DETAILED ACTION
Claims 1-18 were rejected in the Office Action mailed on 07/29/2025.
Applicant filed a response and amended claim 10 on 10/27/2025.
Claims 1-20 are pending, of which claims 19-20 are withdrawn.
Claims 1-18 are rejected.
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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kersnick et al. (US 2010/0086746) (Kersnick) in view of Flynn et al. (US 2020/0283959) (Flynn).
Regarding claims 1-3
Kersnick teaches a recyclable corrugated board comprising a first coated outer layer, a second coated outer layer, and a corrugating paper disposed therebetween. See, e.g., abstract and paragraphs [0009-0010], [0017], [0019-0021], [0024], [0026], and [0033].
Given Kersnick does not require the corrugated paper is coated or impregnated, it follows the corrugated paper is not impregnated and is not coated. Given the corrugated board does not use paraffin wax, it follows the corrugated board is recyclable.
Kersnick does not explicitly teach the corrugating paper is non-wicking or measure the 24-hour edgewick-test wick distance.
With respect to the difference, Flynn teaches insulated paper products comprising two liner boards bonded to a fluted medium board. The insulated paper product desirably can be placed into a freezer and then taken out and stacked a room temperature. Such a process usually leads to the insulated paper product “sweating” through condensation in the warm air condensing on the surface of the insulated paper product. It is advantageous for the insulated paper product to be resistant to moisture ingress. Multiple different additives can be used to reduce the propensity of the insulated paper product to absorb moisture and weaken when moist. See, e.g., abstract and paragraphs [0010-0011], [0049-0050], and [0064], and FIG.6A-B.
Flynn and Kersnick are analogous art as they are both drawn to packaging material.
In light of the motivation as provided by Flynn, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the corrugated paper of Kersnick, by selecting suitable additives with desired non-wicking properties-abilities for the corrugated paper layer, such that the corrugated paper is non-wicking such that it possesses a 24-hour edge-wick test wick distance from an edge of less than about 6 mm, in order to provide desired resistance to moisture ingress, and thereby arrive at the claimed invention.
Regarding claim 4
Kersnick in view of Flynn teaches all of the limitations of claim 3 above, however Kersnick does not explicitly teach the basis weight of the corrugated paper.
With respect to the difference, Flynn further teaches the insulated paper product possesses an overall basis weight from about 50 gsm to about 200 gsm. Paragraphs [0009], [0063], and [0085]. It is noted about 27 to about 45 pounds per thousand square feet corresponds to about 88 to about 220 gsm.
Flynn and Kersnick are analogous art as they are both drawn to packaging material.
In light of the disclosure of Flynn, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the invention to select a basis weight for the corrugated board, including the corrugated paper, in the range from about 50 gsm to about 200 gsm, in order to produce a paper product suitable for use in food packaging, as Flynn teaches about 50 gsm to about 200 gsm is a suitable basis weight for a paper product for food packaging, and thereby arrive at the claimed invention.
Given the corrugated board comprises the corrugated paper, it follows the corrugated paper possesses a basis weight overlapping the range from about 50 gsm to about 200 gsm, and therefore overlapping the presently claimed range.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 5
Kersnick in view of Flynn teaches all of the limitations of claim 4 above. Kersnick further teaches an adhesive is used and located at the tips of the flutes of corrugated paper to bond linerboards to the corrugated paper. The adhesive is water resistant. Paragraph [0019].
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kersnick et al. (US 2010/0086746) (Kersnick) in view of Flynn et al. (US 2020/0283959) (Flynn), as applied in claim 5 above, and further in view of Toft et al. (US 2020/0094536) (Toft).
Regarding claim 6
Kersnick in view of Flynn teaches all of the limitations of claim 5 above, however does not explicitly teach the first coated outer layer and the second coated outer layer are machine finished paper.
With respect to the difference, Toft teaches packaging material comprising a bulk material layer, such as a corrugated paperboard, and a print substrate paper on the outer side of the bulk material layer. Suitable material for the print substrate paper includes machine finished paper as it provides a smooth printable surface. The print substrate paper in combination with corrugated paperboard provides a desired stiffness and mechanical dimension stability. The print substrate paper provides a cost saving and desired print background appearance with good printability properties. The print substrate paper possesses a Cobb absorption value from 24 to 27 gsm of water in view of balance of absorption vs adhesion properties. The print substrate paper is sized to resist edge wicking, i.e. to resist absorption of water or liquid at the exposed paper edges of a cut laminate structure. See, e.g., abstract and paragraphs [0023-0024], [0050-0056], [0058], [0069-0072], [0135], and [0138].
