DETAILED OFFICIAL 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 .
Examiner Note
It is noted that all references hereinafter to Applicant’s specification (“spec”) are to the published application US 2022/0135308, unless stated otherwise. Further, any italicized text utilized hereinafter is to be interpreted as emphasis placed thereupon.
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on 30 October 2025 after the Final Rejection dated 30 April 2025 (hereinafter “FOA”). 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under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the FOA has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 30 October 2025 has been entered.
All claims are identical to or patentably indistinct from the claims in the application prior to the entry of the submission under 37 CFR 1.114, and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
Information Disclosure Statement
The information disclosure statements (IDS) filed 30 October 2025 and 17 November 2025 are in compliance with 37 CFR 1.97 and have been considered.
Claim Status
Claims 1-26 remain pending; claim 23 remains withdrawn as a result of previous restriction; claims 1-22 and 24-26 are under consideration on the merits.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7-11, 13-22, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Getty et al. (US 2019/0062028; “Getty”), in view of Schmidt et al. (US 2017/0291965; “Schmidt”) (both previously cited).
Regarding claim 1, Getty is directed to protective packaging articles, and in particular discloses an envelope comprising superimposed first and second walls, each of said walls including superimposed plies (i.e. layers/webs/ribbons) of material (e.g. inner and outer layers) enclosing an expansion space therebetween [Abstract; Figs. 2, 5-10; 0002-0003, 0008-0017, 0067-0070, 0092-0095]. The superimposed walls are connected to one another on a plurality of sides to define a cavity (i.e. pouch or pocket – the inside of the envelope in which a product to be stored/shipped is disposed) [Abstract; Fig. 10; 0006-0017, 0038, 0067-0070, 0092-0095, 0100, 0115-0119, 0122, 0124]. Each layer of material of the respective first and second walls is suitably and preferably formed from paper [0093, 0095], but not limited thereto [0093].
In the expansion space of each wall (between superimposed plies) is an expandable adhesive composition (water-based, i.e. aqueous), of which is capable of expanding and subsequently curing to provide padding (in the form of the expanded composition) to each wall of the envelope [0013-0014, 0017, 0038, 0067-0070, 0081-0082, 0088-0089, 0096, 0099, 0122]. The expansion (step) of the adhesive composition occurs after each expansion space is sealed and after the first and second walls are connected one a plurality of sides/edges thereof [0026-0038, 0200-0213] – the envelope, prior to the expansion step, defines an “intermediate envelope” which reads on the claimed protective article (specifically, the expandable adhesive composition not being in the expanded/cured state, with first and second superimposed walls connected to each other).
Getty discloses that the water-based expandable adhesive composition includes (A) water; (B) at least one synthetic emulsion polymer [0071-0074]; (C) heat-expandable microspheres [0075, 0077, 0079, 0081]; and may further include additional additive materials (e.g., stabilizers, fillers, etc.) including (D) pearl starch (nonmodified), physically-modified starch, and/or chemically-modified starch [0083, 0086-0087]. The aforesaid starch (D) constitute polar polymers.
Getty discloses that the (one or more) synthetic emulsion polymer(s) (B) is not limited, with examples including, inter alia ethylene-vinyl acetate (EVA) copolymer, vinyl acetate ethylene dispersions, polyvinyl acetate (PVAc), polyvinyl alcohol (PVOH), vinyl acrylics, styrene-based acrylics, polyurethanes, and styrene-based elastomers [0071].
Getty is silent regarding the emulsion polymer(s) (B) being (or including, relative to those species disclosed therein) one or more polyolefins.
Schmidt is directed to aqueous, coagulate-able, polymer dispersions including at least one polymer dispersed in an aqueous phase; heat-expandable microspheres; and additional components, said dispersions suitable for use as an adhesive in packaging applications, and activated via heating/thermal means [Abstract; 0001, 0003-0004, 0013-0015, 0029-0033, 0048-0050, 0052-0053, 0067, 0093, 0108, 0120-0121, 0130-0131, 0134-0135, 0140, 0143, 0148]; suitable substrates for the adhesive include paper [0053, 0138]. Schmidt teaches that polyolefin homopolymers and copolymers of C2–C8 alkenes (e.g. polyethylene, polypropylene) are suitable for use as the polymer dispersed in the aqueous phase, including in combination with other polymer species including, inter alia polyurethane, PVAc, EVA, and styrene-based acrylics [0070, 0075, 0079, 0089, 0092]; as well as suitable for use as said additional component(s) [0111]. Applicant is respectfully directed to MPEP 2144.06 and MPEP 2144.07.
Getty and Schmidt each constitute prior art which is analogous to the claimed invention, in light of the disclosures set forth/cited above.
In view of the combined teachings of the foregoing prior art, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the invention to have modified the water-based expandable adhesive composition of Getty by utilizing a polyolefin, such as polyethylene or polypropylene, as component (B) – in addition to or alternatively to the polymeric species disclosed therein – as the aforesaid polyolefin(s) would have been readily recognized as suitable for the intended use in aqueous adhesive compositions (dispersions) which are heat-expandable and curable, which include heat-expandable microspheres, and which are suitable for use as adhesives for paper substrates in packaging applications (see MPEP 2144.07), as well as functionally-equivalent to other synthetic polymers (see MPEP 2144.06(I), (II)) which are also explicitly named as suitable for the aforesaid intended use (e.g., polyurethanes, EVA, styrene-based acrylics, etc.).
