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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/17/2025 has been entered.
Response to Amendment
Claims 1 and 60 – 78 remain pending.
Response to Arguments
The rejection of claim 77 under 35 U.S.C. § 112(b) in the most recent final Office action (09/18/2025) is withdrawn in view of the amendment.
Applicant's arguments, filed 11/17/2025 in traverse of the rejection(s) in view of the prior art, have been fully considered but they are not persuasive. Applicant’s having added no new arguments with the filing of the RCE, the arguments remain unpersuasive as explained in the Advisory Action mailed 12/01/2025, incorporated herein by reference.
With specific respect to Applicant’s argument that Calvert requires a clay-coated cellulosic board, Applicant is reminded that a patent is part of the literature of the art, relevant for all it contains, and may be relied upon for all that it would have reasonably suggested to one of ordinary skill in the art, including non-preferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. See MPEP § 2123.
Here, Calvert broadly teaches that “[w]hen used for food carton stock, paperboard is usually clay coated on at least one side surface and frequently on both sides. The paperboard trade characterizes a paperboard web or sheet that has been clay coated on one side as C1S and C2S for a sheet coated on both sides.” 3:5-9. “usually” and “frequently” imply a certain regularity or commonality in the application of clay but Calvert does not require that, in the container industry as a whole, all paperboard is coated on at least on side with clay. At best, Calvert is identifying a non-preferred embodiment, but nothing in Calvert rises to the level of teaching away from using non-clay-coated paperboard. Calvert’s disclosure “does not criticize, discredit, or otherwise discourage the use of non-clay-coated paperboard.” In re Fulton, 391 F. 3d 1195, 1201 (Fed. Cir. 2004).
Claim Objections
Claim 72 is objected to because of the following informalities: The second instance of “the” in the first line of this claim should be deleted. - - The method of claim 1, wherein after the [[the]] thermoforming, the coated cellulosic board has a crack length ratio of no greater than about 0.1. Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or
nonobviousness.
Claim(s) 1, 60-63, 66-72, 74-75, and 77-78 are rejected under 35 U.S.C. 103 as being unpatentable over Calvert (US 5,660,898; Calvert; cited in IDS) in view of Koenig et al. (US 2016/0348318; Koenig), Marx et al. (US 5,203,491; Marx), and Echt et al. (US
2013/0149930; Echt).
Claims 1, 60-61: Calvert discloses manufacturing a paperboard substrate (i.e.
cellulosic board). (Col. 2, 11. 1-5) to obtain the desired properties the paperboard substrate at a coating station with a water-based emulsion. Col. 5, 11. 15-22. The substrate may be non-clay-coated (col. 3, lines 5-7).
A second water-based emulsion coating is applied over the first coating to optimize the product made. Col.5, 11. 35-41. Calvert applies the emulsion composition at coating weights of 2-12 dry lbs./3000 sq. ft. Col. 2, 11. 19-22.
Calvert's substrates are used for distributing, marketing, and heating (i.e. ovenable) prepared food products. Col. 1, 11. 5-15. Calvert's paperboard and cartons are considered boards. Figs. 2, 4. The coated substrate is formed into formed tray and utilizes heat to seal the structure (i.e. thermoformable). Col. 4, 11. 37-45.
Applicant did not traverse the examiner's assertion of official notice, or applicant's traverse is not adequate. Therefore, the well-known art statement-paperboard substrates are fabricated from cellulosic fibers as paperboard is fabricated from cellulosic materials-is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate. See MPEP § 2144.03.
Calvert does not discloses applying a pigmented basecoat followed by a clearcoat nor that the substrate comprises at least 20% softwood. However Calvert explicitly discloses that the topcoat is applied to optimize the product made ("optimize the coefficient of friction to aid in stacking and delivery...") col. 5, 11. 35-41.
Koenig discloses basecoat compositions applied on paper substrates. [0067]. The
basecoat provides hydrophobic properties as well as pigments. Id. Koenig discloses topcoat compositions applies on paper substrates. [0071]. The topcoat composition is an aqueous emulsion coating that is applied to provide benefits to the paper substrate. Id. These include properties such as coefficient of friction modifiers, moisture barrier,
among others. Id. Koenig discloses that anti-blocking aids can include pigments, which are disclosed as optional. Id. Koenig's paper substrates are used for food packaging [0002], and teaches that the pigmented coatings may be applied to both sides of the paper [0101, 0104], that is, both interior and exterior.
It would have been obvious to someone of ordinary skill in the art at the time the
invention was filed to modify the method of Calvert and pigment the basecoat. Koenig discloses that the basecoat can be pigmented and thus produce the desired package for food product as desired. See col. 6, 11. 37-47. This is compatible with Calvert that discloses printing designs on the product.
It would have been further obvious to someone of ordinary skill in the art at the time the invention was filed to modify the method of Calvert and utilize a topcoat that is clear. Koenig discloses that pigments are optional for topcoat compositions. [0071]. Calvert does not disclose including pigments in the topcoat layer. Therefore based on the state of the art before the effective filing date of the claimed invention, the method for manufacturing would have produced the clear topcoat of Calvert/Koenig.
