DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
REJECTIONS WITHDRAWN
There are no rejections withdrawn.
REJECTIONS REPEATED
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6, 11-13 and 15-31 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-54 and 1-79 of copending Application No. 17/870,709 and 17/855,536, respectively, in view of Stamets (US 2008/0046277).
The limitation “machine made” is a method limitation in a product claim which has been given little to no patentable weight because the method by which a product is made is not germane to the patentability of a product in a product claim (MPEP 2113). Stamets discloses machine made paper (paragraph [0019])
Claims 1-54 and 1-79 of copending Application No. 17/870,709 and 17/855,536, respectively, recite applicant’s invention substantially as claimed. Claims 1-54 and 1-79 of copending Application No. 17/870,709 and 17/855,536, respectively, do not recite a cardboard carton or corrugated box. Stamets discloses a cardboard carton or corrugated box (paragraph [0031]) for the purpose of providing a more environmentally friendly product (paragraph [0002]). Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to provide a cardboard carton or corrugated box in claims 1-54 and 1-79 of copending Application No. 17/870,709 and 17/855,536, respectively, in order to provide a more environmentally friendly product.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1-6, 11-13, 15-17, 19-22 and 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamets (US 2008/0046277) in view of Everett et al. (US 2020/0063355).
The limitation “machine made” is a method limitation in a product claim which has been given little to no patentable weight because the method by which a product is made is not germane to the patentability of a product in a product claim (MPEP 2113). Stamets discloses machine made paper (paragraph [0019]).
Stamets discloses a cardboard carton or corrugated box comprised of hemp paper; said cardboard carton including a cardboard box (paragraphs [0002], [0019 – 0022], [0031], [0044 – 0048], [0051 – 0054], [0057 – 0058], [0071], [0075], [0086] and claims 1-3).
Stamets does not disclose wherein said hemp paper: comprises one hundred percent hemp, wherein said hemp paper: comprises one to twenty five percent hemp, wherein said hemp paper comprises twenty five to fifty percent hemp, wherein said hemp paper comprises fifty to seventy-five percent hemp, wherein said hemp paper comprises seventy-five to one hundred percent hemp, wherein said hemp paper is : comprised of: some combination of hemp hurd, hemp bast fiber, post-consumer recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, further comprising clay, fillers, preservatives, chemicals or additives, wherein said hemp paper is : | made without using any clay, fillers, preservatives, chemicals or additives, wherein said hemp paper has . a tensile MD strength ranging from five pounds to two hundred pounds per inch, and a tensile CD strength ranging from five pounds to two hundred pounds per inch, wherein said hemp paper has: an MD strength greater than or equal to the CD strength, wherein said hemp paper has an elongation MD percentage ranging from one half to twenty pounds per inch, and an elongation CD percentage ranging from one half pound to twenty pounds per inch, wherein said hemp paper is treated or coated with AKD sizing, wherein said hemp paper is unbleached or kraft, wherein said hemp paper is bleached.
Everett discloses wherein said hemp paper: comprises one hundred percent hemp, wherein said hemp paper: comprises one to twenty five percent hemp, wherein said hemp paper comprises twenty five to fifty percent hemp, wherein said hemp paper comprises fifty to seventy-five percent hemp, wherein said hemp paper comprises seventy-five to one hundred percent hemp, wherein said hemp paper is : comprised of: some combination of hemp hurd, hemp bast fiber, post-consumer recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, further comprising clay, fillers, preservatives, chemicals or additives, wherein said hemp paper is made without using any clay, fillers, preservatives, chemicals or additives, wherein said hemp paper has . a tensile MD strength ranging from five pounds to two hundred pounds per inch, and a tensile CD strength ranging from five pounds to two hundred pounds per inch, wherein said hemp paper has: an MD strength greater than or equal to the CD strength, wherein said hemp paper has an elongation MD percentage ranging from one half to twenty pounds per inch, and an elongation CD percentage ranging from one half pound to twenty pounds per inch, wherein said hemp paper is treated or coated with AKD sizing, wherein said hemp paper is unbleached or kraft, wherein said hemp paper is bleached (paragraphs [0021, 0060, 0063, 0070, 0081 – 0086, 0406, 0585, 0609, 0620, 0621]) in paper products (paragraph [0016]) for the purpose of providing improved mechanical properties and/or recyclability and/or water permeability (paragraphs [0009 – 0020]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein said hemp paper: comprises one hundred percent hemp, wherein said hemp paper: comprises one to twenty five percent hemp, wherein said hemp paper comprises twenty five to fifty percent hemp, wherein said hemp paper comprises fifty to seventy-five percent hemp, wherein said hemp paper comprises seventy-five to one hundred percent hemp, wherein said hemp paper is : comprised of: some combination of hemp hurd, hemp bast fiber, post-consumer recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, further comprising clay, fillers, preservatives, chemicals or additives, wherein said hemp paper is : | made without using any clay, fillers, preservatives, chemicals or additives, wherein said hemp paper has . a tensile MD strength ranging from five pounds to two hundred pounds per inch, and a tensile CD strength ranging from five pounds to two hundred pounds per inch, wherein said hemp paper has: an MD strength greater than or equal to the CD strength, wherein said hemp paper has an elongation MD percentage ranging from one half to twenty pounds per inch, and an elongation CD percentage ranging from one half pound to twenty pounds per inch, wherein said hemp paper is treated or coated with AKD sizing, wherein said hemp paper is unbleached or kraft, wherein said hemp paper is bleached in Stamets in order to provide improved mechanical properties and/or recyclability as taught or suggested by Everett.
