DETAILED ACTION
EXAMINER’S REMARKS
Examiner notes that applicant’s response filed on April 15, 2026 does not amend any of the previous claim amendments filed on January 12, 2026 that were previously rejected in the Final Rejection mailed on January 16, 2026. Applicant’s response filed on April 15, 2026 merely provides arguments to the previous obviousness rejections under 35 USC 103(a) to Koerner et al. in view of Akkapeddi et al. enumerated in the Final Rejection mailed on January 16, 2026. The previous obviousness rejections under 35 USC 103(a) to Koerner et al. in view of Akkapeddi et al. enumerated in the Final Rejection mailed on January 16, 2026 have been maintained and repeated herein verbatim. The previous Double Patenting rejections have also been maintained and repeated herein.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Applicant's submission filed on April 15, 2026 has been entered.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 22, 29, 36, and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Koerner et al. US 2017/0259486 in view of Akkapeddi et al. US 2011/0262668.
Regarding Claim 22, Koerner et al. discloses a container (container 10) comprising an open top, a closed bottom, and a wall portion between the open top and the closed bottom (‘486, FIG. 3A) (‘486, Paragraph [0036]). The wall portion comprises an outer surface and an inner surface, an outer layer (first layer 40) comprising a polyethylene terephthalate (PET) material, an inner layer (third layer 44) comprising the PET material (‘486, Paragraphs [0005], [0021], and [0044]-[0045]), and an intermediate layer (second layer 42) between the outer and inner layers, the intermediate layer (second layer 42 comprising an additive of active oxygen scavengers) (‘486, Paragraph [0005]) comprising a mixture of the PET material and an active oxygen scavenger material (‘486, Paragraphs [0005], [0041], and [0043]-[0044]). wherein the intermediate layer (second layer 42) comprises an upper end that is below the open top (‘486, FIG. 3A). The active oxygen scavenger material additive is between about 0.5 wt% to about 5.0 wt% of the container (‘486, Paragraphs [0005] and [0030]), which overlaps the claimed active oxygen scavenger material additive concentration of less than about 1.0 wt% of the container. Where the claimed oxygen scavenger material concentration of the container overlaps oxygen scavenger material concentrations disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Koerner et al. discloses a positive correlation between the oxygen scavenger material concentration with respect to the oxygen ingress wherein including more of the oxygen scavenger material inhibits oxygen ingress better than containers that include less of the scavenger (‘486, Paragraph [0031]). Differences in the concentration of the oxygen scavenger material in the container will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such oxygen scavenger material concentration in the container is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of oxygen scavenger material blended with the polyethylene terephthalate in the intermediate barrier layer of the food and beverage container based upon the desired degree of inhibition of oxygen ingress. Koerner et al. also discloses the container (container 10) is at least partially filled with a food item (‘486, Paragraph [0041]). The active oxygen scavenger forms a physical barrier resisting ingress of oxygen into the food item (‘486, FIG. 3A) (‘486, Paragraphs [0021], [0031], [0048], [0056]).
Further regarding Claim 22, Koerner et al. discloses a multilayered polyethylene terephthalate (PET) food or beverage container (‘486, Paragraph [0019]) comprising one or more active oxygen scavengers (‘486, Paragraphs [0043] and [0073]). However, Koerner et al. is silent regarding the active oxygen scavenger material comprising polytetramethylene ether glycol (PTMEG).
Akkapeddi et al. discloses a multilayer plastic container, preforms, and articles of manufacture providing a barrier to oxygen and other gases permeating through the layers of the container/preform wall (‘668, Paragraph [0001]) wherein an oxygen scavenger is incorporated into a multilayer plastic structure to remove oxygen initially present and/or generated from inside of the package and to retard the passage of exterior oxygen into the package in an active barrier layer (‘668, Paragraph [0005]) wherein polyamides or blends thereof are regarded as excellent passive barriers having the capability of becoming an active barrier layer, i.e. an oxygen scavenging layer upon mixture with a transition metal (‘668, Paragraph [0029]) wherein a polyester TPU comprising polytetramethylene ether glycol (PTMEG) is used as an adhesion promoting agent (‘668, Paragraph [0051]). The multilayered container is a food or beverage container (‘668, Paragraph [0063]) wherein the adhesion promoting additives are incorporated into the multilayered PET containers (‘668, Paragraph [0083]).