Toft and Kersnick in view of Flynn are analogous art as they are both drawn tot packaging material.
In light of the motivation as provided by Toft, it therefore would have been obvious to one of ordinary skill in the art to use print substrate paper comprising machine finished paper as the first and second outer layers of Kersnick in view of Flynn, in order to provide desired stiffness and mechanical dimension stability, cost saving and desired print background appearance with good printing properties due to the smooth printable surface, resistance to edgewicking, and thereby arrive at the claimed invention.
Regarding claim 7
Kersnick in view of Flynn and Toft teaches all of the limitations of claim 6 above. Given Toft teaches the print substrate paper used as the outer layers are sized to resist edge wicking (Paragraphs [0050] and [0135]), as discussed above, it follows one of ordinary skill in the art before the effective filing date of the invention to modify the outer layers of Kersnick in view of Flynn and Toft, by selecting suitable amount and type of sizing with desired non-wicking properties-abilities, such that the outer layers are non-wicking such that they possess a 24-hour edge-wick test wick distance from an edge of less than about 6 mm, in order to resist absorption of water or liquid as the exposed paper edges, and thereby arrive at the claimed invention.
Claims 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Kersnick et al. (US 2010/0086746) (Kersnick) in view of Flynn et al. (US 2020/0283959) (Flynn) and Toft et al. (US 2020/0094536) (Toft), as applied in claim 7 above, and further in view of Zha et al. (US 2020/0263359) (Zha).
Regarding claims 8-10
Kersnick in view of Flynn and Toft teaches all of the limitations of claim 7 above, including the outer layers are non-wicking. While Kersnick teaches a coating on the outer surface of the outer layers, Kersnick does not explicitly teach the coating is a low Cobb value coating.
With respect to the difference, Zha teaches a water-based coating that provides liquid resistance, wherein the coating is particularly suitable for a cellulosic substrate. The water-based coating provides a water Cobb value of less than 20 gsm and does not prevent the coated substrate from being recyclable. See, e.g., abstract and paragraphs [0033], [0052], [0148], and [0153].
Zha and Kersnick in view of Flynn and Toft are analogous art as they are both drawn to packaging materials.
In light of the motivation as provided by Zha, it therefore would have been obvious to one of ordinary skill in the art to use the water-based coating possessing a water Cobb value of less than 20 gsm and does not prevent the coated substrate form being recyclable as the coating of Kersnick in view of Flynn and Toft, in order to provide liquid resistance to the corrugated board, and thereby arrive at the claimed invention.
Given the water Cobb value of the coating is less than 20 gsm, it follows the outer layers are low Cobb layers. As discussed above, the outer layers are also non-wicking.
Claim 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kersnick et al. (US 2010/0086746) (Kersnick) in view of Flynn et al. (US 2020/0283959) (Flynn).
Regarding claims 11-13
Kersnick teaches a recyclable corrugated board comprising a first coated outer layer, a second coated outer layer, and a corrugating paper disposed therebetween. See, e.g., abstract and paragraphs [0009-0010], [0017], [0019-0021], [0024], [0026], and [0033].
Given Kersnick does not require the corrugated paper is coated or impregnated, it follows the corrugated paper is not impregnated and is not coated. Given the corrugated board does not use paraffin wax, it follows the corrugated board is recyclable.
Kersnick does not explicitly teach the corrugating paper is non-wicking. measure the 24-hour edgewick-test wick distance.
With respect to the difference, Flynn teaches insulated paper products comprising two liner boards bonded to a fluted medium board. The insulated paper product desirably can be placed into a freezer and then taken out and stacked a room temperature. Such a process usually leads to the insulated paper product “sweating” through condensation in the warm air condensing on the surface of the insulated paper product. It is advantageous for the insulated paper product to be resistant to moisture ingress. Multiple different additives can be used to reduce the propensity of the insulated paper product to absorb moisture and weaken when moist. See, e.g., abstract and paragraphs [0010-0011], [0049-0050], and [0064], and FIG.6A-B.
Flynn and Kersnick are analogous art as they are both drawn to packaging material.
