32692
`Customer Nu mljer
`
`Patent
`Case No.: 53022U8036
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`First Named Inventor:
`
`JOSEPII, STEPIIEN CIIRISTOPIIER
`
`Application No.:
`
`132’181085
`
`Confirmation No.:
`
`3680
`
`Filed:
`
`Title:
`
`12-IUL-201 1
`
`APPARATUS FOR SPRAYING LIQUIDS, AND DISPOSABLE CONTAINERS
`AND LINERS SUITABLE FOR USE TIIEREWITH
`
`AMENDMENT AND RESPONSE UNDER 37 CFR§ 1.111
`
`Mail Stop Amendment
`'
`i
`ommtsSIoner OI' atents
`
`CERTIFICATE oIr MAILING oR TRANSMISSION |37 CFR § 1.3m]
`I hereb certil'
`that this corres mndence is hein :
`3’
`Y
`I
`g
`
`P 0 BOX 1450
`
`Alexandria, VA 22313-1450
`
`E transmitted to United States Patent and 'l‘rademark Office on the date shown below
`via the Office electronic filing system.
`
`B deposited with the United States Postal Service on the date shown below with
`sullicienl postage as first class mail in an envelope addressed to: Commissioner for
`Patents. PO. Box 1450. Alexandria VA 22313—1450.
`
`El transmitted by facsimile on the date shown below to the United States Patent and
`Trademark Ollice at 57"1—273—8300.
`
`September 6, 2013
`
`Date
`
`{Paula .1. Dick!
`Signed by: Paula J. Bick
`
`Dear Sir:
`
`This is in response to the Office Action dated August 16, 2013 in the above-identified
`
`application.
`
`Fees
`
`El Any required fee will be made at the time of submission via EFS—Web. In the event fees 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?r 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. 13—37123. This authorimt ion includes the [be For any necessary extension of time
`under 37 CFR § 1 .1 36( a). To the extent any such extension should become necessary, it is
`hereby requested.
`
`E Please credit any overpayment to the same deposit account.
`
`Saint-Gobain
`
`Exhibit1004
`
`Paget
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`Saint-Gobain Exhibit 1004 Page 1
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`

`

`Application No.: 13181085
`
`Case No.: 53022USO36
`
`Amendments to the Claims:
`
`The following listing of claims will replace all claims in the application:
`
`1-28.
`
`(Cancelled)
`
`29.
`
`(a)
`
`(b)
`
`(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 having—a—sha-p-e, 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,
`
`i.— wherein the liner is self-supporting; and
`
`Hewherehfiheslmpeofihebaseofthefinawhenthefinammanon-eeflapsedfiate
`
`(c)
`
`(d)
`
`(e)
`
`placing the liner into the open top end of the receptacle;
`
`adding a first volume of paint into the open end of the liner; and
`
`fitting a lid on the open end of the liner to create a reservoir containing a batch of paint,
`
`wherein the liner is collapsible as paint is withdrawn from within the liner, and wherein the liner
`
`is removable from the receptacle together with the lid.
`
`
`
`30.
`
`(Previously Presented) A method according to claim 29 wherein the receptacle
`
`comprises a measuring vessel.
`
`31-47. (canceled)
`
`48.
`
`(Previously Presented) The method of claim 29 further comprising removing the reservoir
`
`containing the batch of paint from the receptacle.
`
`49.
`
`(Previously Presented) The method of claim 29 wherein the receptacle comprises a
`
`framework for containing the liner.
`
`Saint-Gobain
`
`Exhibit1004
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`Page2
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`Saint-Gobain Exhibit 1004 Page 2
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`