Stamets also discloses comprising a closure device, wherein said closure device is packing tape, adhesive tape, staples, a folded flap, a sticker, or some combination, wherein said carton or box is recyclable or curbside recyciable, wherein said carton or box is | biodegradable, compostable, or both biodegradable and compostable, wherein said carton or box : has some combination of environmentally friendly features: chlorine free, toxin free, compostable, recyclable, biodegradable, BPA free, lead free, Phthalates free and PFA free, wherein said carton or box has a wide face and a seamless construction, which provides a surface area to accept all types of graphics and inks on top, bottom and sides of said carton or box (paragraphs [0002], [0019 – 0022], [0031], [0044 – 0048], [0051 – 0054], [0057 – 0058], [0071], [0075], [0086] and claims 1-3).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamets (US 2008/0046277) in view of Everett et al. (US 2020/0063355), as applied to claims 1-6, 11-13, 15-17, 19-22 and 27-30 above, and further in view of Payauys (US10,011,387).
Stamets does not teach the carton or box further comprising: a box manufacturer's certificate that is comprised of a circular stamp that includes a box manufacturer's name and other technical information printed on said box.
Payauys teaches a box (col 2, In 11-13, This disclosure is directed to customization of a shipment container (e.g., a box, a package, etc.) used by a merchant to ship an item to a customer) having a manufacturer's certificate that is comprised of a stamp that includes a manufacturer's name and other information printed on said box (col 5, In 62 - col 6, In 4, FIG. 2C is an isometric view of the illustrative shipment container showing the exterior surfaces 130 of the shipment container after printing of
customized graphics 128 on the exterior surfaces of the shipment container. The customized graphics 128 may include images, text, logos, patterns, designs, and/or other information. The information may be related to shipping information (e.g., tracking number, addresses, postage, etc.), merchant information, manufacturer information, and/or other information (e.g., advertising, personal messages, greetings, recommendations, etc.); and col 4, In 50-55, Those skilled in the art will appreciate that the printer or labeling device may be any suitable electronic and/or robotic device capable of printing, stamping, adhering, embossing, attaching or otherwise applying a customized graphic to a surface of an object; The manufacturer's name and other information can be printed and/or stamped onto the box).
It would have been obvious to one of ordinary skill in the art to provide the box manufacturer's name on a certificate as performed by Payauys in order to inform the user of the company which manufactured the box. Further, it would have been obvious to one of ordinary skill in the art to optimize the shape of the stamp by routine experimentation in order to improve the performance of the box. Further, it would have been obvious to one of ordinary skill in the art to print technical information such as the size and dimensions of the box in order to provide the user with useful information for filling, storing, and transporting the box (Payauys, col 8, In 30-32, the amount of the graphics may be limited by the size and dimensions of the shipment container).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamets (US 2008/0046277) in view of Everett et al. (US 2020/0063355), as applied to claims 1-6, 11-13, 15-17, 19-22 and 27-30 above, and further in view of Mueller (US 2018/0220799).
Stamets does not teach the carton or box having a corner guard made of multiple layers of cardboard sheets comprised of hemp.
Mueller teaches a corner guard for protecting the corner of an object (para [0003], The present invention is directed to a corner shield that satisfies this need. It is designed for placement on a substantially horizontal surface proximate to a corner to be protected; and para [0019], FIG. 2 is a perspective view of the corner shield of FIG. 1, wherein the inside of the corner guard is shown and the protector has been removed; the words shield and guard are used interchangeably by Mueller), comprising cardboard (para [0008], The protector can be formed of cardboard and, for appearance, can have an exterior at least the surface of the protector covered with paper).
