and Offield (GB 2401850 A).
Regarding claim 1, Santos discloses, fig. 5-12, a disposable liner 35 for storing used grease, oil, fat, 19, poured into the liner, fig. 7, a container 28, comprising a lid 30;
The container holding the disposable bag that fits inside the container; and a plant-based solidifying blend (at 29, col. 5: 49-55, a cellulose material ”wood pulp or other earth-friendly substance”) placed inside the disposable bag, wherein the plant-based solidifying blend causes the oil, grease, and fat to solidify after coming into contact with one another, col. 5: 35-40.
While the rim 32 of the container is capable of being used to lift the container, for compact prosecution, the container is further modified to include a protruding handle.
Burton is analogous art in regard to containers for used oil (title). Burton further teaches that the container includes a handle 11, fig. 2, noting that containers without handles are difficult to grip, col. 1: 49-51.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the container of Santos to include a handle in order to make the container easier to grip as per the teaching of Burton.
In addition, if the liner is not considered to meet the limitation of a ‘bag” the following modification is provided:
Offield is analogous art in regard to containers for disposing of waste material like cooking oil (title). In fig. 1, Offield shows a flexible bag 14 in a rigid container 10. The rim of the flexible bag 15 is supported on the rim 12 of the container.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the liner of Santos to be more bag-like by making it flexible in order to make it easier to store multiple liners in a flat configuration and furthermore to reduce the volume of waste by collapsing the bag to match the volume of waste before disposal.
Regarding claim 16, Santos further discloses that container comprises heat resistant materials made from recycled carbon; Santos discloses the container is made from corrugated cardboard or recycled paper, col. 5: 30-35, col. 9:45-55. Cardboard and paper are made from trees or plants, the molecular building blocks of all life include carbon. With this in mind, the container of Santos is made from Carbon.
Regarding claim 17, the container of Santos is flared at its top, fig. 5 at 32, to funnel liquids into the container.
Regarding claim 20, Santos further discloses that the liner/bag further comprises a bulb at its bottom, fig. 7, space below 29. The bulb is present to help overflow, but it also lowers the center of gravity. A lower center of gravity helps keep the bag in place in the container.
Allowable Subject Matter
Claims 2-4 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claims 2 and 4, none of the available prior art teach a dual layered bag made from jute burlap and parchment paper or grease paper where the layers are stitched or adhesively attached. Santos teaches the use of wax paper as a liner, col. 6: 5-10, but does not teach jute and wax paper is different from both parchment and grease proof/resistant paper.
Regarding claim 15, the closest available prior art to the claimed blend is Fukuda who teaches stearic and oleic acid as a blend and describes prior art as using wax, col. 1:30-55. No available prior art teaches the claimed combination of items and ratios.
Response to Arguments
Applicant's arguments filed 18 September 2025 have been fully considered but they are not persuasive.
In response to applicant's argument that the inner container is not disposable. Applicant appears to place a narrow meaning on the term disposable. Disposing of any part of Graves or the instant invention, regardless of whether or not the part is supposed to be disposed of is a recitation of the intended use of the claimed invention. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
If the bag of the instant application has particular properties that cause it to be “disposable” over the applied prior art, the structure of the bag should be claimed rather than the intended use of the bag.
In response to applicant's argument that Fukuda does not teach plant-based materials, [0030] of the instant invention recites oleic acid and stearic acid. Whether the acids come from animal or plant fat, the ending chemical composition is the same. With this in mind, the phrase “plant-based” is considered to constitute a product by process limitation that does not materially affect structure. "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 does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (See MPEP 2113; In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).)
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the differences between Fukuda’s agents and the instant invention) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments against the combination of Graves and Fukuda are not found persuasive.
In response to applicant's arguments against the references individually, applicant’s argument against Kirk and Thomas, individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In addition, applicant again argues the differences between the prior art and aspects of the instant invention that have not been claimed.
With this in mind, applicant’s argument against the combination of Kirk and Thomas is not found persuasive.
In response to applicant's argument that Santos does not teach a container and a lid, examiner disagrees, see col. 10, line 2: “the shell container 28” and col. 3: 5-6: “a removable lid.” With respect to the handle, Santos is modified to introduce a handle, and is never cited as having a handle, per se.
Further in regard to the rejection over Santos in view of Burton and Offield, beginning on page 15, applicant repeatedly argues features that have not been positively claimed and pick apart deficiencies in individual references.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Burton does not include biodegradable materials and the location of the absorbent material of Santos) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With this in mind, applicant’s argument against Santos in view of Burton and Offield is not found persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOLLIE L IMPINK whose telephone number is (571)270-1705. The examiner can normally be reached Monday-Friday (7:30-3:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MOLLIE LLEWELLYN IMPINK
Primary Examiner
Art Unit 3799
/MOLLIE IMPINK/Primary Examiner, Art Unit 3799