Both Koerner et al. and Akkapeddi et al. are directed towards the same field of endeavor of multilayered polyethylene terephthalate (PET) food or beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the multilayered PET food or beverage container of Koerner et al. and incorporate into the active oxygen scavenger material polytetramethylene ether glycol (PTMEG) as taught by Akkapeddi et al. since the selection of a known material (PTMEG) based on its suitability for its intended use (as a component of a multilayered PET food or beverage container) supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07).
Regarding Claim 29, Koerner et al. discloses a container (container 10) comprising an open top, a closed bottom, and a wall portion between the open top and the closed bottom (‘486, FIG. 3A) (‘486, Paragraph [0036]). The wall portion comprises an outer surface and an inner surface, an outer layer (first layer 40) comprising a polyethylene terephthalate (PET) material, an inner layer (third layer 44) comprising the PET material (‘486, Paragraphs [0005], [0021], and [0044]-[0045]), and an intermediate layer (second layer 42) between the outer and inner layers, the intermediate layer (second layer 42 comprising an additive of active oxygen scavengers) (‘486, Paragraph [0005]) comprising a mixture of the PET material and an active oxygen scavenger material (‘486, Paragraphs [0005], [0041], and [0043]-[0044]). wherein the intermediate layer (second layer 42) comprises an upper end that is below the open top (‘486, FIG. 3A). The active oxygen scavenger material additive is between about 0.5 wt% to about 5.0 wt% of the container (‘486, Paragraphs [0005] and [0030]), which overlaps the claimed active oxygen scavenger material additive concentration of less than about 1.0 wt% of the container. Where the claimed oxygen scavenger material concentration of the container overlaps oxygen scavenger material concentrations disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Koerner et al. discloses a positive correlation between the oxygen scavenger material concentration with respect to the oxygen ingress wherein including more of the oxygen scavenger material inhibits oxygen ingress better than containers that include less of the scavenger (‘486, Paragraph [0031]). Differences in the concentration of the oxygen scavenger material in the container will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such oxygen scavenger material concentration in the container is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of oxygen scavenger material blended with the polyethylene terephthalate in the intermediate barrier layer of the food and beverage container based upon the desired degree of inhibition of oxygen ingress. Koerner et al. also discloses the container (container 10) is at least partially filled with a food item (‘486, Paragraph [0041]). The active oxygen scavenger reacts with oxygen from the food item (‘486, Paragraph [0030]).
Further regarding Claim 29, Koerner et al. discloses a multilayered polyethylene terephthalate (PET) food or beverage container (‘486, Paragraph [0019]) comprising one or more active oxygen scavengers (‘486, Paragraphs [0043] and [0073]). However, Koerner et al. is silent regarding the active oxygen scavenger material comprising polytetramethylene ether glycol (PTMEG).
Akkapeddi et al. discloses a multilayer plastic container, preforms, and articles of manufacture providing a barrier to oxygen and other gases permeating through the layers of the container/preform wall (‘668, Paragraph [0001]) wherein an oxygen scavenger is incorporated into a multilayer plastic structure to remove oxygen initially present and/or generated from inside of the package and to retard the passage of exterior oxygen into the package in an active barrier layer (‘668, Paragraph [0005]) wherein polyamides or blends thereof are regarded as excellent passive barriers having the capability of becoming an active barrier layer, i.e. an oxygen scavenging layer upon mixture with a transition metal (‘668, Paragraph [0029]) wherein a polyester TPU comprising polytetramethylene ether glycol (PTMEG) is used as an adhesion promoting agent (‘668, Paragraph [0051]). The multilayered container is a food or beverage container (‘668, Paragraph [0063]) wherein the adhesion promoting additives are incorporated into the multilayered PET containers (‘668, Paragraph [0083]).
Both Koerner et al. and Akkapeddi et al. are directed towards the same field of endeavor of multilayered polyethylene terephthalate (PET) food or beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the multilayered PET food or beverage container of Koerner et al. and incorporate into the active oxygen scavenger material polytetramethylene ether glycol (PTMEG) as taught by Akkapeddi et al. since the selection of a known material (PTMEG) based on its suitability for its intended use (as a component of a multilayered PET food or beverage container) supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07).