It would have been obvious to one of ordinary skill in the art to use the corner guard to protect the corners of the corrugated cardboard box in order to protect the box contents from damage during storage or transportation. Further, it would have been obvious to one of ordinary skill in the art to form the corner guard from the hemp based cardboard taught by Stamets such that the entire box is recyclable and biodegradable (para [0053], traditional wood fiber based cardboards and papers may be utilized, but preferably use is made of recycled and tree-free cardboards and papers such as, for example, those of hemp; Hemp paper can be recyclable).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamets (US 2008/0046277) in view of Everett et al. (US 2020/0063355), as applied to claims 1-6, 11-13, 15-17, 19-22 and 27-30 above, and further in view of Hoffman (US 7,348,067).
Stamets doe not disclose wherein said carton or box comprises bleached hemp paper on outside of said carton or box and unbleached hemp paper on inside of said carton or box or said carton or box comprises bleached hemp paper on inside of said carton or box and unbleached hemp paper on outside of said carton or box.
Hoffman discloses wherein said carton or box comprises bleached hemp paper on outside of said carton or box and unbleached hemp paper on inside of said carton or box or said carton or box comprises bleached hemp paper on inside of said carton or box and unbleached hemp paper on outside of said carton or box (column 1, lines 20-30, column 2, lines 14-62, column 4, line 50 through column 4, line 9 and Fig. 5) in paperboard products for the purpose of providing improved stability and more aesthetically pleasing product for the consumer (column 2, lines 35-40, column 5, lines 15-20).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made wherein said carton or box comprises bleached hemp paper on outside of said carton or box and unbleached hemp paper on inside of said carton or box or said carton or box comprises bleached hemp paper on inside of said carton or box and unbleached hemp paper on outside of said carton or box in Stamets in order to provide improved stability and more aesthetically pleasing product for the consumer as taught or suggested by Hoffman.
Claim(s) 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamets (US 2008/0046277) in view of Everett et al. (US 2020/0063355), as applied to claims 1-6, 11-13, 15-17, 19-22 and 27-30 above, and further in view of Bergstein (US 2,543,757).
Stamets does not disclose wherein said hemp paper is oil and grease resistant, wherein said cardboard carton or corrugated box is leak-proof or coated with a water-resistant material, or moisture proof.
Bergstein discloses in the formation of cartons, proofness to various environments can be obtained either by treatments of the paperboard itself, or by affixing to the paperboard layers or webs of material having the desired proofness. The treatments may vary depending upon the kind of proofness de- sired, whether resistance to moisture, moisture vapor, water, organic liquids, or vegetable oils and greases, or resistance to the passage of gases (column 2, lines 5-21) in cartons (column 1, lines 1-4) for the purpose of providing improved barrier properties (column 2, lines 5-21).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein said hemp paper is oil and grease resistant, wherein said cardboard carton or corrugated box is leak-proof or coated with a water-resistant material, or moisture proof in Stamets in order to provide improved barrier properties as taught or suggested by Bergstein.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamets (US 2008/0046277) in view of Everett et al. (US 2020/0063355), as applied to claims 1-6, 11-13, 15-17, 19-22 and 27-30 above, and further in view of Fowler (US 2013/0110593).
Stamets does not disclose wherein said carton or box has coupons printed on said carton or box.
Fowler discloses a carton or box which has coupons printed on said carton or box (paragraph [0019]) in order to provide improved advertising.
It would have been obvious to one of ordinary skill in the art at the time applicant’s invention was made to have provided wherein said carton or box has coupons printed on said carton or box in Stamets in order to provide improved advertising as taught or suggested by Fowler.
NEW REJECTIONS
There are no new rejections.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments of 3/5/26 have been carefully considered but are deemed unpersuasive.
Applicant’s summary of the teachings of Stamets and Everett are acknowledged.
Applicant argues, “Even prior to being planted in the ground, Stamets requires the box be susceptible to allowing the fungi and seeds to pierce the box when planted. If the cardboard had the added strength from Everett, it would go against the invention of
Stamet and make it more difficult for the seeds to sprout through the cardboard.
Stamets does not want improved mechanical properties as stated above.
Stamets requires a carton or box that is weak in places where it wants the seeds to
shoot up. Everett teaches away from this. For example, Everett teaches using sizing
agents to improve stiffness and strength of boxes. Para 538. This teaches against
what is taught by Stamets, since a stiffer or stronger box would not facilitate the seeds
sprouting through the box.”
However, nowhere does Stamets state that they do not want improved mechanical properties. The box of Stamets must function as a regular box before it is planted into the ground. Furthermore, Stamets already provides mechanisms to ease germination and growth of seedlings such as providing thinner paper on the interior of the corrugated cardboard and fine cuts during manufacturing (paragraphs [0050-0059]). Stamets would not be looking to provide a box which can’t function as a regular, or enhanced, box before it is planted in the ground. Stamets would be looking to provide improvements in the same way as any other box since Stamets already provides mechanisms to ease germination and growth of seedlings. Moreover, Everett also discloses the added feature of improved water permeability (paragraph [0014]) which would aid in the germination and growth seedlings. Everett discloses improved recyclability (paragraph [0017]) which is another motivation to combine the references.
