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 – First Action Final After RCE Filing
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 after the Final Rejection dated 26 November 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under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the FOA has been withdrawn pursuant to 37 CFR 1.114.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 26 May 2026 has been entered.
All claims are patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) 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.
Response to Amendment
The Amendment filed 26 May 2026 in response to the FOA has been entered. Claims 11-12 have been canceled, and each of claims 1, 19, and 22-23 have been amended to include the limitations previously defined by claims 11-12. As such, claims 1-10 and 13-26 remain pending, claim 23 remains withdrawn, and claims 1-10, 13-22, 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, 7-10, 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”) and Ding et al. (US 2004/0228886; “Ding”) (all references 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 along 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 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.
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].
The heat-expandable microspheres (C) include a reactive blowing agent such as a hydrocarbon present in a core (inner core material) defined/enclosed by an outer polymeric shell (e.g., polyacrylonitrile shell) [0075-0079, 0082]. Getty discloses that heat-expandable microspheres commercially available under the trade names Expancel™ and Dualite™ are suitable for use [0076].
Getty is silent regarding the emulsion polymer(s) (B) being (or including, relative to those species disclosed therein) one or more polyolefins, and silent regarding the polymeric shell of the microspheres (C) being formed from or including a polyolefin.
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.
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] (explicitly disclosed/recognized by Getty).
Getty, Schmidt, and Ding each constitute prior art which is directly analogous to the claimed invention, in light of the aforecited disclosures/teachings.
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 claimed invention to (1) have modified the water-based expandable adhesive composition of Getty by having utilized a polyolefin, such as polyethylene or polypropylene, as the synthetic emulsion polymer (B) – in addition or alternatively to the polymeric species disclosed therein (see ¶12 above) – as the aforesaid polyolefin 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 (MPEP 2144.07), as well as functionally-equivalent to other synthetic polymers (MPEP 2144.06(I) and (II)) which are also explicitly named as suitable for the aforesaid intended use (e.g., polyurethanes, EVA, styrene-based acrylics, etc.).
Further, it also would have been obvious to (2) have modified the water-based expandable adhesive composition of Getty by having utilized a polyethylene-based (polyolefin) polymer as the outer polymeric shell of the heat-expandable microspheres (C) in the alternative to, or in combination with, polyacrylonitrile, as polyethylene would have been recognized as suitable for said intended use (MPEP 2144.07) and/or functionally equivalent to the aforesaid species of thermoplastic polymer for forming the outer shell of the heat-expandable microspheres (C) (MPEP 2144.06(I) and (II)).
In accordance with the foregoing modifications (1) and (2), the one or more synthetic emulsion polymer(s) (B) of the water-based expandable adhesive composition of Getty (hereinafter “modified Getty”) would have been a polyolefin such as polyethylene or polypropylene, or a combination of said polyolefin and one or more of the polymeric species set forth above (¶12), and the outer polymeric shell of the heat-expandable microspheres (C) would have been formed from polyethylene or a combination of polyethylene and polyacrylonitrile.
The protective packaging article (e.g., envelope) of modified Getty reads on the protective article defined by each and every limitation of claim 1.
Regarding claim 2, the rejection of claim 1 above reads on the protective article defined by 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 rejection of claim 2 above, Getty discloses that the envelope is manufactured on a continuous manufacturing line, where envelopes are in the form of a continuous web prior to being cut into individual envelopes and undergoing treatment to effect expansion of the expandable adhesive to form the padding of the envelope [0009, 0127-0145; Figs. 4A, 5-10]. The protective packaging article of modified Getty, in accordance with the aforecited disclosure, reads on the protective article defined by claim 3.
Regarding claims 4-5 and 7, the rejection of claim 1 above reads on each protective article defined by the respective limitations of claims 4, 5, and 7. That is, the one or more synthetic emulsion polymer(s) (B) of the adhesive composition of modified Getty comprises a polyolefin that is polypropylene (claim 4, wherein the one or more polyolefins is thermoplastic; claim 5, wherein the one or more polyolefins comprises a polypropylene-based thermoplastic polymer; claim 7, wherein the propylene-based thermoplastic polymer is polypropylene) or polyethylene (claim 4, wherein the one or more polyolefins is thermoplastic; claim 5, wherein the one or more polyolefins comprises a polyethylene-based thermoplastic polymer).