Regarding Claim 36, Koerner et al. discloses a container (container 10) comprising an open top, a closed bottom, and a wall portion between the open top and the closed bottom (‘486, FIG. 3A) (‘486, Paragraph [0036]). The wall portion comprises an outer surface and an inner surface, an outer layer (first layer 40) comprising a polyethylene terephthalate (PET) material, an inner layer (third layer 44) comprising the PET material (‘486, Paragraphs [0005], [0021], and [0044]-[0045]), and an intermediate layer (second layer 42) between the outer and inner layers, the intermediate layer (second layer 42 comprising an additive of active oxygen scavengers) (‘486, Paragraph [0005]) comprising a mixture of the PET material and an active oxygen scavenger material (‘486, Paragraphs [0005], [0041], and [0043]-[0044]). wherein the intermediate layer (second layer 42) comprises an upper end that is below the open top (‘486, FIG. 3A). The active oxygen scavenger material additive is between about 0.5 wt% to about 5.0 wt% of the container (‘486, Paragraphs [0005] and [0030]), which overlaps the claimed active oxygen scavenger material additive concentration of less than about 1.0 wt% of the container. Where the claimed oxygen scavenger material concentration of the container overlaps oxygen scavenger material concentrations disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Koerner et al. discloses a positive correlation between the oxygen scavenger material concentration with respect to the oxygen ingress wherein including more of the oxygen scavenger material inhibits oxygen ingress better than containers that include less of the scavenger (‘486, Paragraph [0031]). Differences in the concentration of the oxygen scavenger material in the container will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such oxygen scavenger material concentration in the container is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of oxygen scavenger material blended with the polyethylene terephthalate in the intermediate barrier layer of the food and beverage container based upon the desired degree of inhibition of oxygen ingress. Koerner et al. also discloses the container (container 10) is at least partially filled with a food item (‘486, Paragraph [0041]). The active oxygen scavenger forms a physical barrier resisting ingress of oxygen into the food item (‘486, FIG. 3A) (‘486, Paragraphs [0021], [0031], [0048], [0056]). The active oxygen scavenger reacts with oxygen from the food item (‘486, Paragraph [0030]).
Further regarding Claim 36, Koerner et al. discloses a multilayered polyethylene terephthalate (PET) food or beverage container (‘486, Paragraph [0019]) comprising one or more active oxygen scavengers (‘486, Paragraphs [0043] and [0073]). However, Koerner et al. is silent regarding the active oxygen scavenger material comprising polytetramethylene ether glycol (PTMEG).
Akkapeddi et al. discloses a multilayer plastic container, preforms, and articles of manufacture providing a barrier to oxygen and other gases permeating through the layers of the container/preform wall (‘668, Paragraph [0001]) wherein an oxygen scavenger is incorporated into a multilayer plastic structure to remove oxygen initially present and/or generated from inside of the package and to retard the passage of exterior oxygen into the package in an active barrier layer (‘668, Paragraph [0005]) wherein polyamides or blends thereof are regarded as excellent passive barriers having the capability of becoming an active barrier layer, i.e. an oxygen scavenging layer upon mixture with a transition metal (‘668, Paragraph [0029]) wherein a polyester TPU comprising polytetramethylene ether glycol (PTMEG) is used as an adhesion promoting agent (‘668, Paragraph [0051]). The multilayered container is a food or beverage container (‘668, Paragraph [0063]) wherein the adhesion promoting additives are incorporated into the multilayered PET containers (‘668, Paragraph [0083]).
Both Koerner et al. and Akkapeddi et al. are directed towards the same field of endeavor of multilayered polyethylene terephthalate (PET) food or beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the multilayered PET food or beverage container of Koerner et al. and incorporate into the active oxygen scavenger material polytetramethylene ether glycol (PTMEG) as taught by Akkapeddi et al. since the selection of a known material (PTMEG) based on its suitability for its intended use (as a component of a multilayered PET food or beverage container) supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07).
