32692
`Custo mer Number
`
`Patent
`Case No.: 53022USO36
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Named Inventor:
`
`JOSEPH, STEPHEN CHRISTOPHER
`
`Application No.:
`
`l3i’181085
`
`Confirmation No.:
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`3680
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`Filed:
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`Title:
`
`ll-JUL-Zflll
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`APPARATUS FOR SPRAYING LIQUIDS, AND DISPOSABLE
`CONTAINERS AND LINERS SUITABLE FOR USE
`
`THEREWITH
`
`AMENDMENT AND RESPONSE UNDER 37 CFR 1.] ll
`
`Mail Stop Amendment
`,
`‘
`f
`commSSloner 01' Patents
`P.O. BOX 1450
`-
`Alexandrla, VA 22313-1450
`
`Dear Sir:
`
`CERTIFICATE OF MAILING 0R TRANSMISSION I37 CFR § 13(3)]
`I hereby certify that this correspondence is being:
`
`E transmitted to United States Patent and 'l'rademark Office on the date shown below
`via the Olliee electronic filing system.
`l
`D de msited with the United States Postal Sen-ice on the date shown below with
`sufficient postage as first class mail in an envelope addressed to: Commissioner for
`P't
`L‘. P.
`. B
`I450. Al
`' d " . VA 223l3—I45t].
`‘1 e" "
`0 0x
`6“" ”‘1
`transmitted by ['acsimjle on the date shown below to the United States Patent and
`'l‘rademark Office at 571—273—8300.
`
`December 21, 2012
`
`Date
`
`fPaula .1. Dick!
`Signed by: Paula J. Bick
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`This is in response to the Office Action dated August 3 l , 20l2 in the above-identified
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`application.
`
`Fees
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`E Any required lee will be made at the time of submission via EFS—ch. In the event lees are
`not or cannot be paid at the time of EFS-Web submission, please charge any fees under
`3? CFR § 1.17 which may be required to DepOsit Account No. 13—3723.
`
`El Please charge any fees under 3? CFR §§ 1.16 and 1.1? which may be required to Deposit
`Account No. 13—3723.
`
`E Please charge any additional fees associated with the prosecution of this application to Deposit
`Account No. [3—3723. This authoriyat ion includes the lee For any necessary extension ol‘tirne
`under 3? CFR § 1.] 36( a). To the extent any such extension should become necessary. it is
`hereby requested.
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`X Please credit any overpayment to the same deposit account.
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`Saint-Gobain
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`Exhibit1003
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`Paget
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`Saint-Gobain Exhibit 1003 Page 1
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`Application No.: 131181085
`Case No.: 53022USO36
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`Additional claim fees for this amendment are computed as follows:
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`
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`CLAIMS AS AMENDED
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`Claims
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`Present Extra
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`aid
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`Remaining
`After
`Amendment
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`Highest Number Previously
`Paid For
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`
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`Total Claims 34
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`Independent
`Claims
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`4
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`*Additional fee required for filing one or more multiple dependent claims, if no such fee has been
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`
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`** If the “Highest No. Previously Paid For” is less than 20, insert “20” in next space
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`*** If the “Highest No. Previously Paid For” is less than 3, insert “3” in next space
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`Saint-Gobain
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`Application No.: 131181085
`Case No.: 53022USO36
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`Reg uest for Extension of Time
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`Under the provisions of 3'? CFR § 1.136(3), Applicant(s) petitions to extend the period for
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`filing a reply in the above-identified application as follows: (check time period desired):
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`E 37 CFR § 1.1?(a)(1) - Extension within first month.
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`D 3? CFR § 1.l7(a)(2) - Extension within second month.
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`D 37 CFR § l.l?(a)(3) - Extension within third month.
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`Fees Associated with Extension
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`Payment of the fee for any requested extension is authorized in the above fee section.
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`Application No.: 131181085
`Case No.: 53022USO36
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`Interview Summarv
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`Applicants wish to thank the Examiner for the in-person interview granted on November
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`14, 2012, during which the pending rejections were discussed. During the interview, Applicants
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`discussed potential amendments to overcome the rejections.
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`Application No.: 133181085
`Case No.: 53022USO36
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`Amendments to the Claims:
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`The following listing of claims will replace all claims in the application:
`
`1-28.
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`(Cancelled)
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`29.
