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 .
Priority
This application is the 35 U.S.C. § 371 National Stage entry of PCT/EP2023/073523, filed 08/28/2023 and published as WO 2024/046976 A1 on 03/07/2024.
The report on patentability of the IPEA or ISA in this National Stage application has been considered by the Primary Examiner. MPEP § 1893.03(e).
This application also claims benefit of CH 001011/2022, filed 08/30/2022.
Claim(s) Status
Claims 1-15 are pending as amended 02/26/2025.
Information Disclosure Statement
Applicant’s IDS filed 02/26/2025 has been considered by the Primary Examiner.
Drawings
The drawings filed 02/26/2025 are acceptable. See MPEP § 608.02(b)(I).
Specification
The abstract of the disclosure is objected to because: (i) the dashes in lines 4-6 are not proper American Standard English syntax or grammar; and (ii) the reference numerals require the abstract to be read in conjunction with a figure that may or may not be printed on the cover of any patent issuing from this application. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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 1-15 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.
Claim 1
Regarding the preamble to claim 1, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2-15 are similarly rejected because they incorporate this indefinite subject matter by virtue of their dependency.
Claim 3
Claim 3 depends from itself. Consequently, the metes and bounds are impossible to determine. For the purposes of this Office action, the Primary Examiner interprets claim 3 as depending from claim 1.
Claim 5
In the second line of claim 5, use of the indefinite article in “a powder coating” is indefinite because claim 1, from which claim 5 depends, already recites a powder coating. Consequently, it is unclear whether “a powder coating” in claim 5 is referring back to the powder coating of claim 1 or another powder coating. For the purposes of this Office action, the Primary Examiner interprets “a powder coating” as “the powder coating,” referring back to the powder coating of claim 1.
Regarding the preamble to claim 5, the two instances of the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim 8
Regarding claim 8, the phrase "preferably" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "preferably"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim Interpretation
The use of reference characters in the claims is noted. Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. The use of reference characters is to be considered as having no effect on the scope of the claims. See MPEP § 608.01(m).
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.
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.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 1 126 083 A1 in view of US 6,406,757 B1.
Claims 1, 8, & 12-13
EP 083 teaches a method for coating a dried, pre-formed, molded article (10). Molded article (10) can be 100% pulp-made, containing fibers [0034-0035]. EP 083 specifically discloses the molded article (10) is a cylindrical bottle (i.e., a container), having an opening portion (11) and a screw-thread mating cap [0029, 0031]. The method comprises forming a plastic layer on the outer and/or inner surfaces of molded article (10) by powder coating [0100]. The powder coating can be carried out with a coating gun configured to eject powder paint onto the surface to be coated (i.e., the inners surface) [0103]. Application of the powder is followed by a baking step in which the applied powder paint is melted and hardened to form the plastic layer [0104]. Baking is carried out in an oven capable of heating to the temperature necessary to melt and harden the plastic layer without deleteriously impacting the smoothness of the film or scorching the pulp-made molded article (10) [0104].
EP 083 additionally teaches that the powder can be, e.g., a polyester resin [0102].
EP 083 does not explicitly state that the powder coating is exposed to infrared radiation or that the infrared radiation penetrates a wall of the molded article (10). Note: heating, as a form of energy transfer, can occur by infrared radiation, but not necessarily so. Conduction and convection are also means of heat transfer.
US 757 teaches melting and hardening a polyester powder coating composition on a paper/wood-derived product by application of near-infrared radiation (NIR), having a wavelength of 750-1200 nm (0.75-1.2 µm) [abstract, 2:15-25, 4:67-5:11, 5:30-35, 5:42-45, and 5:54-57]. Such NIR curing allows powder coatings to be melted and cured in a single process step with short curing times without substantially heating the underlying substrate [1:44-55 and 5:46-60].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have substituted, for the oven baking of EP 083, NIR curing as suggested by US 757 B1. One of ordinary skill in the art would have been motivated to do so by the desire and expectation of reducing processing time and minimizing substrate damage by successfully curing the polyester resin of EP 083 in a shorter period of time without substantially heating the pulp-made molded article (10). See MPEP § 2143(I)(B).
52. A patent is part of the literature of the art, relevant for all it contains, and may be relied upon for all that it would have reasonably suggested to one of ordinary skill in the art, including non-preferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. See MPEP § 2123. Here, both EP 083 and US 757 teach polyester resins broadly [EP 083 at 102, US 757 at 2:17]. Consequently, it is the Primary Examiner’s position that there is sufficient evidence in the prior art to support a prima facie case that polyester resins can be cured with NIR. In the alternative, in the event that not all polyester resins can be cured by NIR, it would have been further obvious to one of ordinary skill in the art to select, as the powder coating composition, a polyester resin or polyester resin including adjuvants such as cross-linking agents, that can be cured by NIR, in order to reduce processing time and minimize substrate damage, such as scorching of the pulp-made molded article (10).
While neither of these prior art documents explicitly teach that the NIR radiation penetrates the wall of the molded article (10), it is the Primary Examiner’s position that this is inherent because the wavelength of the radiation taught by US 757, 0.75-1.2 µm, overlaps that disclosed by Applicant, 1-10 µm, which facilitates penetration of the wall of the preform. See spec. at [0029]-[0033]. See also MPEP § 2144.05 (overlapping ranges are prima facie obvious). Moreover, to the extent that the composition of the pulp-made molded article (10) affects IR penetration (see spec. at [0043]-[0044]) the cited prior art teaches all of the claimed compositional limitations as claimed by Applicant. If there is a difference between the properties of the preform of the invention and the pulp-made molded article, this difference must arise from some unclaimed factor. See MPEP § 2112.01 (“Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”).