Regarding Claim 42, Koerner et al. discloses the active oxygen scavenger material additive is between about 0.5 wt% to about 5.0 wt% of the container (‘486, Paragraphs [0005] and [0030]), which overlaps the claimed active oxygen scavenger material additive concentration of 0.05 wt% - 0.5 wt% of the container. Where the claimed oxygen scavenger material concentration of the container overlaps oxygen scavenger material concentrations disclosed by the prior art, a prima facie case of obviousness exists in view of In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP § 2144.05.I.). Furthermore, Koerner et al. discloses a positive correlation between the oxygen scavenger material concentration with respect to the oxygen ingress wherein including more of the oxygen scavenger material inhibits oxygen ingress better than containers that include less of the scavenger (‘486, Paragraph [0031]). Differences in the concentration of the oxygen scavenger material in the container will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such oxygen scavenger material concentration in the container is critical. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation in view of In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05.II.A.). One of ordinary skill in the art would adjust the concentration of oxygen scavenger material blended with the polyethylene terephthalate in the intermediate barrier layer of the food and beverage container based upon the desired degree of inhibition of oxygen ingress.
Claims 23, 30, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Koerner et al. US 2017/0259486 in view of Akkapeddi et al. US 2011/0262668 as applied to claim 22, 29, or 36 above in further view of Frerichs et al. US 2019/0152105.
Regarding Claims 23, 30, and 37, Koerner et al. modified with Akkapeddi et al. is silent regarding the active oxygen scavenger being biased toward a center line of the container.
Frerichs et al. discloses an injection molded container having a multilayer wall structure used for storing food products wherein the injection molded container is made of polyethylene terephthalate (PET) (‘105, Paragraph [0001]) wherein the multilayer container comprises an inner layer, an outer layer, and a barrier layer wherein the barrier layer is biased toward the inside surface or outside surface such that the inner layer and the outer layer have different thicknesses (‘105, Paragraph [0003]) wherein when the barrier layer is biased toward the inner surface and/or upper surface, i.e. the outer layer is thicker than the inner layer, the relatively greater thickness of the outer layer allows for lettering or other symbols to be etched onto the outer surface and/or lower surface without penetrating into or through the barrier layer to ensure that the barrier layer remains intact to help prevent the permeation of oxygen or other gasses into the container through the barrier layer (‘105, Paragraph [0077]) wherein the barrier layer comprises an active barrier component of an oxygen scavenging material (‘105, Paragraph [0067]).
Both modified Koerner et al. and Frerichs et al. are directed towards the same field of endeavor of multilayered food or beverage containers comprising an inner layer and an outer layer made of polyethylene terephthalate as well as an intermediate barrier layer comprising an active oxygen scavenging material. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the multilayered food or beverage container of modified Koerner et al. and bias the oxygen scavenger barrier toward a center line of the container as taught by Frerichs et al. in order to allow for lettering or other symbols to be etched onto the outer surface and/or lower surface of the container without penetrating into or through the barrier layer to ensure that the barrier layer remains intact to help prevent the permeation of oxygen or other gasses into the container through the barrier layer (‘105, Paragraph [0077]). Furthermore, the configuration of the oxygen scavenger within the container is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed oxygen scavenger was significant in view of In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (MPEP § 2144.04.IV.B.). Frerichs et al. teaches that there was known utility in the multilayered food and beverage container art to construct a polyethylene based container with a barrier layer containing an oxygen scavenger to be biased towards a center line of the container.
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 22-23, 29-30, 36-37,and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-29 of U.S. Patent No. 12,397,491. Although the claims at issue are not identical, they are not patentably distinct from each other because independent Claims 1 and 18-20 of the ‘491 patent recite a more narrow scope of independent Claims 22, 29, and 36 of the instant application wherein independent Claims 1 and 18-20 of the ‘491 patent reads on independent Claims 22, 29, and 36 of the instant application.
Response to Arguments
Applicant's arguments filed April 15, 2026 with respect to the obviousness rejections of Claims 22, 29, 36, and 42 under 35 USC 103(a) to Kerner in view of Akkapeddi et al. as well as the obviousness rejections of Claims 23, 30, and 37 under 35 USC 103(a) to Koerner in view of Akkapeddi and Freirchs et al. have been fully considered but they are not persuasive.
