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 .
Response to Amendment
This office action is in response to the reply filed on 4/27/2026, wherein claims 1-7 were amended. Claims 1-7 are pending.
Drawings
The drawings were received on 4/27/2026. These drawings are not acceptable. These drawings do not appear to be supported by the specification. For example, the drawing appears to lack a “reduced” diameter for the end faces (20a, 20b on pages 10-11 lines 33-2). Further, on the last page, the specification states, “A cork sheet 20a is glued on each end face 10a of the semi-finished cap with a reduced diameter in order to form the lids of the cap according to the invention.” In this drawing, 20A does not appear to depict an end face. It is never clearly stated that the end faces have a larger diameter than the reduced diameter. In fact the initial figures, depict the opposite relationship.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. With respect to claim 1, it is stated "wherein a sum of the first diameter and of twice a thickness of the cork sheet of the first type is equal to an inner diameter of the neck of the bottle to plug." This relationship is not described in the as filed specification and is therefore considered to be new matter. The specification does not mention the inner diameter of the neck of the bottle. Claims 2-7 directly or indirectly depend from claim 1 and are also rejected.
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 1-7 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.
The term “type” in claim 1 is a broad term which renders the claim indefinite. In this context, what is a "type"? Type can have a broad range. For example, the first and second types have different shapes, so one could argue that is a different type. Both materials for each "type" is cork, so one would argue that those are the same type. Overall, it is unclear the metes and bounds of the term type. Claims 2-7 directly or indirectly depend from claim 1 and are also rejected.
Claim 1 recites the limitation "the neck" in line 12. There is insufficient antecedent basis for this limitation in the claim. The neck discussed in line 2 is not being positively recited as part of the function. The neck is used as functional language.
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 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Navarro (ES 2288387 A1).
With respect to claim 1, Navarro discloses a cap for plugging a bottle comprising two lids and a roll so as to be able to be forcibly inserted into a neck of the bottle, characterized in that it comprises: a semi-finished cap with a first diameter comprising two end faces (figure 2 of Navarro below) and a lateral face (figure 2 of Navarro below) formed by a cap (1 of Navarro) made of crushed cork glued under pressure with a polyurethane binder (agglomerated cork described in description [0008]), a cork sheet (3 of Navarro) of a first type glued on the lateral face of the semi-finished cap (1) with the first diameter, a cork sheet of a second type (2 of Navarro) glued on each of the two end faces of the semi-finished cap with the first diameter.
Navarro didn’t directly disclose wherein a sum of the first diameter and of twice a thickness of the cork sheet of the first type is equal to an inner diameter of the neck of the bottle to plug. However this feature would be obvious to incorporate (if not inherent) to Navarros product. Navarros invention is intended to seal wine bottles, therefore, it would be obvious to have a size that would create a seal. It would have been obvious to try to one of ordinary skill in the art at the time the invention was made a sum of the first diameter and of twice a thickness of the cork sheet of the first type is equal to an inner diameter of the neck of the bottle to plug since there are only a finite number of predictable solutions. Either the size is the same as the opening in the bottle neck or slightly larger. Thus, making the stopper and neck opening the same size would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR, 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP 2143.
Examiner Note: the limitation “crushed cork glued under pressure” 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).) Further at some point in the manufacturing process, it is possible to cut cork in all directions.
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With respect to claim 6, the references as applied to claim 1, above, disclose all the limitations of the claims except for wherein a cork sheet of the first type glued on the lateral face of the semi-finished cap has a thickness comprised between 0.3 mm and 1 mm. However, it is considered as a change of shape of Navarros design and not novel in view of the guidelines established In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The implementation of a specific thickness for cork is only a modification in the shape of the cork of Navarros invention and still provides the same results as Navarro (i.e. serving as a lateral face). Essentially, Navarro and the present invention operate the same with the same working pieces, the only difference is the thickness of Navarros is not disclosed. In re Dailey established that a "change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results." The application has presented no argument which shows that the particular configuration of their thickness of their cork member is significant or is anything more than one of numerous configurations a person of ordinary skill in the art would find obvious for the purpose of allowing for use as cork and closure for wine bottle from Navarros invention. See Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459.
With respect to claim 7, the references as applied to claim 1, above, disclose all the limitations of the claims except for wherein a cork sheet of the second type glued on an end face of the semi-finished cap has a thickness comprised between 0.3 mm and 2 mm. However, it is considered as a change of shape of Navarros design and not novel in view of the guidelines established In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The implementation of a specific thickness for cork is only a modification in the shape of the cork of Navarros invention and still provides the same results as Navarro (i.e. serving as a lateral face). Essentially, Navarro and the present invention operate the same with the same working pieces, the only difference is the thickness of Navarros is not disclosed. In re Dailey established that a "change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results." The application has presented no argument which shows that the particular configuration of their thickness of their cork member is significant or is anything more than one of numerous configurations a person of ordinary skill in the art would find obvious for the purpose of allowing for use as cork and closure for wine bottle from Navarros invention. See Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Navarro (ES 2288387 A1) in view of Tourneix (EP 3974133 A1).