`
`(a)
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`(currently amended) A method of preparing a batch of paint, the method comprising:
`
`providing a receptacle having an open top end;
`
`providing a liner having an open end, a base, and a rim at its open end that corresponds in
`(b)
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`shape to the open top end of the receptacle, the liner being shaped to fit into the open top end of
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`the receptacle so that a batch of paint can be added to the liner without coming into contact with
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`the receptacle, wherein the liner is self-supporting and the shape of the base of the liner in a non-
`
`collapsed state renders the liner incapable of standing on its base, unsupported, outside the
`
`receptacle; and
`
`(c)
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`(d)
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`(e)
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`placing the liner into the open top end of the receptacle;
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`adding a first volume of paint into the open end of the liner; and
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`seeurmga—ltd—tothehaer fitting a lid on the open end of the liner to create a reservoir
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`containing a batch of paint.
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`30.
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`(Previously Presented) A method according to claim 29 wherein the receptacle
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`comprises a measuring vessel.
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`31-47. (canceled)
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`48.
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`(Previously Presented) The method of claim 29 further comprising removing the reservoir
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`containing the batch of paint from the receptacle.
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`49.
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`(Previously Presented) The method of claim 29 wherein the receptacle comprises a
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`framework for containing the liner.
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`Application No.: 131181085
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`50.
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`(Previously Presented) The method of claim 48 wherein the receptacle comprises a
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`framework for containing the liner.
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`51.
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`(Previously Presented) The method of claim 29 wherein the lid comprises a fluid outlet.
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`52.
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`(Previously Presented) The method of claim 51 comprising providing a filter to filter paint
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`before it can pass through the fluid outlet, the method comprising positioning the filter proximate
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`the open end of the liner.
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`53.
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`(Previously Presented) The method of claim 52 wherein the lid comprises the filter.
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`54.
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`(Previously Presented) The method of claim 30 wherein the measuring vessel comprises a
`
`bottom end and markings that enable the volume of the contents of the measuring vessel to be
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`determined; whereby the markings on the measuring vessel account for space between the liner
`
`and the bottom end of the measuring vessel.
`
`55.
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`(new) The method of claim 29 further comprising the base of the liner retaining its shape
`
`during the addition of the first volume of paint.
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`56.
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`(new) The method of claim 29, wherein there are no locations on the inside of the liner
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`in which paint can become trapped and remain unmixed.
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`57.
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`(new) The method of claim 56, wherein the liner does not have any pleats.
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`58.
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`(new) The method of claim 29 comprising adding a second volume paint into the open
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`end of the liner; and mixing the first volume of paint with the second volume of paint.
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`59.
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`(new) The method of claim 53 wherein the filter is integral to the lid.
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`60.
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`(new) The method of claim 30 comprising
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`6
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`Application No.: 131181085
`Case No.: 53022USO36
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`providing markings to enable the contents of the receptacle to be determined; and
`
`using the markings to determine the volume of the first volume of paint.
`
`61.
`
`(new) The method of claim 60 wherein the markings are provided on a side wall of the
`
`receptacle.
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`62.
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`(new) The method of claim 30 comprising
`
`providing markings to enable the contents of the receptacle to be determined;
`
`using the markings to determine the volume of the first volume of paint;
`
`adding a second volume paint into the open end of the liner;
`
`using the markings to determine the volume of the second volume of paint; and
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`mixing the first volume of paint with the second volume of paint.
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`63.
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`(new) The method of claim 62 wherein the markings are provided on a side wall of the
`
`receptacle.
`
`64.
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`(new) A method of preparing a batch of paint, the method comprising:
`
`(a) providing a receptacle having an open top end, the receptacle comprising a
`
`measuring vessel;
`
`(b) providing markings to enable the contents of the receptacle to be determined;
`
`(0) providing a liner having an open end, a base, and a rim at its open end that
`
`corresponds in shape to the open top end of the receptacle, the liner being shaped
`
`to fit into the open top end of the receptacle so that a batch of paint can be added
`
`to the liner without coming into contact with the receptacle, wherein the liner is
`
`self-supporting and the shape of the base of the liner in a non-collapsed state
`
`renders the liner incapable of standing on its base, unsupported, outside the
`
`receptacle;
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`((1) placing the liner into the open top end of the receptacle;
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`(e) adding a first volume of paint into the open end of the liner, the base of the liner
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`retaining its shape during the addition of the first volume of paint;
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`7
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`Application No.: 131181085
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`(f) using the markings to determine the volume of the first volume of paint;
`
`(g)
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`fitting a lid on the open end of the liner to create a reservoir containing a batch of
`
`paint.