`

`Application No.:
`
`13I’181085
`
`Case No.: 53022USO36
`
`50.
`
`(Previously Presented) The method of claim 48 wherein the receptacle comprises a
`
`framework for containing the liner.
`
`51.
`
`(Previously Presented) The method of claim 29 wherein the lid comprises a fluid outlet.
`
`52.
`
`(Previously Presented) The method of claim 51 comprising providing a filter to filter paint
`
`before it can pass through the fluid outlet, the method comprising positioning the filter proximate
`
`the open end of the liner.
`
`53.
`
`(Previously Presented) The method of claim 52 wherein the lid comprises the filter.
`
`54.
`
`(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
`
`determined; whereby the markings on the measuring vessel account for space between the liner
`
`and the bottom end of the measuring vessel.
`
`55.
`
`(Previously Presented) The method of claim 29 fithher comprising the base of the liner
`
`retaining its shape during the addition of the first volume of paint.
`
`56.
`
`(Previously Presented) The method of claim 29, wherein there are no locations on the
`
`inside ofthc liner in which paint can become trapped and remain unmixed.
`
`5?.
`
`(Previously Presented) The method of claim 56, wherein the liner does not have any
`
`pleats.
`
`58.
`
`(Previously Presented) The method of claim 29 comprising adding a second volume
`
`paint into the open end of the liner; and mixing the first volume of paint with the second volume
`
`Ofpaint.
`
`59.
`
`(Previously Presented) The method of claim 53 wherein the filter is integral to the lid.
`
`Saint-Gobain
`
`Exhibit1004
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`Page3
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`Saint-Gobain Exhibit 1004 Page 3
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`

`

`Application No.:
`
`13I’181085
`
`Case No.: 53022USO36
`
`60.
`
`61.
`
`(Previously Presented) The method of claim 30 comprising
`
`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.
`
`(Previously Presented) The method of claim 60 wherein the markings are provided on a
`
`side wall of the receptacle.
`
`62.
`
`(Previously Presented) 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
`
`mixing the first volume of paint with the second volume of paint.
`
`63.
`
`(Previously Presented) The method of claim 62 wherein the markings are provided on a
`
`side wall of the receptacle.
`
`64.
`
`(currently amended) 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,
`
`i: wherein the liner is self-supporting; and
`
`
`
`Saint-Gobain
`
`Exhibit1004
`
`Page4
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`Saint-Gobain Exhibit 1004 Page 4
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`

`

`Application No.: 13181085
`
`Case No.: 53022USO36
`
`(d) placing the liner into the open top end of the receptacle;
`
`(e) 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 of paint;
`
`(I) using the markings to determine the volume of the first volume of paint;
`
`(g)
`
`fitting a lid on the open end ofthe liner to create a reservoir containing a batch of
`
`paint, wherein the liner is collapsible as paint is withdrawn from within the liner,
`
`and wherein the liner is removable from the receptacle together with the lid.
`
`65.
`
`(Previously Presented) 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.
`
`67.
`
`68.
`
`(Previously Presented) The method of claim 64 further comprising removing the reservoir
`
`containing the batch of paint from the receptacle.
`
`(Previously Presented) The method of claim 65 fithhcr comprising removing the reservoir
`
`containing the batch of paint fi'om the receptacle.
`
`(Previously Presented) The method of claim 64 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 end of the measuring vessel
`
`Saint-Gobain
`
`Exhibit1004
`
`Page5
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`Saint-Gobain Exhibit 1004 Page 5
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`

`

`Application No.:
`
`13I’181085
`
`Case No.: 53022USO36
`
`69.
`
`(currently amended) 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,
`
`i: wherein the liner is self-supporting; and
`
`
`
`(d) placing the liner into the open top end of the receptacle;
`
`(e) adding a first volume of paint into the open end of the liner;
`
`(1) using the markings to determine the volume of the first volume of paint;
`
`(g) providing a lid comprising a fluid outlet and a filter that is integral with the lid and
`
`proximate the fluid outlet;
`
`(h) fitting the lid on the open end of the liner to create a reservoir containing a batch of
`
`paint such that the filter is positioned to filter the paint before it can pass through
`
`the fluid outlet wherein the liner is colla sible as aint is withdrawn from within
`
`
`the liner1 and wherein the liner is removable from the receptacle together with the
`
`m.
`
`”f0.
`
`(Previously Presented) 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
`
`mixing the first volume of paint with the second volume of paint.
`
`71.
`
`(Previously Presented) The method of claim 69 further comprising removing the reservoir
`
`containing the batch of paint from the receptacle.
`
`Saint-Gobain
`
`Exhibit1004
`
`Page6
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`Saint-Gobain Exhibit 1004 Page 6
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`