Applicant comments on Pages 3-4 of the Remarks that Claims 22, 29, and 36 recite that the active oxygen scavenger material comprises polytetramethylene ether glycol (PTMEG) and that this feature is allegedly not disclosed nor made obvious by the cited art. Applicant underlines the citation of the Office Action to Paragraph [0051] of Akkapeddi that teaches a polyester TPU comprising polytetramethylene ether glycol (PTMEG) is used as an adhesion promoting agent. Applicant asserts that the proposal to modify the oxygen scavenging composition of Koerner by replacing the oxygen scavenger component of Koerner with PTMEG as taught by Akkapeddi to arrive at the claimed containers should be withdrawn for three different reasons as enumerated in Pages 4-7 of the Remarks.
Applicant’s first argument on Pages 4-5 of the Remarks asserts that there is no suggestion or motivation to combine Koerner and Akkapeddi in the manner suggested by Examiner. Applicant contends that Koerner is directed to oxygen scavenging compositions suitable for packaging applications, employing specific oxygen scavenger additives, e.g. polyether based or other materials designed explicitly for oxygen scavenging functionality often involving oxidation catalysts and/or specific polymer backbones to achieve effect oxygen uptake without an induction period or with desired barrier properties. Applicant continues that Paragraph [0051] of Akkapeddi teaches PTMEG in the context of polyester based compositions where PTMEG functions as an adhesion promoting agent and that Akkapeddi allegedly does not teach or suggest PTMEG as an oxygen scavenger or as a material capable of providing oxygen performance equivalent to Koerner’s scavenger component and that Akkapeddi teaches using PTMEG only as an adhesion promoting agent and ignore the basic oxygen scavenging function of Koerner’s composition.
Examiner argues that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). The secondary reference of Akkapeddi et al. teaches using PTMEG as an adhesion promoting agent (‘668, Paragraph [0051]) and that there was known utility in incorporating adhesion promoting additives into multilayered PET containers (‘668, Paragraph [0083]) wherein polyamides or blends thereof are excellent passive barriers capable of becoming an active barrier layer, i.e. an oxygen scavenging layer upon mixture with a transition metal (‘668, Paragraph [0029]). Furthermore, Claims 22 and 36 merely require the active oxygen scavenger forming a physical barrier resisting ingress of oxygen into the food item and Claim 29 merely requires the active oxygen scavenger reacting with oxygen from the food item. The claims do not specify the degree to which oxygen ingress is resisted or the degree to which the active oxygen scavenger reacts with oxygen from the food item. Products of identical chemical composition can not have mutually exclusive properties in view of In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP § 2112.01.II.). Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established in view of In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP § 2112.01.I.). Since the combination of Koerner et al. modified with Akkapeddi et al. teaches the claimed PTMEG being added as an oxygen scavenging layer mixed with a transition metal (‘668, Paragraph [0029]) wherein a polyester TPU comprising polytetramethylene ether glycol (PTMEG) is used as an adhesion promoting agent (‘668, Paragraph [0051]), one of ordinary skill in the art would expect the combination of Koerner et al. modified with Akkapeddi et al. to behave in the same manner as claimed, i.e. have an oxygen scavenging function. It is noted that the primary reference of Koerner et al. already teaches an active oxygen scavenger material (‘486, Paragraphs [0005], [0041], and [0043]-[0044]) which active oxygen scavenger forms a physical barrier resisting ingress of oxygen into the food item (‘486, Paragraphs [0021], [0031], [0048], and [0056]). 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). Therefore, these arguments are not found persuasive.
Applicant’s second argument on Pages 5-6 of the Remarks asserts that the combination of Koerner and Akkapeddi proposed by Examiner allegedly relies on impermissible hindsight and that the combination of Koerner and Akkapeddi may only be arrived at by reading the present specification and reconstructing the claimed invention using hindsight construction. Applicant contends that the only reason to select PTMEG from Akkapeddi for use as an oxygen scavenger replacement in Koerner is the knowledge of applicant’s invention which discloses PTMEG or related polyether glycols in a specific context for oxygen scavenging. Applicant continues that Akkapeddi and Koerner do not provide any teaching, suggestion, or motivation to use PTMEG specifically as an oxygen scavenger or to replace Koerner’s scavenger therewith. Applicant reiterates that Akkapeddi’s use of PTMEG is limited to adhesion promotion in polyester compositions, e.g. improving bonding between layers and components with no disclosure of oxygen scavenging properties whereas Koerner teaches oxygen scavengers with particular chemical structures and functionalities optimized for gas barrier and scavenging performance but does not contemplate PTMEG as an oxygen scavenger. Applicant submits that one of ordinary skill in the art would not look to the PTMEG discussed in Akkapeddi to find a suitable oxygen scavenger since Akkapeddi teaches using PTMEG only as an adhesion promoting agent and that the combination proposed by Examiner constitutes hindsight reasoning.
