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 .
DETAILED ACTION
This action is in response to applicant amendment received on 04/30/2026:
Cancelation of Claim 16, 24, 26 and 27 is acknowledged.
Amendments od Claims 19, 21 to 23, 25 and 28 to 30 are acknowledged.
Claim Objections
Claim 23 is objected to because of the following informalities: The Claim reads “A method, comprising”. The common practice is to indicate in the preamble the purpose of the method, such as –A method of using a corrugated shipping container, comprising--, as it was before the amendment, and the Examiner considers that the purpose was just accidentally removed on amendment.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claims 19, 21 to 23, 25 and 28 to 30 are rejected under 35 U.S.C. 103 as being unpatentable over Stenzel (US 3698548) in view of Shiffler (US 6564942), Goodrich (US 5667871) and Kuchar (US 2013/0240657).
Regarding Claims 22, 23 and 25:
Stenzel discloses providing a corrugated shipping container product to transport and dispense sheet material, comprising:
a shipping box having a plurality of perimeter walls surrounding an interior space (Figure 1, Box 10; made of a one-piece corrugated paperboard blank);
a roll of sheet material contained within said interior space, said roll of sheet material being wound around a core member (Figure 8 shows roll 15 wound around core 18 and spindle 19); and
said box including at abutment members at opposite sides of the core member arranged to support said roll of sheet material during shipping of the shipping container assembly (Figures 6 and 8, Column 2, lines 19 and 20, sockets 20 and 22 formed in the top and bottom portions 12 and 14 of the box 10);
wherein said perimeter walls of said shipping box include four contiguous rectangular panels having lengths greater than said axial length of said core member and of the spindle 19 (Figures 1 and 6, the closed box include a top formed of top panel 8, the bottom by bottom panel 42 and the two sidewalls, the four are considered four contiguous rectangular panels);
the roll of expandable slit sheet paper is shipped within said shipping box (Paragraph 22, the box 2 can be shipped and stored).
Stenzel does not disclose that core member has an axial length that is longer than an axial length of the roll such as to extend beyond at least one end of the roll or the abutment members at opposite sides of the core member arranged to support said roll of sheet material during shipping of the shipping container assembly.
Shiffler teaches a similar corrugated shipping container product to transport and dispense sheet material (Column 7, lines 57-58, carton for retention, suspension, and dispersal of rolls of web material), comprising a similar box, a roll of sheet material contained within its interior space, said roll of sheet material being wound around a core member (Figure 5, roll 30, of material 32 wound around a not numbered core member, has an axial length that is longer than an axial length of the roll material 32 such as to extend beyond both ends of the roll with ends 130 and 132); the length of the core allows for positioning roll 30 on abutment members at opposite sides of the core member arranged to abut said roll of sheet material during shipping of the shipping container assembly without the need of a spindle (Figure 3, end walls 40, 42 include abutting elements not numbered including interior walls 98 that limit the axial displacement of material 32 on roll 30 since the length of 130 and 132 is substantially the same as the width of the space 150, Column 5, lines 53-53).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Stenzel the teachings of Shiffler and make the core member of an axial length that is longer than an axial length of the roll such as to extend beyond at least one end of the roll so the roll can be supported in the abutment members without the need of a spindle and the make the abutting members at opposite sides of the core member abut to the roll of material to limit the axial displacement of the roll.
Stenzel does not disclose the sheet material being expandable slit sheet paper.
Goodrich teaches (Column 16, lines 59 to 64) that rolls of Hexagonal material can be shipped unexpanded due to configuration rigidity and consequent resistance to opening. With the hexagonal configuration, a balance is achieved between ease of opening by hand when wrapping an article and resistance to opening when rewinding. This provides a shipping and storage advantage; and having rolls of flexible expandable paper material allows for the use of increasing length (abstract, col. 2, lines 11-19). Among other things, the use of a continuous roll of unexpanded sheet material permits the user to withdraw a material of varying lengths.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Stenzel the teachings of Goodrich and store the slit material in roll form of unexpanded slit material to transport and dispense the roll of unexpanded sheet material and/or for having material able to use material of the appropriate length. Note that before being expanded there is no noticeable difference between the slit material and a regular sheet material.
As mentioned above, the modified invention of Stenzel discloses that the corrugated shipping container product is configured for shipping said roll of expandable slit sheet paper (Paragraph 22, the box 2 can be shipped and stored), also if the package is being shipped to a customer the dispensing can’t start until the container is received and placed in the working area; the walls of the corrugated shipping box, considered the same peripheral walls, are solid and free of openings.