With respect to claim 2, the references as applied to claim 1, above, disclose all the limitations of the claims except for wherein the cork sheet of the first type glued on the lateral face of the cap comprises lenticels perpendicular to the thickness. However, in a similar field of endeavor, namely wine stoppers, Tourneix taught of a wine stoppers whose lateral face has a cork sheet with lenticels that area arranged parallel to the thickness of the lateral face (meaning it has had a perpendicular cut to the lenticels) in order to limit the variation of permeability to oxygen (abstract). It would have been obvious for someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cork sheet of Navarro to include a perpendicular cut to the lenticels as taught by Tourneix in order to allow for a limit in variation of the permeability of oxygen
With respect to claim 3, the references as applied to claim 1, above, disclose all the limitations of the claims except for wherein the cork sheet of the second type glued on each of the end faces of the semi-finished cap comprises lenticels parallel to the thickness. However, in a similar field of endeavor, namely wine stoppers, Tourneix taught of a wine stoppers whose end faces has a cork sheet with lenticels that area arranged perpendicular to the thickness of the lateral face (meaning it has had a parallel cut to the lenticels) in order to limit the variation of permeability to oxygen (abstract). It would have been obvious for someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cork sheet of Navarro to include a parallel cut to the lenticels as taught by Tourneix in order to allow for a limit in variation of the permeability of oxygen
With respect to claim 4, the references as applied to claim 1, above, disclose all the limitations of the claims except for wherein the cork sheet of the first type and the cork sheet of the second type are treated so as to have a trichloroanisole level lower than 0.3 ng/1. However in a similar field of endeavor, namely cork for wine bottles, Tourneix taught of a cork that is treated with trichloroanisole to have a level lower than 0.3 ng/l in order to be part of the cleaning process by exposure to supercritical carbon dioxide (page 3 [0009]). It would have been obvious for someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cork of Navarro to include levels below 0.3ng/l of trichloroanisole as taught by Tourneix in order to allow for workability in heat.
With respect to claim 5, the references as applied to claim 1, above, disclose all the limitations of the claims except for wherein the binder is a mono-component polyurethane, a bi-component polyurethane or a hot-melt polyurethane. Navarro taught of a polyurethane binder, however, Navarro never elaborated on the type of binder used. Due to the fabrication process, Tourneix discussed the incorporation of wax microspheres or thermoexpandable microsphere (translations page 2 [0001], Claims). It would have been obvious for someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cork of Navarro to include thermoexpandable microspheres and be a hot-melt polyurethane as taught by Tourneix in order to allow for workability in heat.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. EP-3974133-A1 OR EP-0481155-A1 OR EP-0100302-A1 OR ES-2288387-A1 OR FR-1349033-A OR IT-VI20090190-A1 OR WO-2004048219-A1 OR EP-3974133-A1 OR US-20240001583-A1 OR US-20040074862-A1 OR US-20030102283-A1 OR FR-2832950-B1 OR FR-354991-A OR US-5439124-A OR US-0633094-A OR US-0604259-A OR US-0556095-A.
Response to Arguments
Applicant's arguments filed 4/27/2026 have been fully considered but they are not persuasive. Applicant believes that Navarro failed to disclose of a first type of cork that is different than a second type of cork. However, applicant never distinguishes the first type as different than a second type. More importantly, what does "type" mean? Type is never clearly defined and can have an extremely broad meaning. For example, since these are two different cuts, they are two different types of shapes. Applicant takes a narrowed view of the term type with respect to the 102 argument rejections. However, it is believed the term can be broadly interpreted and the prior art still reads. Refer to 112b rejection above.
With respect to the prior 103 rejection, applicant argues that the combination is not logical as Navarro is aimed towards creating closures that are cost effective and Tourneix is about improving cap performance. However, as shown in the rejection above, Tourneix details the benefit of the respective orientation of the lenticels of each component. Further, it is noted that claim 2 and 3 are independent of one another. Meaning that there are two options for lenticel direction and an obvious to try rationale also applies. The claims as written could use more limitations.
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 extension fee 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.
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/S.K.S./Examiner, Art Unit 3735
/Anthony D Stashick/Supervisory Patent Examiner, Art Unit 3735
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