DETAILED ACTION
Claim Status
Claim(s) 1, 4-5, 7-8, 13-18, 20, 23-25, 27-28, 30-35 is/are pending.
Claim(s) 1, 4-5, 7-8, 13-18, 20, 23-25, 27-28, 30-35 is/are rejected.
Claim(s) 2-3, 6, 9-12, 19, 21-22, 26, 29 have been cancelled by Applicant.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/04/2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 08/28/2023 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent issuing from U.S. Application No. 17/197,780 (LEITER) (now U.S. Patent No. 11,745,484) has been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting
The provisional rejections on the ground of nonstatutory double patenting in the previous Office Action mailed 04/27/2023 based on U.S. Application No. 17/197,780 (LEITER) (now U.S. Patent No. 11,745,484) has been withdrawn in view of the Terminal Disclaimer filed 08/28/2023.
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, 4-5, 7-8, 13, 15-18, 20, 23-25, 27-28, 30-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
EP 0 812 779 (MATSUDA-EP ‘779),
in view of OWENSBY ET AL (US 2012/0213896),
and in view of MITA ET AL (US 6,596,355),
and in view of PINKSTONE (US 2014/035307),
and in view of UTLEY (US 5,465,842),
and in view of ANDERSON (US 2012/0141640),
and in view of NAKANO ET AL (US 2013/0079457).
MATSUDA-EP ‘779 discloses barrier packaging laminates, wherein said packaging laminates comprise:
• an optional paper layer;
• a gas barrier film comprising:
• a first metal oxide coating (e.g., containing aluminum oxide, silicon oxide, mixtures thereof, etc.) (corresponding to the recited “metal oxide layer”) with a typical thickness of 5-800 nm;
• a plastic film (e.g., polyethylene terephthalate, etc.) (corresponding to the recited “second polymer film”) with a typical thickness of 1-500 microns which is stretched both longitudinally and perpendicular to the longitudinal direction (i.e., biaxially oriented);
• an optional second metal oxide coating (e.g., containing aluminum oxide, silicon oxide, mixtures thereof, etc.) with a typical thickness of 5-800 nm;
• an optional additional polymer layer (e.g., a heat seal layer; unoriented polypropylene film; etc.) (corresponding to the recited “first polymer film”);
wherein the plastic and polymer films in the packaging laminate can be transparent. The packaging laminate can be used to form ovenable and/or microwavable packaging laminates or wrapping materials (e.g., for frozen food products, etc.). The barrier packaging laminates can be formed by:
(i) providing a plastic film which is biaxially oriented;
(ii) coating the plastic film with a metal oxide coating on one or both sides to form a gas barrier film;
(iii) bonding the gas barrier film to one or more additional layers (e.g., paper layer, unoriented polypropylene, etc.) by dry lamination using an adhesive layer;
wherein the barrier laminates can be used to form a package or wrapping material by sealing the laminate to form a package (e.g., a three-sided seal bag; a four-sided seal bag, etc.) containing a space for a food product, wherein the laminate can comprise the entirety of the package or wrapping material. (line 59-60, page 2; line 10-15, 27-55, page 3; line 45-60, page 5; line 35-46, 52-54, page 6; line 5-12, page 7; line 34-36, page 8; line 27-38, 53-6, page 24; etc.) However, the reference does not specifically disclose the structure formed using the wrapping material or the weight of paper used in packaging.
OWENSBY ET AL ‘896 discloses that it is well known in the art to form cook-in ovenable and/or microwavable packaging which completely encase a food product, wherein the packaging can be formed by: (i) using two sheets of a packaging material (50, 55) using four seal areas (60, 70, 65) along the four sides of the package; or alternatively (ii) using a single sheet which is folded over using three seal areas (60, 70) along three edges of the package, with the previous bottom seal area (65) being replaced by the fold in the single sheet. (Figure 3a-3b, etc.; paragraph 0074-0075, 0077, etc.)
MITA ET AL ‘355 discloses that it is well known in the art that non-oriented polypropylene film layers can be used as sealant layers in microwavable packaging for food products, wherein the sealant layer has a typical thickness of 20-60 microns. The reference further discloses that it is well known that other alternative sealant layers can be used (e.g., ethylene-(meth)acrylic acid copolymer films; ionomer films, etc.) as sealants for microwavable packaging. (line 30-62, col. 9; etc.)