`

`Application No.: 13181085
`
`Case No.: 53022USO36
`
`72.
`
`(Previously Presented) The method of claim 70 further comprising removing the reservoir
`
`containing the batch of paint fi'om the receptacle.
`
`73.
`
`(Previously Presented) 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 end of the measuring vessel
`
`74.
`
`(Previously Presented) The method of claim 69 comprising the base of the liner retaining
`
`its shape during the addition of the first volume of paint
`
`T5.
`
`(currently amended) 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 ofthe liner
`
`retaining its shape during the addition of the first volume of paint;
`
`(e) adding a second volume paint into the open end of the liner;
`
`(f) mixing the first volume of paint with the second volume of paint;
`
`(g) providing a lid comprising a fluid outlet;
`
`(h) fitting the lid on the open end ofthc liner to create a reservoir containing a batch of
`
`paint, wherein the liner is collapsible as paint is withdrawn from within the liner, and
`
`wherein the liner is removable from the receptacle together with the lid.
`
`76.
`
`(Previously Presented) The method of claim '5 further comprising removing the reservoir
`
`containing the batch of paint from the receptacle.
`
`Saint-Gobain
`
`Exhibit1004
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`Page7
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`Saint-Gobain Exhibit 1004 Page 7
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`

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`Application No.: 13181085
`
`Case No.: 53022USO36
`
`7?.
`
`(canceled)
`
`7‘8.
`
`(Previously Presented) The method of claim 7’5 further comprising providing a filter
`
`positioned proximate the fluid outlet, wherein fitting the lid on the open end of the liner further
`
`comprises the filter being positioned to filter the paint before it can pass through the fluid outlet.
`
`"(9.
`
`(Previously Presented) The method of claim 78 wherein the filter is integral with the lid.
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`Saint-Gobain
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`Exhibit1004
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`Page8
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`Saint-Gobain Exhibit 1004 Page 8
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`

`

`Application No.: 13181085
`
`Case No.: 53022USO36
`
`Statement of the Substance of the Interview
`
`Applicants appreciate the telephone interviews granted on July 31, 2013, and again on
`
`September 5, 2013. During the July 31 interview, the undersigned and Examiner Nguyen
`
`discussed the § 1 12 rejections in the Office Action dated March 25, 2013. During the September
`
`5 interview, the undersigned and Examiner Nguyen discussed the Office Action dated August
`
`16,2013.
`
`Saint-Gobain
`
`Exhibit 1004
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`Page 9
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`Saint-Gobain Exhibit 1004 Page 9
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`