Regarding claims 8-9, in view of/as set forth in the rejection of claim 1 above, Getty (as modified) discloses that the heat-expandable microspheres (C) include a reactive blowing agent such as a hydrocarbon present in the core of the outer shell of the microsphere [0075-0079, 0082], thereby reading on each protective article defined by the respective limitations of claim 8 (wherein the expandable microspheres comprise a blowing agent) and claim 9 (wherein the expandable microspheres comprise a reactive component, a chemical catalyst, or a combination thereof). It is noted that, as set forth/cited above, Getty recognizes/suggests use of commercially available expandable microspheres under the trade names of Expancel™ and Dualite™ [0076].
Regarding claim 10, in view of the rejection of claim 8 above, Getty discloses the blowing agent being a hydrocarbon, but does not explicitly disclose the species of hydrocarbon. Schmidt teaches that the blowing agent of the microspheres is a hydrocarbon, such as, inter alia isobutane [0093-0098, 0107]. In view of MPEP 2144.06 and MPEP 2144.07, and given that Getty [0076] and Schmidt [0094] each disclose/recognize the same commercially available expandable microspheres as suitable for use, 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 isobutane (or any other blowing agent taught by Schmidt [0098]) as said blowing agent of the heat-expandable microspheres (C) of modified Getty (wherein the expandable microspheres comprise the blowing agent comprising isobutane).
Regarding claims 13-15, the rejection of claim 1 above reads on each protective article defined by claim 13 (wherein the expandable microspheres comprise a hydrocarbon, water or a combination thereof), claim 14 (wherein the expandable microspheres are configured to be activated thermally), and claim 15 (wherein the expandable microspheres are configured to expand upon activation, thereby expanding the emulsion polyolefin dispersion).
Regarding claims 16-17, the rejection of claim 1 above reads on each protective article defined by claim 16 (wherein the emulsion polyolefin dispersion is configured to solidify after expanding) and claim 17 (wherein the expandable composite is provided in the expansion spaces in an amount that is sufficient for providing cushioning to a product contained in the container cavity after expansion of the emulsion polyolefin dispersion).
Regarding claim 18, the rejection of claim 1 above reads on the protective article defined by 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 claim 19, the rejection of claim 1 above is incorporated herein by reference (not repeated for sake of brevity) and reads on the protective article defined by each and every limitation of claim 19.
Regarding claims 20-21, the rejection of claim 19 above, having incorporated therein the rejection of claim 1, reads on each protective article defined by claims 20-21.
Regarding claim 22, the rejection of claim 1 above is incorporated herein by reference and reads on the protective article defined by each and every limitation of claim 22.
Regarding claim 24, the rejection of claim 1 above reads on the protective article defined by claim 24 – each layer of each wall (i.e., all 4 superimposed plies) of the protective packaging article of modified Getty is suitably formed from paper.
Regarding claim 25, in view of the rejection of claim 20 above, the rejection of claim 19 above having incorporated therein the rejection of claim 1 reads on the protective article defined by claim 25 – each layer of each wall (i.e., all 4 superimposed plies) of the protective packaging article of modified Getty is suitably formed from paper.
Regarding claim 26, the rejection of claim 22 above having incorporated therein the rejection of claim 1 reads on the protective article defined by claim 26 – each layer of each wall (i.e., all 4 superimposed plies) of the protective packaging article of modified Getty is suitably formed from paper.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Getty in view of Schmidt and Ding as applied to claim 5 above, further in view of Brandolini et al. (US 2004/0000581; “Brandolini”) (previously cited).
Regarding claim 6, as set forth above in the rejection of claim 5, the polyolefin (B) included in the adhesive composition of modified Getty is suitably polyethylene or polypropylene.
