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 .
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. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2026 has been entered.
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.
Claim 43 is 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.
Claim 43 recites the limitation “wherein the active oxygen scavenger material consists essentially of PTMEG” in lines 1-2. The disclosure at the time of filing only provides support for the broader embodiment of the second material comprises active oxygen scavengers such as for example butadiene, PTMEG-PET copolymer, and nylon (Specification, Paragraph [0056]). The disclosure at the time of filing only mentions one embodiment of the active oxygen scavenger comprising PTMEG-PET copolymer. However, the disclosure at the time of filing never provides adequate written description support for any embodiment wherein the active oxygen scavenger material consists essentially of PTMEG. Therefore, this limitation constitutes new matter.
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 42-43 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]). Koerner et al. also discloses a neck finish region (neck 12) extending from the open top to a location above the upper end of the intermediate layer (second layer 42) (‘486, FIG. 3A) (‘486, Paragraph [0041]) wherein the neck finish region is free of the active oxygen scavenger material (neck finish does not have the additive present wherein the additive that is not present is one or more active oxygen scavengers) (‘486, Paragraphs [0023] and [0043]).
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]). 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]). Koerner et al. also discloses a neck finish region (neck 12) extending from the open top to a location above the upper end of the intermediate layer (second layer 42) (‘486, FIG. 3A) (‘486, Paragraph [0041]) wherein the neck finish region is free of the active oxygen scavenger material (neck finish does not have the additive present wherein the additive that is not present is one or more active oxygen scavengers) (‘486, Paragraphs [0023] and [0043]).
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]). 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]). Koerner et al. also discloses a neck finish region (neck 12) extending from the open top to a location above the upper end of the intermediate layer (second layer 42) (‘486, FIG. 3A) (‘486, Paragraph [0041]) wherein the neck finish region is free of the active oxygen scavenger material (neck finish does not have the additive present wherein the additive that is not present is one or more active oxygen scavengers) (‘486, Paragraphs [0023] and [0043]).
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.
Regarding Claim 43, Koerner et al. discloses the intermediate layer (second layer 42) consisting of PET and one or more additives (‘486, Paragraph [0044]) wherein the one or more additives is one or more active oxygen scavengers (‘486, Paragraphs [0043] and [0050]). The disclosure of the intermediate layer consisting of one or more additives of one or more active oxygen scavengers encompasses an embodiment wherein the intermediate layer is made of only one oxygen scavenger additive. Akkapeddi et al. discloses the active oxygen scavenger to be PTMEG (‘668, Paragraph [0051]).
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 42-43 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
Examiner notes that the previous Double Patenting rejections have been updated to include newly presented Claim 43 and have otherwise been maintained herein.
Examiner notes that a new new matter rejection under 35 USC 112(a) has been made herein.
Applicant's arguments filed July 21, 2026 have been fully considered but they are not persuasive.
Applicant argues on Page 9 of the Remarks that independent Claims 22, 29, and 36 have each been amended to include that the container includes a neck finish region extending from the open top to a location above the upper end of the intermediate layer wherein the neck finish region is free of the active oxygen scavenger material which allows the neck finish region where threads are formed and mechanical strength is therefore required to be made from pure PET. Applicant asserts that Koerner is silent regarding the use of PTMEG as the scavenger and does not disclose or make obvious a container having a defined neck finish region extending from the open top to a location above the upper end of the intermediate layer wherein the neck finish region is free of the active oxygen scavenger material.
Examiner first notes that none of the claims require the neck finish region to be made from pure PET. Claims 22, 29, and 36 only require the neck finish region to be free of the active oxygen scavenger material. However, the claims do not recite the material of the neck finish region to be PET or that the neck finish region is made from pure PET. Additionally, Koerner et al. discloses a neck finish region (neck 12) extending from the open top to a location above the upper end of the intermediate layer (second layer 42) (‘486, FIG. 3A) (‘486, Paragraph [0041]) wherein the neck finish region is free of the active oxygen scavenger material (neck finish does not have the additive present wherein the additive that is not present is one or more active oxygen scavengers) (‘486, Paragraphs [0023] and [0043]). With respect to applicant’s argument that Koerner is silent regarding the use of PTMEG as the scavenger, Examiner notes that Claims 22, 29, and 36 are rejected over the combination of the primary reference of Koerner modified with the secondary reference of Akkapeddi et al. The secondary reference of Akkapeddi et al. is being relied upon to render obvious the use of PTMEG as an active oxygen scavenger in a preform used to make a multilayered food or beverage container such as that disclosed by Koerner et al. 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
York et al. US 2013/0056466 discloses a container comprising an open top, a closed bottom, a wall portion between the open top and the closed bottom wherein the wall portion comprises an outer surface and an inner surface, an outer layer, and inner layer, and an intermediate layer between the outer and inner layers (skin material 222) wherein the intermediate layer (core material 223) comprises a barrier material (‘466, Paragraph [0113]) wherein the intermediate layer (core material 223) comprises an upper end that is below the open top and a neck finish region (flange 135) extending from the open top to a location above the upper end of the intermediate layer (core material 223) wherein the neck finish region (flange 135) is free of the barrier material (‘466, FIG. 16A) (‘466, Paragraph [0114]).
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/ERICSON M LACHICA/Examiner, Art Unit 1792
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