PINKSTONE ‘307 discloses that it is well known in the art to use paper or paperboard with a typical weight of about 15-60 lb/ream (about 24-96 g/m2) or about 20-40 lb/ream (about 32-64 g/m2) to form a microwavable packaging material for encasing food products. The reference further discloses that it is well known in the art to incorporate apertures or openings in the paper layer in microwavable packaging in order to permit view of the package contents. (Figure 3, 6, etc.; paragraph 0005, 0041, etc.)
UTLEY ‘842 discloses that it is well known in the art to incorporate openings (50) (corresponding to the recited “aperture”) in the paper layers of polymer/paper laminate packaging materials for perishable goods in order to provide viewing windows (40) which permit viewing of the package contents through the polymer layer (58). (line 8-30, col. 1; line 62-68, col. 2; line 39-54, col. 3; line 39-53, col. 4; etc.)
ANDERSON ‘640 discloses that it is well known in the art to incorporate openings (32) (corresponding to the recited “aperture”) in the paper layers of polymer/paper laminate packaging materials used to heat food products (e.g., in ovens or microwaves) in order to provide viewing windows (18) which permit viewing of the heatable package contents through the polymer layer. (paragraph 0007, 0009, 0013, 0026, etc.)
NAKANO ET AL ‘457 discloses that it is well known in the art to utilize heat-sealable layers containing: ethylene-(meth)acrylic acid copolymers; and ionomers; capable of forming a seal strength of between 5-10 N/15 mm when sealed at relatively low temperatures (e.g., 160 ºC or lower) in order to form peelable seals for packaging. (paragraph 0047-0050, etc.)
Regarding claims 1, 4-5, 7-8, 13, 15-18, 20, 24-25, 28, 31-35, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize barrier packaging laminates of MATSUDA-EP ‘779 containing a paper layer as a wrapping material for completely encasing a food product, wherein the wrapping material can be a conventional cook-in package or food wrap configuration utilizing three or four sealed edges for partially or completely encasing a food product, as suggested by OWENSBY ET AL ‘896.
Further regarding claims 1, 13, 24, 28, 32-33, 35, one of ordinary skill in the art would have selected the weight (e.g., about 24-96 g/m2, as suggested by PINKSTONE ‘307) and flexibility of the paper layer in the barrier packaging laminates of MATSUDA-EP ‘779 depending on: (i) the particular shape of the product being wrapped and/or encased; and (ii) the degree of conformation between the package or wrap formed by the barrier laminate and the product contained therein and/or the amount of headspace desired for specific packaging applications.
Further regarding claims 1, 13, 24, 28, one of ordinary skill in the art would have utilized a known heat-sealable material (e.g., unoriented polypropylene film, etc. as suggested by MITA ET AL ‘355) as a product-facing heat seal layer (corresponding to the recited “first polymeric film”) in the barrier packaging laminates of MATSUDA-EP ‘779 in order to form packages and/or wrapping materials capable of fully encasing a food product as suggested by OWENSBY ET AL ‘896.
Further regarding claims 1, 13, 24, 28, one of ordinary skill in the art would have incorporate openings (corresponding to the recited “aperture”) in paper layers in the heatable barrier packaging laminates of MATSUDA-EP ‘779 in order to provide viewing windows which permit viewing of the heatable package contents through the transparent polymer and plastic film layers (as suggested by UTLEY ‘842 and ANDERSON ‘640) in the barrier packaging laminates of MATSUDA-EP ‘779 (e.g., before, during, and/or after heating) (e.g., as suggested in PINKSTONE ‘307 and ANDERSON ‘640).
Further regarding claims 1, 23, 27, 30, one of ordinary skill in the art would have utilized a known heat-sealable material (e.g., as disclosed in NAKANO ET AL ‘457) as the heat seal layer in the barrier packaging laminates of MATSUDA-EP ‘779 in order to form wrapping materials with peelable seals (e.g., seal strengths of between 5-10 N/15 mm when sealed at relatively low temperatures (e.g., 160 ºC or lower) which allow for convenient opening by consumers.
Regarding claim 5, one of ordinary skill in the art would have selected the combined thickness of: (i) the plastic film (e.g., polyethylene terephthalate, etc.) (corresponding to the recited “second polymer film”) (e.g., 1-500 microns); and (ii) the heat seal layer (corresponding to the recited “first polymer film”) (e.g., about 20-60 microns); in the barrier packaging laminates of MATSUDA-EP ‘779 in order to produce food wrap packaging with the heat-sealing characteristics and strength required for specific packaging applications and products.