Modified Getty does 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 polyethylene constituting polyolefin (B) of the composition of modified Getty. The resultant protective packaging article of modified Getty reads on the protective article defined by claim 6 (wherein the ethylene-based thermoplastic polymer comprises low-density polyethylene (LDPE)).
Response to Arguments
Applicant’s arguments presented on pp. 9-11 of the Remarks filed 26 May 2026 (hereinafter “Remarks”) have been fully considered by the Examiner but not found persuasive.
On p. 9 of the Remarks [¶6], Applicant states (1) “The Office Action appears to base its conclusion of suitability for intended use on Getty’s statement that Expancel® can be used as expandable microspheres and Ding’s statements that the density reducer can be Expancel® or polyethylene, inter alia. However, this conclusion is not supported.” Thereafter, Applicant asserts (2) that while Expancel® and polyethylene may be interchangeably used as the density reducer in Ding, the same cannot be concluded for Getty as the performance requirements of Getty and Ding are entirely different.
Applicant then asserts (3a) that the ability of the heat-expandable microspheres disclosed by Getty is based at least in-part on the glass transition temperature (Tg) and elastic modulus (E) of the polymeric shell which softens and is expanded by the enclosed gas upon exposure to heat, wherein (3b) the Tg (95° C) and E (3.1-3.8 GPa) of polyacrylonitrile utilized to form the outer shell of the microspheres of Getty, respectively, are significantly lower and higher, respectively, than the Tg and E values for each of polyethylene (LDPE Tg 270° C, E 0.15-0.24 GPa; HDPE Tg 300°C, E 0.55-1.0 GPa) and polypropylene (Tg 253°C, E 1.2-1.7 GPa) [Remarks, p. 10–p. 11]. In view thereof, Applicant then takes the position (4) that it cannot be concluded that polyolefins such as polyethylene or polypropylene would be suitable to form the outer shell of the microspheres of Getty.
It is the Examiner’s position that Applicant has misconstrued the basis of the grounds of rejection which establish the prima facie case of obviousness, and/or that Applicant is taking an unduly narrow interpretation of the grounds of rejection and the cited disclosures/teachings of both Getty and Ding relied upon in support thereof. Though supported by MPEP 2144.07, the grounds of rejection are not based merely/simply upon Getty’s disclosure of Expancel® taken in view of Ding’s teachings of Expancel® and polyethylene being suitable density reducers, as characterized by Applicant.
First, while the performance requirements between Getty and Ding may be different as asserted, the performance requirements of Ding are not relied upon in, or pertinent to, the grounds of rejection – Ding is relied upon as a secondary/teaching prior art reference which is analogous to the claimed invention, and as such, the performance requirements of Ding are not required to be incorporated into/exhibited by the protective packaging article of Getty. Applicant is respectfully directed to MPEP 2145(III), which indicates that the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference…rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art. Further, “[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.” Furthermore, “Combining the teachings of references does not involve an ability to combine their specific structures.”
In view of the foregoing, it is noted second that Getty explicitly states that the heat-expandable microspheres “may be made from a variety of materials, but generally have a polymeric shell and a hydrocarbon core” [0075], and that the microspheres have an initial expansion temperature ranging from about 35-110° C and a max. expansion temperature of about 50-150° C [0075]. Thereafter, Getty names Expancel® and Dualite® as useful microspheres, of which have shells formed from polyacrylonitrile [0076]. Thus, Getty reasonably teaches one of ordinary skill in the art that the polymeric shell may be formed from any polymeric material, such as polyacrylonitrile, so long as the expandable microspheres exhibit initial and max. expansion temperatures within the aforesaid ranges – that is, the expandable microspheres of Getty are not limited to Dualite® or Expancel®, and the polymer forming the shell is not limited to polyacrylonitrile, based upon the plain and explicit reading of Getty, and in view of MPEP 2123(I) and (II). Applicant is respectfully directed to the aforecited MPEP sections, which indicate that the use of patents as references is not limited – they are part of the literature of the art and relevant for all they contain, and may be relied upon for all that would have been reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure or nonpreferred embodiments.