`

`Application No.:
`
`13I’181085
`
`Case No.: 53022USO36
`
`REMARKS
`
`Upon entry of the present amendment, claims 29, 30, 48-?6, and "ES-79 will be pending.
`
`Claim 77 is currently canceled. Claims 29, 64, 69, and 75 are currently amended. No new
`
`matter has been added. Reconsideration of the application is requested in view of the following
`
`remarks.
`
`Electiom’Restrictions
`
`In the Office Action, the Office alleges as follows:
`
`1.
`
`The Applicant responded on 81'062'12 to the Requirement for Restrictionl'Election, the
`
`Applicant Elected Without traverse of claims 29-30 and Species of Figures 2-7, as explained
`
`on the July 31, 2013 interview, the feature of the invention “wherein the shape of the base of
`
`the liner when the liner is in a non-collapsed state renders the liner incapable of standing on
`
`its base. unsupported, outside the receptacle” does not read on the elected Species of
`
`Figures 2—7.
`
`Applicants respectfully submit that this issue is now moot in view of the current
`
`amendment, whereby the claims are no longer limited by this feature.
`
`In any event, the present
`
`claims fall within the elected species of Figures 2-7.
`
`Drawings
`
`In the Office Action dated August 16, 2013, the drawings were objected to as allegedly
`
`failing to comply with 37 CFR § 1.83(a). The Patent Office alleges:
`
`2.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show every
`
`feature of the invention specified in the claims. Therefore. the feature of the invention
`
`“wherein the shape 01 the base oi the liner when the liner is in a non—collapsed state renders
`
`the liner incapable of standing on its base, unsupported. outside the receptacle" must be
`
`shown or the featurels) canceled from the claim(s}. No new matter should be entered.
`
`Applicants respectfully submit that this objection is now moot in view of the current
`
`amendment, whereby the claims are no longer limited by this feature.
`
`10
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`Saint-Gobain
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`Exhibit1004
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`Page10
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`Saint-Gobain Exhibit 1004 Page 10
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`

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`Application No.:
`
`13I’181085
`
`Case No.: 53022USO36
`
`§ 102 Rejections
`
`Claims 29, 48-53, 55-59, and 75-79 are rejected under 35 USC § 102(b) as being
`
`anticipated by Kaltenbach. 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 claims 29 and 75, from which the remaining rejected claims depend.
`
`Applicants respectfully note that the text of the present rejection is identical to the text of
`
`the rejection in the Office Action dated August 31, 2012, which was withdrawn in response to
`
`Applicants” response filed on December 21, 2012. Therefore, Applicants hereby incorporate the
`
`remarks from the December 21, 2012 response and respectfiJlly request that the rejection be
`
`withdrawn for at least the same reasons.
`
`The rejection of claims 29, 48-53, 55-59, and 75-79 under 35 USC § l02(b) as being
`
`anticipated by Kaltcnbach is unwarranted and should be withdrawn.
`
`§ 103 Rejections
`
`Claims 30, 54, and 60-24 are rejected under 35 USC § 103(a) as being unpatentable over
`
`Kaltenbach in View of Terrels. 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 corresponds in shape
`
`to an open top end ofa receptacle, wherein the liner is self-supporting, as in claims 29, 62, and
`
`69, from which the remaining rejected claims depend.
`
`Applicants respectfully note that the text of the present rejection is identical to the text of
`
`the rejection in the Office Action dated August 31, 2012, which was withdrawn in response to
`
`Applicants” response filed on December 21, 2012. Therefore, Applicants hereby incorporate the
`
`remarks from the December 2 l , 2012 response and respeetfiJlly request that the rejection be
`
`withdrawn for at least the same reasons.
`
`The rejection of claims 30, 54, and 60-74 under 35 USC § 103(a) as being unpatentable
`
`over Kaltenbaeh in View of Terrels is unwarranted and should be withdrawn.
`
`ll
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`Saint-Gobain
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`Exhibit1004
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`Page11
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`Saint-Gobain Exhibit 1004 Page 11
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`

`

`Application No.:
`
`13I’181085
`
`Case No.: 53022USO36
`
`Conclusion
`
`In view of the above, it is submitted that the application is in condition for allowance.
`
`Reconsideration of the application is requested. The Examiner is invited to contact the
`
`undersigned with any questions regarding the present application.
`
`Respectfiilly submitted,
`
`\‘5
`
`September 6, 2013
`Date
`
`“‘“‘
`r"
`By:
`Aleksander Medved, Reg. No.: 58,761
`Telephone No.: 651-737-1226
`
`Officc of Intcllcctual Property Counsel
`3M Innovative Properties Company
`Facsimile No.: 651—736—3833
`
`12
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`Saint-Gobain
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`Exhibit1004
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`Page12
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`Saint-Gobain Exhibit 1004 Page 12
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`