Regarding claims 28, 34, one of ordinary skill in the art would have utilized known heat-stable greaseproof paper materials as the paper layer in the barrier packaging laminates of MATSUDA-EP ‘779 in order to form heatable food wrapping materials which are resistant to grease penetration.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
EP 0 812 779 (MATSUDA-EP ‘779), in view of OWENSBY ET AL (US 2012/0213896), and in view of MITA ET AL (US 6,596,355), and in view of PINKSTONE (US 2014/035307), and in view of UTLEY (US 5,465,842), and in view of ANDERSON (US 2012/0141640), and in view of NAKANO ET AL (US 2013/0079457),
as applied to claim 13 above,
and further in view of SANKEY (US 2004/0067284).
SANKEY ‘284 discloses that it is well known in the art to use heat-sealable layers containing polyesters to form peelable heat seals for packaging. (paragraph 0002-0003, 0043, 0046-0048, 0051-0052, 0055, 0057-0060, 0063-0065, 0082, 0086, etc.)
Regarding claim 14, 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 heat-sealable material (e.g., polyester-based as disclosed in SANKEY ‘284) as the heat seal layer in the barrier packaging laminates of MATSUDA-EP ‘779 (as an alternative to the ethylene-(meth)acrylic acid copolymers and/or ionomers of NAKANO ET AL ‘457) in order to form wrapping materials with functional peelable seals which allow for convenient opening by consumers.
Claim(s) 28, 30, 34-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
EP 0 812 779 (MATSUDA-EP ‘779), in view of OWENSBY ET AL (US 2012/0213896), and in view of MITA ET AL (US 6,596,355), and in view of PINKSTONE (US 2014/035307), and in view of UTLEY (US 5,465,842), and in view of ANDERSON (US 2012/0141640), and in view of NAKANO ET AL (US 2013/0079457),
as applied to claims 1, 13, 24, 28 above,
and further in view of HUPFIELD ET AL (US 2010/0018659).
HUPFIELD ET AL ‘659 discloses that it is well known in art to utilized greaseproof paper materials in food packaging materials (paragraph 0001, 0007, 0052, etc.)
Regarding claims 28, 30, 34-35, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize known heat-stable greaseproof paper materials (as suggested in HUPFIELD ET AL ‘659) as the paper layer in the barrier packaging laminates of MATSUDA-EP ‘779 in order to form heatable wrapping materials which are resistant to grease penetration.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that “there is no reason to combine Owensby et al. with Matsuda”. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, MATSUDA-EP ‘779 discloses a multilayer paper-containing packaging material capable of forming a wrapping package structure capable of encasing food products (e.g., but not limited to, pillow-type bags, three-sided seal bag, four-sided seal bag, etc.), while OWENSBY ET AL ‘896 discloses conventional food packaging structures which can be made from: (i) a single sheet of heat-sealable film (using a folded film and heat-seals along three sides); or (ii) two sheets of heat-sealable film (bonding the two sheets together with heat-seals along four sides); wherein such food packaging structures are suitable for producing cook-in ovenable and/or microwavable packaging which completely encase a food product. Therefore, contrary to Applicant’s assertions, there is a clear teaching, suggestion, or motivation to combine the teachings of MATSUDA-EP ‘779 (regarding the utility of the disclosed heat-sealable packaging material for producing three-sided seal bags and four-sided seal bags, while OWENSBY ET AL ‘896 merely provides more specific structural details of such well-known three-sided seal bags and four-sided seal bags.