Claim 2
EP 083 teaches that provided molded article (10) has opening portion (11) [0029]-[0031] & [0055].
Claims 3 & 4
EP 083 teaches an “embodiment for forming a plastic layer on the outer and/or inner surfaces of [the] molded article [(10)], which comprises powder coating the outer and/or inner surfaces of the molded article to form a plastic layer(s)” [0100]. As noted above, a patent is part of the literature of the art, relevant for all it contains, and may be relied upon for all that it would have reasonably suggested to one of ordinary skill in the art, including non-preferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. See MPEP § 2123. Consequently, EP 083’s broad teaching of “powder coating the outer and/or inner surfaces of the molded article” is inclusive of coating any-or-all inner and/or outer surfaces, including the finished opening (11) and adjacent neck area, but not the entire external surface.
Claim 5
As noted above, both EP 083 and US 757 teach polyesters [EP 083 at 0102, US 757 at 2:16], which is sufficient to meet the limitations of this claim given the indefiniteness of this claim.
Claim 6
The combined teaching of EP 083 in view of US 757 is detailed above.
EP 083 does not specify how the powder coating is applied.
US 757 teaches that the polyester powder can be applied using a tribo spray gun, which is a process in which an electrostatic charge is applied to the powder.
It would have been obvious to one of ordinary skill in the art, in the process of combined EP 083 in view of US 757, to apply the polyester powder in any known manner, including tribo spraying, taught by US 757 itself.
Claims 7 & 9
The combined teaching of EP 083 in view of US 757 is detailed above.
US 757 additionally teaches:
- passing the coated article before one or more stationary NIR radiation sources [5:15-20]; and
- using the NIR in combination with conventional heat sources such as infra-red radiation or convection ovens (i.e., a furnace), optionally together with additional reflector systems and/or lens systems in order to intensify the radiation [5:21-25].
Consequently, it would have been obvious to one of ordinary skill in the art to cure the polyester powder coating according to known methods, including those taught by US 757 itself.
Claims 10 & 11
The combined teaching of EP 083 in view of US 757 is detailed above.
Neither reference teaches the limitations of these claims.
Nevertheless, substrate rotation and subsequent air jet/stream cooling are well known expedients in the art in order to prove, in the first instance, uniform application of IR radiation to the substrate, and, in the second instance, prevention of scorching of the substrate, as well as quick cooling for subsequent processing.
Consequently, it would have been obvious to one of ordinary skill in the art to utilize these known expedients, motivated by the desire and expectation of efficiently processing the coated substrate.
Claims 14 & 15
The combined teaching of EP 083 in view of US 757 is detailed above.
Neither reference teaches the limitations of these claims.
Nevertheless, leak testing and applying filling/applying a closure are well known expedients in the art in order to provide a saleable product.
Consequently, it would have been obvious to one of ordinary skill in the art to utilize these known expedients, motivated by the desire and expectation of providing a finished, product-containing container.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 083 in view of US 757, as applied to claim 1 above, and further in view of McCurdy et al., A Comparison of the Sealing, Forming and Moisture Vapour Transmission Properties of Polylactic Acid (PLA), Polyethylene (PE) and Polyethylene Terephthalate (PET) Coated Boards for Packaging Applications, Journal of Packaging Technology and Research (2022) 6:91-100, published Mar. 11, 2022.
The combined teaching of EP 083 in view of US 757 is detailed above, including that both references teach polyesters as the meltable powder polymer applied as a powder coating.
McCurdy teaches that polyesters including polylactic acid (PLA) and polyethylene terephthalate (PET) are known in the packaging art for forming sealing/barrier coatings on paper-based substrates [§ Introduction].
Because both EP 083 and US 757 teach polyesters broadly, it would have been obvious to one of ordinary skill in the art to select, as the polyester powder, any suitable polyester. Based on McCurdy, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have selected, as the polyester, a polyester known in the paper-based substrate packaging art for forming a sealing/barrier coating, such as PLA and/or PET. One of ordinary skill in the art would have been motivated by the desire and expectation of successfully forming a sealing/barrier layer on the pulp-based molded article (10).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2005/0095353 A1
This reference teaches curing powder coatings with near-infrared (NIR) radiation. The coating is first applied to a substrate, such as metal, glass, wood, plastic, paper, or foil. Then the coated object is exposed to NIR radiation in the 760 to 1500 nm range so the powder melts and hardens. An infrared optical system measures the thermal radiation coming off the coated substrate to determine whether parts of the coating are heating and curing properly and/or completely. If needed, the coating can be cured again, including by additional NIR radiators in an after-heating zone. The method results in more uniform curing and better coating quality, including improved flow, gloss, and hardness. The method can be used on rotating substrates and high-speed coating lines such as coil coating.
US 8,245,848 B2
This reference teaches a container for storing liquids, such as water, that is made to fully break down in ordinary outdoor conditions. The container has a strong plant-fiber body, a biodegradable inner coating that keeps the liquid from soaking into the body, and a biodegradable mouth/cap assembly. The goal is for the container to last long enough on a shelf for normal commercial use, but then decompose after disposal without leaving toxic residue. The container can biodegrade in a backyard, garden, lawn, compost bin, landfill, or similar natural environment. The body is made from plant-based fibers or starch-based materials instead of petroleum plastic. The inner barrier layer can be a thin film, sprayed resin, or laminate that resists fluid during shelf life. The outer surface may also include a protective biodegradable layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
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, Curtis Mayes can be reached at (571) 272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
29 September 2026