As such, the water-based expandable adhesive composition of Getty, as modified (hereinafter interchangeably “modified Getty”) would have included a polyolefin such as polyethylene or polypropylene as component (B), in addition to those species named above/cited therein, or alternatively thereto.
The protective packaging article (e.g. envelope) of modified Getty reads on the protective article defined by each/every limitation of claim 1.
Regarding claim 2, the grounds of rejection of claim 1 above read on the protective article defined by the limitations of claim 2 – as cited above, Getty discloses the envelope including an opening for insertion of a product into the pocket, and a closure for sealing-closed said opening to retain the product in the pocket of the envelope.
Regarding claim 3, in view of the grounds of rejection of claims 1 and 2 above, Getty discloses that the envelope is manufactured on a continuous manufacturing line, where the individual envelopes are in the form of a continuous web prior to being cut into individual envelopes and treatment to effect expansion of the expandable adhesive to form the padding of the envelope(s) [0009, 0127-0145; Figs. 4A, 5-10]. The disclosure of Getty reads on the protective article defined by the limitations of claim 3.
Regarding claims 4-5 and 7, the grounds of rejection of claim 1 above read on each protective article defined by the respective limitations of claims 4, 5, and 7.
Regarding claims 8-9, in view of the grounds of rejection of claim 1 above, Getty discloses that the (C) heat-expandable microspheres include a reactive blowing agent such as a hydrocarbon present in the core of the shell (e.g., polyacrylonitrile shell) of the microsphere [0075-0079, 0082], thereby reading on each protective article defined by the respective limitations of claims 8 and 9. It is noted that Getty suggested use of commercially-traded expandable microspheres Expancel™ and Dualite™ [0076].
Regarding claim 10, in view of the grounds of rejection of claims 1 and 8 above, wherein Getty discloses the blowing agent being a hydrocarbon, Getty does not explicitly disclose the species of hydrocarbon. However, Schmidt teaches that the blowing agent of the microspheres is a hydrocarbon, such as, inter alia isobutane [0093-0098, 0107]. In light of MPEP 2144.06 and MPEP 2144.07 set forth above, and given that Getty [0076] and Schmidt [0094] each disclose the same commercially-traded line of expandable microspheres as suitable for use, it would have been prima facie obvious to have utilized isobutane (or any other blowing agent taught by Schmidt) as said blowing agent of the (C) heat-expandable microspheres.
Regarding claims 11 and 13-15, the grounds of rejection of claims 1, 8, and 10 above read on each protective article defined by the respective limitations of claims 11, 13, 14, and 15.
Regarding claims 16-17, the grounds of rejection of claim 1 above read on each protective article defined by the respective limitations of claims 16 and 17.
Regarding claim 18, the grounds of rejection of claim 1 above read on the protective article defined by the limitation of claim 18 – it is noted that “entrained” is interpreted as synonymous with “dispersed in” or “impregnated”, given the lack of an explicit definition in the specification therefor.
Regarding claims 19-22, the grounds of rejection of claim 1 above read on each protective article defined by the respective limitations of claims 19 and 22; the grounds of rejection of claim 1 in view of the grounds of rejection of claims 2-3 above read on each protective article defined by the respective limitations of claims 20 and 21.
Regarding claims 24-26, the grounds of rejection of claims 1 and claims 19-22 above read on each protective article defined by the respective limitations of claims 24, 25, and 26 – as set forth/cited above, Getty discloses that each layer of each wall (i.e., all 4 superimposed plies) is suitably formed from paper.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Getty in view of Schmidt as applied to claims 1 and 5 above, further in view of Brandolini et al. (US 2004/0000581; “Brandolini”) (previously cited).
Regarding claim 6, as set forth above, the polyolefin included in the adhesive composition of modified Getty as component (B) is suitably polyethylene or polypropylene.
However, Getty and Schmidt do not explicitly disclose or teach/suggest a sub-genus of polyethylene based on density.
Brandolini – previously set forth/cited in the Final Rejection dated 12 October 2023 [id., ¶27] and incorporated herein by reference – teaches that LDPE (low-density polyethylene) is suitable for use as the material in the expansion space which provides the mailer with cushioning property relative to the products intended to be disposed/shipped therein (see MPEP 2144.07). As such, it would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have utilized LDPE as the sub-genus (based on density) of polyethylene which forms or is included at least as part of component (B) of the composition of modified Getty.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Getty in view of Schmidt as applied to claims 1 and 11 above, further in view of Ding et al. (US 2004/0228886; “Ding”) (previously cited).
Regarding claim 12, as set forth above, the shell of the (C) heat-expandable microspheres may be (poly)acrylonitrile as disclosed by Getty, wherein Schmidt [0094, 0101] also recognizes the use of polyacrylonitrile, as well as in combination with other monomers such as vinylidene chloride and styrene(s) [0101-0102, 0107].