The “density reducer” of Ding is heat-expandable microspheres having a temperature-sensitive expandable gas, such as a hydrocarbon, disposed within a thermoplastic polymer shell and capable of increasing the volume of, or rupturing, the shell [Ding, 0069, 0073-0075]. Ding explicitly teaches that the thermoplastic polymer forming the shell may be, inter alia an ethylene-based polymer, copolymer, or derivative thereof, such as polyethylene, polystyrene, or vinyl chloride-acrylonitrile copolymer [Ding, 0075]. Ding also recognizes/discusses use of Expancel® gas-filled microspheres as the density reducer, the Expancel® microspheres – like those encompassed in the preceding paragraphs of Ding – being capable of expansion. Further, Ding also explicitly recognizes polypropylene as [another] suitable thermoplastic which can be utilized to form the heat-expandable microspheres as an alternative to Expancel® [Ding, 0079]. As such, Ding reasonably teaches that polyethylene is a suitable thermoplastic polymer for forming the shell of the microspheres, and a known/suitable/functionally-equivalent alternative to acrylonitrile-based copolymers for forming said shell; and reasonably teaches that polypropylene is a suitable thermoplastic polymer for forming the shell of the microspheres as an alternative to Expancel®, i.e., a polyacrylonitrile-based shell. The disclosure/teachings of Ding sufficiently establish the functional equivalence of polyethylene and polypropylene relative to polyacrylonitrile for the intended use as the polymeric outer shell of the expandable microspheres, in accordance with MPEP 2144.06 and MPEP 2144.07.
Third, in consideration of Applicant’s assertions (3a), (3b), and (4) above, it is noted that – as stated above – the heat-expandable microspheres (C) disclosed by Getty are not required to be formed from polyacrylonitrile as asserted by Applicant, but rather may be made from any polymeric material (MPEP 2123(I) and (II)). Thus, Applicant’s comparison of the Tg and E of polyethylene and polypropylene to that of polyacrylonitrile corresponding to assertions (3a) and (3b) above, in support of the (4) position above, is based on an unduly narrow interpretation of the disclosure of Getty and the grounds of rejection as a whole, and is not found persuasive or probative so as to sufficiently rebut the prima facie case of obviousness for at least this reason. However, additionally, it is the Examiner’s position, respectfully, that the property values (e.g., Tg) for LDPE, HDPE, and PP cited and relied upon by Applicant in the table on p. 11 of the Remarks are incorrect, wherein it is noted that Applicant has not provided any corresponding copies of the evidentiary references cited on p. 11 of the Remarks. For example, Applicant asserts that the Tg of LDPE is 270° C, and that of HDPE is 300° C. However, one of ordinary skill in the art readily recognizes-, and the Examiner contends that is well-known-, that the Tg of each of LDPE and HDPE is well below 0° C, and is actually closer to/on the order of -100° C (or less); and that the Tg of PP is about 0° C, or higher/lower depending on copolymerized monomers, polymerization process, etc., but nevertheless significantly lower than that of polyacrylonitrile. LDPE and HDPE are both relatively flexible, soft polymeric materials at room temperature because they are in a state above their glass transition temperature; PP at room temperature is also above its Tg. In consideration of the foregoing, and in direct contrast to Applicant’s assertions (3a) and (3b) and position (4) above, it can be reasonably concluded, based on the disclosure/teachings of Getty and Ding, that polyethylene and polypropylene would have been readily recognized as suitable for the intended use in forming the outer polymeric shell of the heat expandable microspheres (C) of Getty.
In view of the totality of the foregoing, the Examiner maintains that the use of polyethylene or polypropylene in place of polyacrylonitrile, or in combination with polyacrylonitrile for forming the outer shell of the heat-expandable microspheres (C) of the composition of Getty would have been prima facie obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention.
For the reasons above, Applicant’s arguments, individually and in totality, have not been found persuasive.
Conclusion
All claims are patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) 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.
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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