The modified invention of Stenzel does not disclose that the walls obstruct dispensing through said solid walls a distal end of the expandable slit sheet paper extended from said roll of expandable slit sheet paper while said roll is within said shipping box. Stenzel includes a slot 24 that allows for dispensing with the shipping box closed. It has been held that the omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired (Ex parte Wu, 10 USPQ 2031) so it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention to make the container free of a dispensing slot if the container would be used only for shipping and storing, and dispensing would not be required.
If the rejection is argued,
As discussed above, Shiffler teaches a similar corrugated shipping container with walls that obstruct dispensing through said solid walls a distal end of the expandable slit sheet paper extended from said roll of expandable slit sheet paper while said roll is within said shipping box while the box is closed (Figure 7 show the box one step short of completely close).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Stenzel the teachings of Shiffler and make the container free of a dispensing slot if the container would be used only for shipping and storing and dispensing through a slot would not be required.
As mentioned above, the modified invention of Stenzel discloses the use of a core member and that the corrugated shipping container product is configured for shipping the roll of expandable slit sheet paper (Paragraph 22, the box 2 can be shipped and stored) and the roll being removable from the corrugated shipping container.
The modified invention of Stenzel does not specifically disclose the core member being a paper core or removing the roll of expandable slit sheet paper for placement on a separate dispenser for dispensing of said expandable slit sheet paper during use of said expandable slit sheet paper.
Kuchar teaches spiral wounding the expandable slit material on a paper core (Figure 21, Paragraph 0075, core 39 is made of cardboard, that will be considered paper) and in particular for large rolls as can be seen on the figures, placing a roll of expandable slit sheet paper on a separate dispenser for manually dispensing of said expandable slit sheet paper during use of said expandable slit sheet paper (Figures 4, 5, 6, 19 and 31 show different embodiments); the dispenser includes an improved braking mechanism that creates web tension to pull the paper from the roll more effectively, so simply pulling the web material on the opposite side from the rollers deploys and expands it simultaneously. Also, the unit can accommodate a plurality of rolls of web material mounted to deploy and expand either individually or simultaneously and can be motorized.
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Stenzel the teachings of Kuchar and store the slit material in roll form of unexpanded slit material on a paper core, as a lightweight and inexpensive recyclable material, and provide the shipping container and a separate dispenser, removing the roll of expandable slit sheet paper from shipping box to place it on the separate dispenser for manually dispensing of said expandable slit sheet paper as taught by Kuchar, in particular for large rolls, to provide a consistent braking system, having the capacity to dispense several rolls at the same time since that is a common practice in the art.
As discussed above, the modified invention of Stenzel discloses the invention as claimed, including manually dispensing the slit sheet paper material and placing the roll from the shipping container to the separate dispenser.
The modified invention of Stenzel does not specifically disclose having a particular user remove said roll of expandable slit sheet paper from said corrugated shipping container and place said roll of expandable slit sheet paper upon said separate dispenser.
The roll has to be placed in the separate dispenser, but it would not make any difference if the roll is taken from the shipping container by a user that is going to do the dispensing, a different person or if is automatically done, therefore it would have been obvious matter of design choice to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention to have the user that is going to do the dispensing remove the roll of expandable slit sheet paper from the corrugated shipping container and place the roll of expandable slit sheet paper upon said separate dispenser.
Regarding Claim 19:
Stenzel discloses that the abutment members include panels at opposite ends of the core member (Figures 6 and 7, end members 52, 54, 86 and 94 contain semicircular cutouts that support the core member, Note that Shiffler teach the same limitation ).
Regarding Claim 21:
Stenzel discloses that corrugated box includes a plurality of contiguous perimeter walls, and wherein said panels at opposite ends of the core member are corrugated panels folded inwardly from respective ones of said plurality of contiguous perimeter walls (Figures 6 and 7, the panels at opposite ends of the core member comprise end members 52, 54, 86 and 94, that are corrugated panels folded inwardly from the perimeter walls).
Regarding Claims 28 and 30:
As discussed for Claims 16 and 29 above, the modified invention of Stenzel discloses the invention as claimed.
The modified invention of Stenzel does not disclose if the core member extends at least one inch beyond said at least one end of said roll.
The extension of the core member would depend on factors such as the size of the roll, the size of the abutment members and the size of the place it is received on the separate dispenser.
it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention to have core member extends at least one inch beyond said at least one end of said roll since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding Claim 29:
Stenzel discloses that the panels include opposing sub-panels having side surfaces that extend parallel to said paper core at opposite sides of said paper core (Figures 3 and 6, the panels include side surfaces 48 and 84 on one end and 50 and 92 at the opposite end that extend parallel to the paper core at opposite sides of said paper core).
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive.