Getty and Schmidt do not explicitly disclose the shell of the microspheres formed from or including a polyolefin.
Ding – previously set forth/cited in the Final Rejection dated 12 October 2023 [id., ¶52] and incorporated herein by reference – teaches that the thermoplastic shell of the heat-expandable microspheres may suitably be formed from polyethylene, polystyrene, or vinylidene chloride/acrylonitrile (co)polymers, all of which benefit from being characterized as non-toxic [0075-0077, 0079]. Ding also recognizes the commercially-traded Expancel™ microspheres [0077]; Ding constitutes analogous art relative to the claimed invention as stated/cited in the aforesaid Final Rejection.
In view of the combined teachings of the foregoing prior art, and in view of MPEP 2144.06 and/or MPEP 2144.07, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have utilized a polyethylene-based (i.e. a polyolefin) shell for the heat-expandable microspheres (C) in addition to, or as an alternative to, the acrylonitrile-based shell, as polyethylene would have been recognized as suitable for the intended use and/or functionally equivalent to the aforesaid species of thermoplastic which suitably form the shell of the heat-expandable microsphere(s).
Response to Arguments
Applicant’s arguments presented in the Remarks filed 30 October 2025 (hereinafter “Remarks”) have been fully considered but not found persuasive.
After acknowledging/briefly summarizing the disclosures of Getty and Schmidt on pp.7-8 of the Remarks, Applicant asserts on p. 9 of the Remarks that the grounds of rejection fail to establish that the polyolefin polymer of Schmidt would be suitable for the intended use (MPEP 2144.07) as the (B) synthetic emulsion polymer in the adhesive composition of Getty, asserting in particular that (1) it cannot be assumed that the viscosity of the modified composition of Getty (“modified Getty”) would meet the requirements of Getty to achieve uniform padding when expanded, and (2) that it cannot be assumed that the composition of modified Getty would accommodate the RF heating requirements of Getty.
However, it is first noted that Applicant’s assertions fail to fully address the grounds of rejection previously set forth and maintained herein, as the prima facie case of obviousness is not based solely on suitability for intended use (MPEP 2144.07), but also based on the polyolefins taught by Schmidt being recognized as functionally equivalent to the polymers disclosed in Getty for use as the (B) synthetic emulsion polymer, in accordance with MPEP 2144.06(I) and/or 2144.06(II) – see FOA, ¶14; see ¶16 above. As such, Applicant’s assertions constitute a partial response to the grounds of rejection in an attempt to rebut the prima facie obviousness case.
Nevertheless, Applicant’s assertions (1) and (2) are not found persuasive for the following reasons. Regarding (1), Getty discloses that the requisite viscosity of the water-based adhesive composition (prior to drying/expansion) is 500-5,000 cP [Getty, 0074], wherein Schmidt teaches that the viscosity of the composition (prior to drying/expansion) is suitably from 50-3,000 cP [Schmidt, 0129]. The range disclosed by Schmidt substantially overlaps the requisite range specified by Getty – that is, the range taught by Schmidt encompasses the lower bound of, and is within the upper bound of the requisite range of Getty.
Regarding (2), Getty states that the water-based adhesive composition is expanded when subject to heat, such as radio-frequency energy (RF energy), e.g. RF frequency of 14 MHz (14,000,000 Hz) [Getty, 0038, 0069, 0080-0082]. Schmidt explicitly teaches that the composition is capable of expansion when subject to increased temperature (i.e. heat) via triggers such as ultrasound [Getty, 0015, 0036, 0049, 0131, 0134, 0148], of which one of ordinary skill in the art readily recognizes is any frequency above 20,000 Hz (20 kHz), as evidenced by the American College of Emergency PhysiciansU [p. 1] (copy provided herewith; see PTO-892 for corresponding citationU). Thus, Schmidt teaches that the composition, inclusive of the polyolefin as the synthetic emulsion polymer, is capable of, and suitable for, expansion when subject to any frequency above 20 kHz, and thus, capable of/suitable for expansion when subject to the preferred frequencies of Getty.
In view of the foregoing regarding (1) and (2), and given that Applicant has merely concluded that the presumptions (1 and 2 above) cannot be made in the absence of objective evidence in support of the asserted positions (see MPEP 2145(I)), it is the Examiner’s position that one of ordinary skill in the art would have reasonably understood and recognized that the polyolefins taught by Schmidt would be both suitable for the intended use as the (B) synthetic emulsion polymer in accordance with the requisite properties of Getty (MPEP 2144.07), as well as functionally equivalent to the other explicitly named polymers for (B) disclosed by both Getty and Schmidt (MPEP 2144.06(I), (II)).
For these reasons above, Applicant’s arguments have not been found persuasive.
Conclusion
All claims are identical to or patentably indistinct from prior to the entry of the submission under 37 CFR 1.114, and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Michael C. Romanowski whose telephone number is (571)270-1387. The Examiner can normally be reached M-F, 09:30-17:30.
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, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C. ROMANOWSKI/Primary Examiner, Art Unit 1782