In light of the motivation as provided by Flynn, it therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the corrugated paper of Kersnick, by selecting suitable additives with desired non-wicking properties-abilities for the corrugated paper layer, such that the corrugated paper is non-wicking such that it possesses a 24-hour edge-wick test wick distance from an edge of less than about 6 mm, in order to provide desired resistance to moisture ingress, and thereby arrive at the claimed invention.
Regarding claim 14
Kersnick in view of Flynn teaches all of the limitations of claim 13 above, however Kersnick does not explicitly teach the basis weight of the corrugated paper.
With respect to the difference, Flynn further teaches the insulated paper product possesses an overall basis weight from about 50 gsm to about 200 gsm. Paragraphs [0009], [0063], and [0085]. It is noted about 27 to about 45 pounds per thousand square feet corresponds to about 88 to about 220 gsm.
Flynn and Kersnick are analogous art as they are both drawn to packaging material.
In light of the disclosure of Flynn, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the invention to select a basis weight for the corrugated board, including the corrugated paper, in the range from about 50 gsm to about 200 gsm, in order to produce a paper product suitable for use in food packaging, as Flynn teaches about 50 gsm to about 200 gsm is a suitable basis weight for a paper product for food packaging, and thereby arrive at the claimed invention.
Given the corrugated board comprises the corrugated paper, it follows the corrugated paper possesses a basis weight overlapping the range from about 50 gsm to about 200 gsm, and therefore overlapping the presently claimed range.
It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 15
Kersnick in view of Flynn teaches all of the limitations of claim 14 above. Kersnick further teaches an adhesive is used and located at the tips of the flutes of corrugated paper to bond linerboards to the corrugated paper. The adhesive is water resistant. Paragraph [0019].
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kersnick et al. (US 2010/0086746) (Kersnick) in view of Flynn et al. (US 2020/0283959) (Flynn), as applied in claim 5 above, and further in view of Toft et al. (US 2020/0094536) (Toft), taken in view of evidence provided by Fu et al. (US 2013/0303351) (Fu).
Regarding claims 16-17
Kersnick in view of Flynn teaches all of the limitations of claim 15 above, however does not explicitly teach the first coated outer layer and the second coated outer layer are paper liner.
With respect to the difference, Toft teaches packaging material comprising a bulk material layer, such as a corrugated paperboard, and a print substrate paper on the outer side of the bulk material layer. Suitable material for the print substrate paper includes Kraft paper which provides a smooth surface. The print substrate paper in combination with corrugated paperboard provides a desired stiffness and mechanical dimension stability. The print substrate paper provides a cost saving and desired print background appearance with good printability properties. The print substrate paper possesses a Cobb absorption value from 24 to 27 gsm of water in view of balance of absorption vs adhesion properties. The print substrate paper is sized to resist edge wicking, i.e. to resist absorption of water or liquid at the exposed paper edges of a cut laminate structure. See, e.g., abstract and paragraphs [0023-0024], [0050-0056], [0060], [0069-0072], [0135], and [0138].
In view of evidence provided by Fu, kraft paper is a type of liner paper. Paragraph [0045].
Toft and Kersnick in view of Flynn are analogous art as they are both drawn tot packaging material.
In light of the motivation as provided by Toft, it therefore would have been obvious to one of ordinary skill in the art to use print substrate paper comprising kraft paper as the first and second outer layers of Kersnick in view of Flynn, in order to provide desired stiffness and mechanical dimension stability, cost saving and desired print background appearance with good printing properties due to the smooth printable surface, resistance to edgewicking, and thereby arrive at the claimed invention.
Given the print substate paper is sized to resist edge wicking, i.e. to resist absorption of water or liquid at the exposed paper edges, it follows the print substrate paper and therefore the outer layers of Kersnick in view of Flynn and Toft are non-wicking.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kersnick et al. (US 2010/0086746) (Kersnick) in view of Flynn et al. (US 2020/0283959) (Flynn) and Toft et al. (US 2020/0094536) (Toft), as applied in claim 17 above, and further in view of Zha et al. (US 2020/0263359) (Zha).
Regarding claim 18
Kersnick in view of Flynn and Toft teaches all of the limitations of claim 17 above, including the outer layers are non-wicking. While Kersnick teaches a coating on the outer surface of the outer layers, Kersnick does not explicitly teach the coating is a low Cobb value coating.