The Applicant argues that:
Notably, expandable slit sheet paper is generally employed in a commercial business setting for the wrapping and cushioning of goods and items placed within packages for mailing and delivery. As a result, the rolls of expandable slit sheet paper are larger and heavier duty than that of various unrelated materials described in the Stenzel and Shiffler references cited by the Patent Office, and the dispensing of the expandable slit sheet paper involves placement of these larger and heavier duty rolls within dispenser devices capable of supporting such expandable slit sheet paper and capable of achieving expansion of the expandable slit sheet paper dispensed therefrom.
The Examiner notes that the claims do not include limitations regarding weight or size and the claimed structure of the corrugated shipping container requires just the perimeter walls and the abutment members. Regarding the dispensing device, the claimed method just requires placing the roll on a separate dispenser, no structure is claimed for such dispenser.
The Applicant later argues that:
none of the cited references teaches or suggests employing a "core member [that] has an axial length that is longer than an axial length of the roll such as to extend beyond at least one end of the roll" in the context of an expandable slit sheet paper (underlined by the Examiner). Moreover, there is no teaching or suggestion for increasing the length of the core of the Goodrich reference because, e.g., the expandable slit sheet paper of Goodrich differs substantially from that of the other cited references.
The Examiner has to disagree. The Goodrich places the unexpanded sheet material in rolls that do not differ from any roll of sheet material, the unexpanded sheet material of Goodrich on Figure 12 is placed on a roll on rewind rollers 114 resulting on a continuous sheet in roll form same as any sheet material. Surely Goodrich does not mention a core member or much less a core member that has an axial length that is longer than an axial length of the roll such as to extend beyond at least one end of the roll, but the teachings of Goodrich are not used for that. The teachings of Shiffler were used for that limitation and given that no difference is disclosed between a roll of regular sheet material or a roll of “unexpanded” sheet material the teachings of Shiffler are considered valid.
The Applicant later argues that:
none of the cited references even teaches or relates to shipping of rolls of material independently from a dispenser, much less teaching a method for shipping of the larger and heavier duty expandable slit sheet paper on a core member that has an axial length that is longer than that of the roll.
Again, the Examiner has to disagree. As discussed in the action the references disclose shipping in the corrugated container, and as discussed in the action, it has been held that the omission of an Element and Its Function Is Obvious if the Function of the Element Is Not Desired and additionally Shiffler teaches a similar container without a dispenser. The axial length of the core was discussed above and the fact that the roll is “larger and heavier duty” is not really part of the claims.
The Applicant later argues that:
the present inventor discovered that an improved and advanced resistance mechanism can be provided that applies resistance to an extended core rather than against the expandable slit sheet paper itself. Prior to the present invention, no one had identified or appreciated the advantages of applying resistance to an extended core for an expandable slit sheet paper, nor that improving such resistance would greatly facilitate manual expansion of expandable slit sheet paper. Additionally, the present inventor further discovered that despite expandable slit sheet paper being larger and heavier duty, an advantageous shipping method of expandable slit sheet paper for application on appropriate dispenser system can be achieved as set forth in the present claims.
The Examiner can’t agree or disagree with this arguments, but surely in someway including the structure to obtain such results would most likely overcome the art of record.
Finally, the Applicant argues that “Stenzel device cannot even be used to dispense such non-analogous product of Goodrich” but fails to indicate why. That “there is no reasonable basis to seek to somehow modify other aspects of the Stenzel device based on the Kuchar reference” but fails to indicate why. That “The Shiffler reference plainly does not even remotely contemplate application or use with expandable slit sheet papers”, and the Examiner agrees on that point, that is why the reference Goodrich was used that teaches placed unexpanded sheet material on a roll same as any other sheet material. No significant difference is claimed between a roll of unexpanded sheet material and regular sheet material beyond the slits on the sheet, that as seen on Goodrich does not impede placing the material in a roll.
Upon revision of the Specification and Figures the Examiner has seen several differences between the “corrugated shipping container” of the invention and the prior art. Maybe an interview to discuss this matter would have a more positive outcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In particular Shiffler (US 6564942) could have been used for a proper rejection of the independent claim, same as Danenbauer (US 247251), Burt (US 3262620), Hurh (US 4998656), and Anderson (US 5971150); Shimura (US 5511663) teaches a case body for storing a wrap film with no openings or mentions for dispensing.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 EDUARDO R FERRERO whose telephone number is (571)272-9946. The examiner can normally be reached M-F 9:30-7:00.
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, SHELLEY SELF can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDUARDO R FERRERO/Examiner, Art Unit 3731
/ROBERT F LONG/Primary Examiner, Art Unit 3731
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