DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1, 4, 8-9 is/are pending.
Claim(s) 1, 4, 8-9 is/are rejected.
Claim(s) 2-3, 5-7 is/are cancelled.
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 .
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 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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/06/2025 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or 120 or 121 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed applications, U.S. Application No. 16/394,583 (filed 04/25/2019) and U.S. Application No. 15/442,526 (filed 02/24/2017), and Provisional Application No. 62/299,471 and Provisional Application No. 63/181,854 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Application(s) which fail(s) to provide support for materials which are repulpable and contain seeds (claim 1):
• U.S. Application No. 16/394,583 (filed 04/25/2019);
• U.S. Application No. 15/442,526 (filed 02/24/2017);
• Provisional Application No. 62/299,471 (filed 02/24/2016).
Application(s) which fail(s) to provide support for coverings containing starch (claim 1) or a shipping sleeve system (claim 1).
• Provisional Application No. 63/181,854 (filed 04/29/2021).
Therefore, claims 1, 4, 8-9 have an effective filing date of 04-MAR-2022.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim(s) 1, 4, 8-9 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 is vague and indefinite because the claim fails to clearly set forth the structural or positional or spatial or functional relationship between components i)-iv) and components v)-vii). For example, it is unclear: (1) whether one or more of components v)-vii) are attached to one or more components i)-iv); (2) which of components i)-iv) or components v)-vii) are outward-facing, inward-facing, upward-facing, and/or downward-facing; etc.
For the purposes of the present Office Action, the phrase “a shipping sleeve system” is interpreted as encompasses any combination of components i)-iv) and components v)-vii) in any positional and/or structural and/or functional and/or usage relationship.
Claims 4, 8-9 are dependent on one or more of the above claims and therefore incorporate the above-described indefinite subject matter.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
STAMETS (US 2008/0046277) or STAMETS (US 2008/0005046),
in view of HENDERSON ET AL (US 2020/0071056),
and in view of EP 2482628 B1 (FU-EP ‘628-B1),
and in view of CARDINALE (US 2019/0248572),
and in view of CARDINALE (US 2019/01000371),
and in view of VAN KERREBROUCK ET AL (US 2009/0188091),
and in view of AKSAN ET AL (US 2022/0380112).
CARDINALE (US 2019/01000371) and CARDINALE (US 2019/0248572) have a common inventor with the instant application. Based upon the earlier publication date of the reference (i.e., 08/15/2019), the CARDINALE references constitutes prior art under 35 U.S.C. 102(a)(1).
STAMETS ‘277 and STAMETS ‘046 each disclose cellulose-based sheets and products (e.g., corrugated and non-corrugated cardboard; recycled cardboard; linerboard; paperboard; card stock; kraft paper; shredded materials; hydromulch; etc.) having seeds coated on and/or embedded in said paper products, and wherein the paper products help to retain moisture and/or provides shade and/or cooling in order to promote seed growth when laid on and/or buried in soil. The seed-containing cellulose-based sheets and products are biodegradable, repulpable (e.g., for use as hydromulch and/or hydroseeding, etc.), recyclable, and reusable (e.g., as shredded material, etc.), and can be used to form boxes or containers, and/or used to form inserts or cushioning for boxes or containers. Seed-friendly natural glues (e.g., starch-based glues, etc.) can be used in the production of articles (e.g., corrugated cardboard, and boxes or containers made therefrom, etc.) from the disclosed seed-containing paper sheets and products (e.g., utilizing recycled cardboard, etc.). (STAMETS ‘277, entire document, e.g., paragraph 0002, 0018-0020, 0031, 0038-0040, 0044-0046, 0048, 0050-0054, 0056, 0058-0059, etc.) (see corresponding portions of STAMETS ‘046) However, the reference does not specifically discuss: dimensions of insulation materials; the use of starch materials; or specific shipping sleeve systems.
HENDERSON ET AL ‘056 discloses that it is well known in the art to form a repulpable insulation materials comprising: (i) at least one paper facer (e.g., kraft paper, etc.); and (ii) a batt comprising paper particles; wherein the insulation material has a typical thickness of 1-3 inches and a typical density of 1-7 lbs/ft3, in order to provide recyclable, repulpable insulating materials (e.g., insulating inserts, etc.) for boxes or packaging. (paragraph 0002-0004, 0013-0014, 0026, 0033-0034, 0040, etc.)
FU-EP ‘628-B1 discloses that it is well known in the art to utilize starch-based coatings and/or adhesives to adhere seeds to the inner and/or outer surfaces of sheets (e.g., paper, kraft paper, paperboard, etc.). (Figure 5, 7, etc.; paragraph 0013, 0015, 0030, 0032, etc.)
CARDINALE ‘572 discloses that it is well known in the art to form an insulating shipping sleeve for insertion in a container (e.g., a box, etc.), wherein the self-supporting, foldable, non-leaking shipping sleeve comprising a first end, and a second end with box wings as recited in application claim 7, wherein the sleeve is made of recyclable materials, and wherein the box wings fold upward when the sleeve is inserted into a box or container as recited in claim 8. (Figure 1-8; paragraph 0003, 0012-0015, 0041-0048, etc.)
CARDINALE ‘371 discloses that it is well known in the art to provide a shipping container (700) (e.g., a box, etc.) with an insulated liner (600, 610), wherein the insulated liner (610) comprises a polyester wadding system (100):
• a first pure polyethylene terephthalate (PET) film (110), wherein the first PET film further comprises an amorphous (non-crystallized) PET layer on the inward-facing surface of the first PET film;
• a rigid wadding layer (130) made of PET fiber;
• a second pure PET film (140), wherein the second PET film further comprises an amorphous (non-crystallized) PET layer on the inward-facing surface of the second PET film;
(Figure 1, 7-9, etc.; paragraph 0007, 0053, 0078, etc.)