With respect to the difference, Zha teaches a water-based coating that provides liquid resistance, wherein the coating is particularly suitable for a cellulosic substrate. The water-based coating provides a water Cobb value of less than 20 gsm and does not prevent the coated substrate from being recyclable. See, e.g., abstract and paragraphs [0033], [0052], [0148], and [0153].
Zha and Kersnick in view of Flynn and Toft are analogous art as they are both drawn to packaging materials.
In light of the motivation as provided by Zha, it therefore would have been obvious to one of ordinary skill in the art to use the water-based coating possessing a water Cobb value of less than 20 gsm and does not prevent the coated substrate form being recyclable as the coating of Kersnick in view of Flynn and Toft, in order to provide liquid resistance to the corrugated board, and thereby arrive at the claimed invention.
Given the water Cobb value of the coating is less than 20 gsm, it follows the outer layers are low Cobb layers.
Response to Arguments
In view of the amendment to claim 10, the previous 35 U.S.C. 112(d) rejection is withdrawn.
The previous rejection of claims 1-18 are maintained.
Applicant's arguments filed 10/27/2025 have been fully considered but they are not persuasive.
Applicant primarily argues Kersnick specifically discloses “… the corrugated medium 16 also comprises a hydrophobic material impregnated into its thickness.” See paragraph [0025] of Kersnick. Applicant argues nothing in Kersnick discloses or suggests that the corrugated medium 16 is not coated. Remarks, pages 5-6.
The Examiner respectfully disagrees, as follows:
Firstly, paragraph [0025] of Kersnick states the following: “In one embodiment, the corrugated medium 16 also comprises a hydrophobic material impregnated into its thickness.” (Emphasis added). It is noted the teaching of paragraph [0025] is not relied upon in the rejection mailed 07/29/2025 The fact remains Kersnick teaches embodiments where the corrugated medium is not impregnated and this embodiment is relied upon to form the rejection, as discussed in the Office Action mailed 07/29/2025. Applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on specific embodiments and argue the reference did not teach other embodiments.
Secondly, as discussed in the Office action mailed 07/29/2025, since Kersnick does not require the corrugated paper is coated or impregnated, it follows, the corrugated paper is not impregnated and is not coated. Applicant has provided no evidence showing the corrugated medium 16 is coated.
Applicant further argues the paragraphs cited to Flynn in the rejection disclose that the fluted paper includes insulating additives 12 and starch adhesive 40. See at least paragraph [0050] of Kersnick. As is known to one skilled in the art, insulating material made with a standard starch-based adhesive is not non-wicking. As defined by AI Overview, “Native starch is a hydrophilic polymer with a high affinity for water, which means it will readily absorb moisture and allow wicking through capillary action.” Remarks, pages 6-7.
The Examiner respectfully disagrees, as follows:
Firstly, Flynn is not used to teach adding insulating additives 12 and starch adhesive 40 to the corrugated medium of Kersnick. Instead, paragraph [0064] of Flynn teaches it is advantageous for the insulated paper product to be resistant to moisture ingress and multiple different additives can be used to reduce the propensity of the insulated paper product to absorb moisture and weaken when moist. Therefore, for the advantage of moisture ingress resistance, one of ordinary skill in the art would look to Flynn to modify Kersnick by selecting suitable additives, such that corrugated paper layer possesses non-wick properties, to produce the desired moisture ingress resistance.
Applicant further argues Flynn fails to teach “the non-wicking medium is non-wicking such that a 24-hour edgewick-test wick distance from an edge is less than about 6 mm.” Remarks, page 7.
The Examiner respectfully disagrees, as follows:
While Flynn does not explicitly teach a 24-hour edgewick-test wick distance from an edge is less than about 6 mm, as discussed in the rejection mailed 07/29/2025, Flynn teaches it is advantageous for the insulated paper product to be resistant to moisture ingress and multiple different additives can be used to reduce the propensity of the insulated paper product to absorb moisture and weaken when moist. It therefore would have been obvious to one of ordinary skill in the art to modify the corrugated paper of Kersnick, by selecting suitable additives with desired non-wicking properties-abilities for the corrugated paper, such that the corrugated paper is non-wicking and possesses a 24-hour edge-wick test wick distance from an edge of less than about 6 mm, in order to provide the desired resistance to moisture ingress.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/C.X.N./Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789