Likewise, Koenig teaches that the paperboard may be made of softwood fibers [0026]. Therefore, it would have been obvious to someone of ordinary skill in the art at the time the invention was filed to have used softwood fibers as the particular fibers of Calvert's paperboard substrate because Koenig teaches that softwood fibers are suitable for make paperboard substrates for food packaging.
Calvert does not disclose the particular composition of the basecoat. However, Koenig discloses that the binder utilized in the basecoat includes styrene- acrylic polymer (Examiner takes official notice that styrene-acrylic polymers are derived from acrylic acid and its esters combined with styrene monomers via emulsion polymerization), vinyl polymers, PE, PP, PET, PU, epoxy polymers. [0070].
Applicant did not traverse the examiner's assertion of official notice. Therefore, the well-known art statement- styrene-acrylic polymers are derived from acrylic acid and its esters combined with styrene monomers via emulsion polymerization -is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate. See MPEP § 2144.03.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05 II A.
It would have been obvious to someone of ordinary skill in the art at the time the
invention was filed to modify the method of Calvert and utilize a composition comprising the polymers disclosed in Koenig. Including composition comprising no more than 5wt% based on the total polymer units of the aqueous based polymer emulsion basecoat derived from acrylic acid.
Calvert discloses a paper food tray formed by pressing. Fig.3. Calvert does not disclose thermoforming after coating the cellulosic board. However, Marx discloses that paperboard containers are heated to temperatures in the range of 200-400 °F and pressed. Col. 7, 11. 25-50. This forms the resulting container. In addition, Echt discloses that the thermoforming of substrate is done after coating the substrate. [0124].
It would have been obvious to someone of ordinary skill in the art at the time the
invention was filed to modify the method of Calvert and subject to a thermoforming process in which the substrate is heated while it is pressed. This allows producing the containers with reasonable expectation of success.
It would have been further obvious to someone of ordinary skill in the art at the time the invention was filed to modify the method of Calvert and perform the thermoforming process after the coating as Echt discloses the thermoforming process is performed on the coated substrate to produce the desired container.
In the present case, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yields nothing more than predictable results to one of ordinary skill in the art. See MPEP 2143, KSR Rationale "A".
Claim 62: If both basecoat and topcoat are selected to be applied at 2 - 12 dry
lbs./3000 sq ft. coating weight as such the combined weight basis can range from 4-24 dry lbs./3000 sq. ft.
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. See MPEP § 2144.05.
Claim 63: Koenig discloses that the binder utilized in the basecoat includes styrene-acrylic polymer (Examiner takes official notice that styrene-acrylic polymers are derived from acrylic acid and its esters combined with styrene monomers via emulsion polymerization), vinyl polymers, PE, PP, PET, PU, epoxy polymers. [0070].
Applicant did not traverse the examiner's assertion of official notice. Therefore, the well- known art statement- styrene-acrylic polymers are derived from acrylic acid and its esters combined with styrene monomers via emulsion polymerization -is taken to be admitted prior art because applicant either failed to traverse the examiner's assertion of official notice or that the traverse was inadequate. See MPEP § 2144.03
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP § 2144.06.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP § 2144.05(II)(A).
It would have been obvious to someone of ordinary skill in the art at the time the
invention was filed to modify the method of Calvert and utilize a composition comprising the polymers disclosed in Koenig. Including composition comprising no more than 5wt% based on the total polymer units of the aqueous based polymer emulsion basecoat derived from acrylic acid.
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Claim 66: Calvert discloses coating first and second major sides of the paperboard. For instance see Figure 1. Koenig teaches coating both surfaces of paper [0101, 0104].
Claim 67 : The sides are coated with a basecoat and topcoat as shown above.
Claim 68: Calvert teaches scoring before shaping (col. 4, lines 36-45), which Marx and Echt teach is by thermoforming.
Claim 69: The scored blank can be folded and comprises radial scoring. Fig. 2. Examiner notes the court has held the configuration/shape is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence of the particular configuration of the claimed container. See MPEP 2144.04 (IV)(B).
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Claim 70: Marx teaches that the thermoforming may be performed at a moisture content of the substrate between 5-11% (col. 7, lines 39-42).
Claim 71: Calvert discloses a food tray (col. 3, lines 17-33) having a bottom panel (52), sidewall (54) and flange panel (56) (col. 4, lines 46-59).
Claim 72: Calvert teaches a crack length ratio of no greater than 0.1 (col. 1, , lines 7-15; col. 6, lines 1-5).
Claim 74: Marx teaches that the thermoforming includes pressing between a male die and a female die at 200-400 degrees F (col. 7, lines 26-30).
Claim 75: Marx teaches that its pressing draws the blank substrate (col. 7, lines 15-22), which necessarily involves the male die drawing the blank as it presses into the female die (Claim 20).