VAN KERREBROUCK ET AL ‘091 discloses that it is well known in the art to combine staple PET fibers with amorphous PET binder fibers to allow for selective heating and melting which provides fibrous insultation materials with desired, readily controlled degrees of stiffness or rigidity. (paragraph 0013, 0034-0035, 0037, 0053, etc.)
AKSAN ET AL ‘112 discloses that it is well known in the art to form nested insulative shipping systems comprising a combination of: (a) an outer box (102) with an insulating material (106, 108) lining the interior of the outer box; (b) an additional inner product-containing container (180). (Figure 1-2, 5, etc.; paragraph 0003-0004, 0021, 0035, etc.)
Regarding claims 1, 4, 9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make biodegradable, repulpable, recyclable, reusable cellulose-based sheets (e.g., known paper products such as corrugated and non-corrugated recycled cardboard, etc.) containing seeds, which can be used to grow plants after usage, wherein the cellulose-based sheets retain moisture and provides protection from heat (e.g., acting as shade and thermal insulation from the sun, etc.) as disclosed in STAMETS ‘277 and STAMETS ‘046.
Further regarding claim 1, it is well known in the art that cellulosic paper products (e.g., paper, cardboard, etc.) are capable of absorbing moisture (e.g., humidity in the air, etc.).
Further regarding claim 1, it is well known in the art that corrugated cardboard can provide some degree of insulative properties due to the air trapped between layers.
Further regarding claim 1 , it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a biodegradable, repulpable seed-containing paper (or linerboard, kraft paper, etc.) in accordance with STAMETS ‘277 or STAMETS ‘046 as one or both of the paper facer(s) (and optionally as the paper particle batt material) in the repulpable insulation materials of HENDERSON ET AL ‘056, in order to provide an environmentally friendly means of disposing, recycling, and/or reusing the insulation material after initial usage as packaging insulation (e.g., by allowing the insulation to be placed on or in soil to produce plants).
Further regarding claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize a known, seed-friendly starch-based coating or adhesive as suggested in FU-EP ‘628-B1 as a covering layer or coating for the cellulose-based sheets and products of STAMETS ‘277 or STAMETS ‘046 in order to better secure the seeds to the surface of paper or cardboard sheets.
Further regarding claims, 1, 8-9, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the biodegradable, repulpable seed-containing paper (or linerboard, kraft paper, etc.) or cardboard (corrugated or non-corrugated) in accordance with STAMETS ‘277 or STAMETS ‘046 to form at least part of a packaging insert having a known self-standing configuration as disclosed in CARDINALE ‘572 in order to provide an environmentally friendly, self-standing insulating sleeve or insert for packaging, wherein the sleeve or insert can be easily disposed, recycled, and/or reused after its initial usage as packaging insulation (e.g., by allowing the sleeve or insert to be placed on or in soil to produce plants, as is or utilized as hydromulch, etc.).
Further regarding 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine: (i) a known packaging insert having a known self-standing configuration (corresponding to the recited “sleeve structure” with components “i)” and “ii)” and “iii)” and “iv)”) as disclosed in CARDINALE ‘572 made from a known biodegradable, repulpable seed-containing paper (or linerboard, kraft paper, etc.) or cardboard (corrugated or non-corrugated) in accordance with STAMETS ‘277 or STAMETS ‘046; with (ii) a known outer container (e.g., box) lined with an PET-only insulating material (corresponding to recited components “v)” and “vi)” and “vii)”) as disclosed in CARDINALE ‘371; -- e.g., the insulated box of CARDINALE ‘371 (Figure 9) functioning as outer container (200) for the sleeve (160) of CARDINALE ‘572 -- in order to make nested insulated packaging system for shipping (corresponding to the recited “shipping sleeve system”) as suggested by AKSAN ET AL ‘112 with a high degree of insulation effectiveness, wherein: (i) the insulating liner of the outer box contains only PET and is therefore readily recyclable; and (ii) the inner packaging insert can be easily disposed, recycled, and/or reused after its initial usage as packaging insulation and/or product holder (e.g., by allowing the sleeve or insert to be placed on or in soil to produce plants, as is or utilized as hydromulch, etc.).
Further regarding claim 1, one of ordinary skill in the art would have utilized a mixture of staple PET fibers with amorphous PET binder fibers (as suggested in VAN KERREBROUCK ET AL ‘091) to form the wadding layer (130) in the PET-only insulation materials of CARDINALE ‘371 in order to produce mono-material insulation materials which are easily recyclable.
Regarding claim 4, one of ordinary skill in the art would have utilized recycled unbleached (corresponding to the recited “brown kraft color”) cardboard as a component in the cellulose-based sheets of STAMETS ‘277 or STAMETS ‘046 to promote recycling of cardboard materials and reduce landfill waste.
Response to Arguments
Applicant's arguments filed 06/06/2025 have been considered but are moot because the new grounds of rejections necessitated by the Claim Amendments filed 06/06/2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
MUSTAFA ET AL (US 2009/0078699) and COLLISON (US 2014/0319018) and COLLISON (US 2019/0248573) disclose insulated containers containing nested interior holders or payload containers.
CHASE ET AL (US 2017/0369226) disclose insulation material made from PET films and fibers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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September 27, 2025
/VIVIAN CHEN/Primary Examiner, Art Unit 1787