`
`65.
`
`(new) The method of claim 64 further comprising
`
`adding a second volume paint into the open end of the liner;
`
`using the markings to determine the volume of the second volume of paint; and
`
`mixing the first volume of paint with the second volume of paint.
`
`66.
`
`6?.
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`68.
`
`69.
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`(new) The method of claim 64 further comprising removing the reservoir containing the
`
`batch of paint from the receptacle.
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`(new) The method of claim 65 further comprising removing the reservoir containing the
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`batch of paint from the receptacle.
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`(new) The method ofclaim 64 wherein, in determining the volume ofthe first volume of
`
`paint, the markings on the measuring vessel account for space between the liner and the
`
`bottom end of the measuring vessel
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`(new) A method of preparing a batch of paint, the method comprising:
`
`(a) providing a receptacle having an open top end, the receptacle comprising a measuring
`
`vessel;
`
`(b) providing markings to enable the contents of the receptacle to be determined;
`
`(c) providing a liner having an open end, a base, and a rim at its open end that
`
`corresponds in shape to the open top end of the receptacle, the liner being shaped
`
`to fit into the open top end of the receptacle so that a batch of paint can be added
`
`to the liner without coming into contact with the receptacle, wherein the liner is
`
`self-supporting and the shape of the base of the liner in a non-collapsed state
`
`renders the liner incapable of standing on its base, unsupported, outside the
`
`receptacle;
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`Application No.: 131181085 Case No.: 53022USO36
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`(d) placing the liner into the open top end of the receptacle;
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`(e) adding a first volume of paint into the open end of the liner;
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`(1) using the markings to determine the volume of the first volume of paint;
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`(g) providing a lid comprising a fluid outlet and a filter that is integral with the lid and
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`proximate the fluid outlet;
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`(h) fitting the lid on the open end of the liner to create a reservoir containing a batch of
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`paint such that the filter is positioned to filter the paint before it can pass through
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`the fluid outlet.
`
`70.
`
`(new) The method of claim 69 further comprising
`
`adding a second volume paint into the open end of the liner;
`
`using the markings to determine the volume of the second volume of paint; and
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`mixing the first volume of paint with the second volume of paint.
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`71.
`
`T2.
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`73.
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`(new) The method of claim 69 further comprising removing the reservoir containing the
`
`batch of paint from the receptacle.
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`(new) The method of claim 70 further comprising removing the reservoir containing the
`
`batch of paint from the receptacle.
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`(new) The method of claim 69 wherein, in determining the volume of the first volume of
`
`paint, the markings on the measuring vessel account for space between the liner and the bottom
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`end of the measuring vessel
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`74.
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`(new) The method of claim 69 comprising the base of the liner retaining its shape during
`
`the addition of the first volume of paint
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`Application No.: 133181085
`Case No.: 53022USO36
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`75.
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`(new) A method of preparing a batch of paint, the method comprising:
`
`(a) providing a receptacle having an open top end;
`
`(b) providing a liner having an open end, a base, and a rim at its open end that
`
`corresponds in shape to the open top end of the receptacle, the liner being shaped
`
`to fit into the open top end of the receptacle so that a batch of paint can be added
`
`to the liner without coming into contact with the receptacle, wherein the liner is
`
`self-supporting;
`
`(c) placing the liner into the open top end of the receptacle;
`
`(d) adding a first volume of paint into the open end of the liner, the base of the liner
`
`retaining its shape during the addition of the first volume ofpaint;
`
`(0) adding a second volume paint into the open end of the liner;
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`(f) mixing the first volume of paint with the second volume of paint;
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`(g) providing a lid comprising a fluid outlet;
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`(h) fitting the lid on the open end of the liner to create a reservoir containing a batch of
`
`paint.
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`(new) The method of claim 75 further comprising removing the reservoir containing the
`
`batch of paint from the receptacle.
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`(new) The method of claim 75 wherein the shape of the base of the liner in its non-
`
`collapsed state renders the liner incapable of standing, unsupported, outside the receptacle.