Claim 77: The male die is inserted into the female die. Therefore, male die faces the interior (i.e., first major) side of the substrate, and the female die faces the exterior (i.e., second major side).
Claim 78: Calvert teaches that the thermoformed container comprises a plurality of tray compartments (44) separated by dividers (col. 4, lines 23-26; Fig. 3)
Claim(s) 64 is rejected under 35 U.S.C. 103 as being unpatentable over Calvert (US 5,660,898; Calvert; cited in IDS) in view of Koenig et al. (US 2016/0348318; Koenig), Marx et al. (US 5,203,491; Marx), Echt et al. (US 2013/0149930; Echt) and Swoboda et al. (US 2002/0189538; Swoboda).
Claim 64: Calvert does not disclose the particular composition of the topcoat. However, Swoboda discloses emulsion topcoats applied to paperboards. [0045]. The topcoats are added to enhance barrier properties of the paperboard. Id. The emulsions include acrylic acid and its derivatives. Id. The composition can be made from mixture of other acrylic and acrylates. Id.
"It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP 2144.06.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP § 2144.05(II)(A).
It would have been obvious to someone of ordinary skill in the art at the time the
invention was filed to modify the method of Calvert and utilize a composition comprising the polymers disclosed in Koenig. Including composition comprising no more than 5wt% based on the total polymer units of the aqueous based polymer emulsion basecoat derived from acrylic acid. Swoboda discloses acrylic emulsions are suitable for topcoats and FDA approved materials which is an advantage.
Claim 65 is rejected under 35 U.S.C. 103 as being unpatentable over Calvert (US
5,660,898; Calvert; cited in IDS) in view of Koenig et al. (US 2016/0348318; Koenig), Marx et al. (US 5,203,491; Marx), Echt et al. (US 2013/0149930; Echt) and Swoboda et al. (US 6,740,373; Swoboda).
Claim 65: Calvert does not disclose the particular color of the pigment. However, Swoboda '373 teaches carbon black as a suitable pigment for inclusion in acrylic coatings of paperboard food containers (Abstract, col. 17, lines 63-col. 18, line 18). Therefore, it would have been obvious to someone of ordinary skill in the art at the time the invention was filed to have used carbon black as the particular pigment of Calvert because Swoboda teaches it is a suitable pigment for inclusion in acrylic coatings of paperboard food containers.
Claim 73 is rejected under 35 U.S.C. 103 as being unpatentable over Calvert (US
5,660,898; Calvert; cited in IDS) in view of Koenig et al. (US 2016/0348318; Koenig), Marx et al. (US 5,203,491; Marx), Echt et al. (US 2013/0149930; Echt) and Calvert (US
5,421,510).
Calvert '898, Koenig, Marx, and Echt are discussed above.
Calvert teaches that the coating must be able to be tack bonded at temperatures of about 250 degrees F or greater (col. 5, lines 59-67) and that a closure may be sealed to the tray by a conventional process (col. 4, lines 36-45), but does not explicitly teach tack bonding a lid. Calvert '510 explicitly teaches tack bonding the lid to the tray (col. 3, lines 20-26).
Therefore, it would have been obvious before the effective filing date of the claimed invention to have tack bonded a lid onto the tray of Calvert '898 to provide its desired seal. It would have been obvious to have used a temperature of 250 degrees F or greater because Calvert '898 expressly designs its coating for tack bonding at such temperatures.
Claim 75-76 is rejected under 35 U.S.C. 103 as being unpatentable over Calvert (US 5,660,898; Calvert; cited in IDS) in view of Koenig et al. (US 2016/0348318; Koenig), Marx et al. (US 5,203,491; Marx), Echt et al. (US 2013/0149930; Echt) and Faller (US 4,349,124).
Calvert '898, Koenig, Marx, and Echt are discussed above.
Marx teaches temperature control of the die during the pressing (col. 7, lines 26-30), but does not specifically teach that the female die is at a higher temperature than the male die. Faller teaches thermoforming composite paperboard trays to contain food (col. 1, lines 11-18) by pressing with a female die heated to a higher temperature than the male die to form desired bossments (col. 2, lines 53-60).
Therefore, it would have been obvious before the effective filing date of the claimed invention to have formed the containers of Calvert and Marx using a female die heated to a higher temperature than the male die to form desired bossments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5,498,452 A teaches a dual-ovenable food product container formed from a coated or uncoated paperboard substrate to which is applied a precoat layer and a topcoat layer. The precoat is formed from an aqueous emulsion copolymer such as ethylene vinyl acetate while the top coat is formed from and aqueous emulsion which is a copolymer of one or a mixture of styrenated acrylic copolymers. The substrate preferably has coated on at least one side thereof a clay-based material which serves as a barrier for water, grease and other coatings. However, a clay coating is not essential. [2:31]. Again, as noted, it is not necessary that a coating of clay or other materials be present on the paperboard substrate. When such a coating is not present the precoat aqueous emulsion copolymer can be applied directly to the uncoated substrate. [3:8-11].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
09 January 2025