Examiner argues Akkapeddi discloses polyester TPUs such as PTMEG being used as an adhesion promoting agent (‘668, Paragraph [0051]) in a barrier composition having active scavenging containing the adhesion promoting agent (‘668, Paragraph [0060]) which active barrier composition is a component of a PET based multilayered container (‘668, Paragraph [0072]). Akkapeddi teaches using PTMEG as an adhesion promoting agent (‘668, Paragraph [0051]) in a barrier composition having active scavenging properties containing the adhesion promoting agent (‘668, Paragraph [0072]). The primary reference of Koerner discloses the container having an active scavenger (‘486, Paragraph [0071]) in a PET based multilayered container (‘486, Paragraph [0022]). Both Koerner et al. and Akkapeddi et al. are directed towards the same field of endeavor of multilayered polyethylene terephthalate (PET) food or beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the multilayered PET food or beverage container of Koerner et al. and incorporate into the active oxygen scavenger material polytetramethylene ether glycol (PTMEG) as taught by Akkapeddi et al. since the selection of a known material (PTMEG) based on its suitability for its intended use (as a component of a multilayered PET food or beverage container) supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Akkapeddi et al. teaches that there was known utility in the multilayered PET beverage container art to utilize PTMEG as a component of an active barrier layer. Furthermore, the claims recite the transitional phrase “comprising,” which is inclusive or open ended and does not exclude additional, unrecited elements or method steps in view of Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (MPEP § 2111.03.I.). Akkapeddi et al. discloses using PTMEG as an adhesion promoting agent which is a component of an active barrier composition of a PET based multilayered container. The claims do not preclude the presence of other components of the active barrier composition that provides the majority of the active barrier properties. Therefore, this argument is not found persuasive.
Applicant argues on Pages 6-7 of the Remarks that Koerner and Akkapeddi allegedly teach away from the improper combination of Koerner and Akkapeddi proposed by Examiner. Applicant contends that Akkapeddi emphasizes PTMEG’s role in enhancing adhesion and mechanical properties in non-scavenging polyester contexts without any indication that it could serve as a functional oxygen scavenger and that replacing a purposeful oxygen scavenger as in Koerner with an adhesion promoter would be contrary to the teachings of both references and would not yield predictable results. Applicant alleges that the combination would require substantial additional experimentation and redesign to restore oxygen capability which is not suggested by Koerner or Akkapeddi.
Examiner again notes that Akkapeddi et al. discloses using a polyether TPU such as PTMEG as an adhesion promoting agent (‘668, Paragraph [0051]) wherein the adhesion promoting agent is a material used in making an active scavenging barrier resulting in a better scavenging performance (‘668, Paragraph [0060]). The primary reference of Koerner discloses the container having an active scavenger (‘486, Paragraph [0071]) in a PET based multilayered container (‘486, Paragraph [0022]). Both Koerner et al. and Akkapeddi et al. are directed towards the same field of endeavor of multilayered polyethylene terephthalate (PET) food or beverage containers. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the multilayered PET food or beverage container of Koerner et al. and incorporate into the active oxygen scavenger material polytetramethylene ether glycol (PTMEG) as taught by Akkapeddi et al. since the selection of a known material (PTMEG) based on its suitability for its intended use (as a component of a multilayered PET food or beverage container) supports a prima facie obviousness determination in view of Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP § 2144.07). Akkapeddi et al. teaches that there was known utility in the multilayered PET beverage container art to utilize PTMEG as a component of an active barrier layer. Therefore, this argument is not found persuasive.
Examiner notes that applicant comment’s on Page 7 of the Remarks that the Double Patenting rejection is requested to be held in abeyance until the claims are otherwise allowable. Examiner notes that the Double Patenting rejections have been maintained herein.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 ERICSON M LACHICA whose telephone number is (571)270-0278. The examiner can normally be reached M-F, 8:30am-5pm, EST.
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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