`
`(new) The method of claim 75 further comprising providing a filter positioned proximate
`
`the fluid outlet, wherein fitting the lid on the open end of the liner further comprises the
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`filter being positioned to filter the paint before it can pass through the fluid outlet.
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`(new) The method of claim 78 wherein the filter is integral with the lid.
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`T6.
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`7?.
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`7’8.
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`79.
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`10
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`Application No.: 131181085
`Case No.: 53022USO36
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`REMARKS
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`Upon entry of the present amendment, claims 29-30 and 48-79 will be pending.
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`Withdrawn claims 31-4? are currently canceled without prejudice to their pursuit in a continuing
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`or divisional application. Claim 29 is currently amended to clarify the construction of the liner
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`provided in the claimed method. Claims 55-79 have been added, including new independent
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`claims 64, 69, and 75.
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`It is believed that the newly added independent claims, and their
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`associated dependent claims, fall within the election made in the reply filed August 6, 2012, and
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`share support in the specification with the previously presented claims. Reconsideration of the
`
`application is requested in view of the following remarks.
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`Double Patenting
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`Claims 29, 30, and 48-54 are rejected on the ground of nonstatutory obviousncss—typc
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`double patenting as being unpatentable over claims I- l 9 of US. Patent No. 7,188,785.
`
`Claims 29, 30, and 48-54 are rejected on the ground of nonstatutory obviousness—type
`
`double patenting as being unpatentable over claims l-ll of US. Patent No. 7,815,130.
`
`Claims 29, 30, and 48-54 are rejected on the ground of nonstatutory obviousncss—type
`
`double patenting as being unpatentable over claims [-41 of US. Patent No. 7,845,582.
`
`In response to the above rejections, but without acquiescing to the substance of the
`
`rejections, Applicants enclose a Terminal Disclaimer with respect to each of the referenced
`
`patents.
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`In light if this submission, it is believed that the rejections have been overcome and
`
`should be withdrawn.
`
`§ 102 Rejections
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`Claims 29 and 48-53 are rejected under 35 USC §
`
`l02(b) as being anticipated by
`
`Kaltcnbach. Reconsideration of the rejection is requested because Kaltenbach fails to disclose
`
`providing a liner having an open end, a base, and a rim at its open end that corresponds in shape
`
`to an open top end of a receptacle, wherein the liner is self-supporting, as in amended claim 29.
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`The remaining rejected claims depend from claim 29.
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`ll
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`Application No.: 131181085
`Case No.: 53022USO36
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`Kaltenbach reports a cup structure 19 for a spray gun having a liner 20. The liner 20 and
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`its insertion into the cup structure 19 are shown below for reference (see FIGS.
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`1 & 2 of
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`Kaltenbach and associated description):
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`
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`When "the liner 31! is ahead within cup 219. {tic- ago {a};
`of {helium 26 is tamed hack over the rim of the cup
`‘19 andfile Openings 24 are slipped {was the hollow pies
`Eigwésch are final}? attached. to cup 19 am! £2150 act as
`Vfififi. . T7.I‘..
`«-
`a
`a;
`4.-
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`The liner 20 of Kaltcnbach is a pliable plastic bag having pleated sides that let the bag
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`expand and deform when filled with liquid. When not in use, the bag is in a flattened state, and
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`therefore the filling end of the bag is not held open. When assembled into the cup structure 19, a
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`portion of the bag is folded over the top of cup structure 19 and openings 24 are slipped over
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`pins 23 on the cup structure. These openings and pins are necessary to both (i) hold the end of
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`the bag open; and (ii) to prevent the bag from sliding down into the cup structure when liquid is
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`poured into the bag, as the bag expands and otherwise deforms from the addition of the liquid.
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`In contrast, claim 29 recites providing a self-supporting liner having an open end, a base,
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`and a rim at its open end that corresponds in shape to an open top end of a receptacle. Because
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`the liner of the claimed method is self-supporting and comprises a rim corresponding in shape to
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`a rim of a receptacle, the liner holds itself open for easier insertion and placement within the
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`receptacle, and does not require mechanical assistance (e.g., openings and pins) to remain open
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`Application No.: 131181085
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`and to prevent sliding into the receptacle or otherwise losing its basic shape during the addition
`
`of paint.