(B) Applicant argues that “the reasons as presented for modifying Matsuda in view of Pinkstone are obviated as both of the references independently accomplish similar functions” and “Therefore, the motivation to cite Pinkstone against Applicant’s claim appears to be based on picking and choosing particular elements from the numerous cited references”
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s contention that “reasons as presented for modifying Matsuda in view of Pinkstone are obviated as both of the references independently accomplish similar functions” is unpersuasive because Applicant’s assertion that “both of the references independently accomplish similar functions” is incorrect. MATSUDA-EP ‘779 discloses a multilayer paper-containing packaging material capable of forming a wrapping package structure capable of encasing food products (e.g., but not limited to, pillow-type bags, three-sided seal bag, four-sided seal bag, etc.) but does not provide specific details regarding certain aspects of the packaging material which would facilitate or enable the wrapping or encasement of a food product, while PINKSTONE ‘307 provides suggestions regarding suitable paper weights which can be utilized as a component in packaging materials to facilitate the production of heatable (e.g., via microwave, etc.) packaging articles capable of wrapping or encasing food products. Therefore, MATSUDA-EP ‘779 provides a general teaching (regarding packaging materials capable of wrapping or encasing food products), while PINKSTONE ‘307 provides a more specific teaching with respect to a feature (e.g., paper weight) which advantageously facilitates the wrapping or encasing food products taught by MATSUDA-EP ‘779,
MPEP 2144 Supporting a Rejection Under 35 U.S.C. 103 [R-01.2024]
* * *
I. RATIONALE MAY BE IN A REFERENCE, OR REASONED FROM COMMON KNOWLEDGE IN THE ART, SCIENTIFIC PRINCIPLES, ART-RECOGNIZED EQUIVALENTS, OR LEGAL PRECEDENT
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988); In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992); see also In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (setting forth test for implicit teachings); In re Eli Lilly & Co., 902 F.2d 943, 14 USPQ2d 1741 (Fed. Cir. 1990) (discussion of reliance on legal precedent); In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) (references do not have to explicitly suggest combining teachings); Ex parte Clapp, 227 USPQ 972 (Bd. Pat. App. & Inter. 1985) (examiner must present convincing line of reasoning supporting rejection); and Ex parte Levengood, 28 USPQ2d 1300 (Bd. Pat. App. & Inter. 1993) (reliance on logic and sound scientific reasoning).
II. THE EXPECTATION OF SOME ADVANTAGE IS THE STRONGEST RATIONALE FOR COMBINING REFERENCES
The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006) ("Indeed, we have repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.").
* * *
IV. RATIONALE DIFFERENT FROM APPLICANT’S IS PERMISSIBLE
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
* * *
Applicant has not provided objective evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited paper grammage.
Furthermore, the mere fact that the same or similar features are present in multiple references does not equate to an absence of motivation or suggestion to combine said multiple references. To the contrary, the presence of the same or similar features (e.g., apertures in paper layers in packaging materials) in multiple references provides strong evidence that said same or similar features are well-known or well-established or well-recognized in the art. Applicant has not provided persuasive evidence to the contrary.
(D) Applicant argues that “Utley and/or Anderson appear to be cited for disclosing elements disclosed by Pinkstone thereby obviating the need to cite either of these references”. As discussed above, the mere fact that the same or similar features are present in multiple references does not equate to an absence of motivation or suggestion to combine said multiple references. To the contrary, the presence of the same or similar features (e.g., apertures in paper layers in packaging materials) in multiple references provides strong evidence that said same or similar features are well-known or well-established or well-recognized in the art. Applicant has not provided persuasive evidence to the contrary.
(E) Applicant argues that “the Examiner’s rejections... fails to provide adequate motivation to combine the numerous references cited” and “the Examiner has not established that one of ordinary skill in the art would be motivated to combine the teachings of six different references to arrive at the specific configuration recited in claim 1, or seven references in the case of certain dependent claims. Applicant further alleges that “the rejection requires combining teachings from multiple disparate references without providing sufficient reasoning why such a combination would be obvious to one of ordinary skill in the art at the time the invention, or attempts to cite additional modifying references for elements disclosed in base references”.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Furthermore, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Contrary to Applicant’s assertions, the rejections under 35 U.S.C. 103 in the present Office Action clearly sets forth motivations or reasons to modify the packaging laminates of MATSUDA-EP ‘779 -- i.e., the secondary references (i.e., OWENSBY ET AL ‘896; MITA ET AL ‘355; PINKSTONE ‘307; UTLEY ‘842; ANDERSON ‘640; NAKANO ET AL ‘457): (i) provide supplementary information elaborating on features already mentioned in the primary references in MATSUDA-EP ‘779; and/or (ii) disclose advantageous modifications well-known in the art which provide reasonably predictable benefits to the packaging materials of MATSUDA-EP ‘779. Therefore, the rejections under 35 U.S.C. 103 in the present Office Action establish a proper prima facie case of obviousness. Applicant has not provided objective evidence of unexpected results and/or criticality commensurate in scope with the present claims from the various features and/or modifications disclosed in the secondary references (e.g., but not limited to, conventional packaging structures for packaging materials used for wrapping or encasing food products (OWENSBY ET AL ‘896); known paper grammage for packaging materials used for wrapping or encasing food products (PINKSTONE ‘307); typical heat-seal layer materials and thicknesses and heat-seal strengths for peelable heat-seals in packaging materials used for food products (MITA ET AL ‘355; NAKANO ET AL ‘457; known features in paper layers for packaging materials used for wrapping or encasing food products (PINKSTONE ‘307; UTLEY ‘842; ANDERSON ‘640); etc.).