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`Thus, Kaltenbach fails to disclose providing a liner having an open end, a base, and a rim
`
`at its open end that corresponds in shape to an open top end of a receptacle, wherein the liner is
`
`self-supporting.
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`Accordingly,
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`the rejection of claims 29 and 48-53 under 35 USC § 102(b) as being
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`anticipated by Kaltenbach has been overcome and should be withdrawn.
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`§ 103 Rejections
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`Claims 30 and 54 are rejected under 35 USC §
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`l03(a) as being unpatentable over
`
`Kaltenbach in view of Terrels et a1. Reconsideration of the rejection is requested because
`
`Kaltenbach and Terrels, whether viewed alone or in any proper combination, fail to disclose, teach,
`
`or suggest providing a liner having an open end, a base, and a rim at
`
`its open end that
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`corresponds in shape to an open top end of a receptacle, wherein the liner is self-supporting, as
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`in amended claim 29, from which claims 30 and 54 depend.
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`As discussed above, Kaltenbach fails to disclose the features of base claim 29.
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`Terrcls reports a container and stirrer for a paint sprayer. Terrels fails to supply the
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`features of claim 29 missing from Katenbach, and the Office does not allege otherwise.
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`Moreover, to the extent Terrels can be considered to disclose a measuring vessel, there is
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`no teaching or suggestion in Terrels that a liner could be provided within the container 20.
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`Applicants respectfiJlly submit that if the liner 20 of Kaltenbach were somehow assembled into
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`the container 20 ofTerrels, the rotating paddle 23 of Terrels would quickly become entangled in
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`the liner, thereby rendering both devices useless for their intended purpose. Also, the shape and
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`pliability of the Kaltenbach bag (118., the expandable pleated construction with blind comers,
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`etc.) would not be well suited to agitation by the paddle 23 of Terrels, since liquid stuck in such
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`blind spots could not be effectively stirred. Furthermore, there is no teaching or suggestion that
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`the markings on the measuring vessel would account for space between a liner and the bottom
`
`end of the measuring vessel.
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`In fact, it would be difficult in not impossible to do so with the
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`liner 20 of Kaltenbach, since the deformation of the pleated bag during filling would
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`Application No.: 131181085
`Case No.: 53022USO36
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`continuously change the relative position and shape of the liner with respect to the container,
`
`making fixed markings basically useless.
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`Thus, Kaltenbaeh and Terrels, whether viewed alone or in any proper combination, fail to
`
`disclose, teach, or suggest providing a liner having an open end, a base, and a rim at its open end
`
`that corresponds in shape to an open top end of a receptacle, wherein the liner is self-supporting.
`
`Accordingly,
`
`the rejection of claims 30 and 54 under 35 USC § 103(a) as being
`
`unpatentable over Kaltenbaeh in View of Terrels et al. has been overcome and should be
`
`withdrawn.
`
`Claim 47 is rejected under 35 USC § 103(a) as being unpatentable over Kaltenbach in
`
`view of Birkenmaier. However, claim 47 was previously withdrawn and is now canceled,
`
`thereby rendering the rejection moot.
`
`Accordingly The rejection of claim 4? under 35 USC § 103(a) as being unpatentable over
`
`Kaltenbaeh in View of Birkenmaicr has been overcome and should be withdrawn.
`
`Patentability of the New Claims
`
`Claims 55-79 have been added,
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`including new independent claims 64, 69, and 3’5.
`
`Claims 55-63 depend from claim 29, and are therefore patentable for at
`
`least
`
`the reasons
`
`discussed above.
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`New independent claims 64, 69, and T5 all contain the distinguishing features of the liner
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`discussed above with respect to claim 29, and are therefore patentable over the cited art (along
`
`with their associated dependent claims) for at least the reasons discussed above.
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`Application No.: 131181085
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`Case No.: 53022USO36
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`Conclusion
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`In View of the above, it is submitted that the application is in condition for allowance.
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`Reconsideration of the application is requested.
`
`The Examiner is
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`invited to contact
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`the
`
`undersigned with any questions regarding the present application.
`
`Respectfully submitted,
`
`
`December 20 2012
`Date
`
`Office of Intellectual Property Counsel
`3M Innovative Properties Company
`Facsimile No.: 651-736-3833
`
`By:“—
`AleksanderMedved, Reg. No.: 58,?61
`Telephone No.: 651-737-1226
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