(F) Applicant argues that “the evidence of record establishing a long-felt need and commercial success is sufficient to overcome prima fascia obviousness”. However, Applicant’s arguments with respect to “long-felt need and commercial success” are deemed moot because Applicant has not provided objective evidence (e.g., affidavits or declarations) on the record supporting applicant’s assertions of “long-felt need” or “commercial success”.
MPEP 716.01(c) Probative Value of Objective Evidence [R-01.2024]
I. TO BE OF PROBATIVE VALUE, ANY OBJECTIVE EVIDENCE SHOULD BE SUPPORTED BY ACTUAL PROOF
Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence." "[A]ppellants have not presented any experimental data showing that prior heat-shrinkable articles split. Due to the absence of tests comparing appellant’s heat shrinkable articles with those of the closest prior art, we conclude that appellant’s assertions of unexpected results constitute mere argument."). See also In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972); Ex parte George, 21 USPQ2d 1058 (Bd. Pat. App. & Inter. 1991).
II. ARGUMENTS BY APPLICANT CANNOT TAKE THE PLACE OF EVIDENCE
Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
* * *
IV. PROBATIVE VALUE OF COMMERCIAL SUCCESS OR LONG FELT NEED EVIDENCE
Objective evidence of commercial success or long felt need and failure of others may be given less weight if the record shows that the applicant or patent owner has a strong market power or blocking patent depending on the facts of record. "A patent has been called a 'blocking patent’ where practice of a later invention would infringe the earlier patent. The existence of such a blocking patent may deter non-owners and non-licensees from investing the resources needed to make, develop, and market such a later, 'blocked' invention, because of the risk of infringement liability and associated monetary or injunctive remedies. If the later invention is eventually patented by an owner or licensee of the blocking patent, that potential deterrent effect is relevant to understanding why others had not made, developed, or marketed that 'blocked' invention and, hence, to evaluating objective indicia of the obviousness of the later patent." Acorda Therapeutics, Inc. v. Roxane Lab., Inc., 903 F.3d 1310, 1337, 128 USPQ2d 1001, 1021(Fed. Cir. 2018). "Such a blocking patent therefore can be evidence that can discount the significance of evidence that nobody but the blocking patent’s owners or licensees arrived at, developed, and marketed the invention covered by the later patent at issue in litigation. But the magnitude of the diminution in incentive in any context—in particular, whether it was great enough to have actually deterred activity that otherwise would have occurred—is 'a fact-specific inquiry.'" Id. at 1339, 128 USPQ2d at 1022. While having record evidence of such a blocking patent may not be common, examiners should be aware of its potential impact in evaluating secondary evidence of nonobviousness. In any Office action, examiners should articulate why there is any discounting of the weight of the secondary consideration evidence when addressing the evidence.
See also MPEP 716.03 regarding the evidentiary requirements for establishing “commercial success” and MPEP 716.03 regarding the evidentiary requirements for establishing “long-felt need”.
(G) Applicant argues that the SANKEY ‘284 and HUPFIELD ET AL ‘659 and NAKANO ET AL ‘457 fail to remedy the alleged deficiencies in the combination of the references cited in the rejection under 35 U.S.C. 103 of independent claims 1, 13, 24, 28 (i.e., MATSUDA-EP ‘779; OWENSBY ET AL ‘896; MITA ET AL ‘355; PINKSTONE ‘307; UTLEY ‘842; ANDERSON ‘640). However, Applicant’s arguments regarding the alleged deficiencies in the combination of the references cited in the rejections under 35 U.S.C. 103 of independent claims 1, 13, 24, 28 are not persuasive for the reasons discussed in detail above. Therefore, Applicant’s arguments that SANKEY ‘284 and HUPFIELD ET AL ‘659 and NAKANO ET AL ‘457 fail to remedy the alleged deficiencies of the above combination of references relied upon in the rejections under 35 U.S.C. 103 of independent claims 1, 13, 24, 28 in the present Office Action is also not persuasive.
Conclusion
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.
The General Information telephone number for Technology Center 1700 is (571) 272-1700.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
June 27, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787
Prosecution Insights