Applicant argues, “Examiner agrees Everett teaches compositions comprising cellulose fibers and cellulose ester fibers. Paras 2, 21, 37, 38-40. Everett teaches a composition containing cellulose fibers and synthetic cellulose fibers at least a portion of which are cellulose ester staple fibers. Paras 37-38. Cellulose fibers are fibers obtained from plant-based sources of cellulose. Para 39. The CE staple fibers and filaments made therefrom are synthetic fibers. Para 40. Everett teaches pulped cellulose fibers combined with CE fibers in certain percentages, para 81. Para 99 teaches Cellulose Ester fibers. Para 238 teaches compositions do not contain any other fibers other than cellulose fibers and CE staple fibers. Paras 249, 269-270, 283-284, 289. Para 663 teaches paperboard comprises cellulose fibers and cellulose ester fibers that are not hemp. Since Everett is made of cellulose fibers and synthetic cellulose fiber comprising cellulose ester fibers, the CD and MD tensile strengths and bursting strengths are not based on hemp paper as required by the claim. Claim 1 and its dependent claims are
not anticipated or obvious over the prior art.”
However, applicant uses the term “including” which is the equivalent of “comprising” which is open language and does not exclude the inclusion of other elements such as fibers. The term “hemp paper” is not defined in the claim and therefore any form of paper comprising hemp fibers is hemp paper. Everett discloses that the cellulose fibers are made from hemp (paragraph [0060]). Everett discloses the percentages of said cellulose fibers (paragraphs [0081-0086], [0609], [0620]). Furthermore, Everett discloses paper which comprises said cellulose fibers (paragraph [0021]).
Applicant argues, “With regards to claim 2, which requires the paper being 100 percent hemp, this cannot happen since Everett teaches that the paper is made of both cellulose fibers and cellulose ester fibers. For this reason and the reasons stated above, claim 2 is not obvious over the prior art.”
However, Everett discloses that the composition contains pulped cellulose fiber, or is obtained by combining pulped cellulose fibers to the CE fibers (paragraph [0080]) and the cellulose fibers are hemp (paragraph [0060). Furthermore, Stamets discloses 100% hemp cardboard (paragraph [0053]).
Applicant argues, “Re claim 11, Examiner states Everett teaches combination hemp, virgin or recycled cellulose (wood, pulp), paras 60-63.
Neither reference teaches cardboard carton or corrugated box hemp paper comprised of: some combination of hemp hurd, hemp bast fiber, post-consumer recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, nor does Examiner point to any reference. For this reason and reasons stated above for clam 1, claim 11 is not obvious over prior art.
Re claim 12, neither reference teaches cardboard carton hemp paper comprises clay, fillers, preservatives, chemicals or additives, nor does Examiner point to any reference of same. For this reason and reasons stated above for claim 1, claim 12 not obvious over prior art.
Re claim 13, neither reference teaches cardboard carton or corrugated box hemp paper made without using any clay, fillers, preservatives, chemicals or additives, nor does Examiner point to any reference of same. For this reason and reasons stated above for claim 1, claim 13 is not obvious over prior art.”
With regards to claim 11, Everett discloses any combination of hemp, virgin or recycled cellulose (wood pulp) (paragraphs [0060-0063]).
With regard to claim 12-13, Stamets does not disclose the use of clay, fillers, preservatives, chemicals or additives, especially since any additives are optional (Stamets, paragraph [0054]).
Applicant argues, “Re claims 15-16, Para 663 teaches paperboard comprise cellulose fibers and cellulose ester staple fibers, which is not hemp. Claim 1 of Everett states paper bag comprise cellulose fibers, cellulose ester fibers and CE staple fibers. Para 785. Since Everett teaches a paper bag comprised of several components: cellulose fiber, cellulose ester fibers and CE staple fibers, it cannot teach the MD strength, CD strength and elongation percentages of the hemp paper.
For these reasons and reasons stated for claim 1, claims 15-16 are not obvious
over prior art.”
However, applicant uses the term “including” which is the equivalent of “comprising” which is open language and does not exclude the inclusion of other elements such as fibers. The term “hemp paper” is not defined in the claim and therefore any form of paper comprising hemp fibers is hemp paper. Everett discloses that the cellulose fibers are made from hemp (paragraph [0060]). Everett discloses the percentages of said cellulose fibers (paragraphs [0081-0086], [0609], [0620]). Furthermore, Everett discloses paper which comprises said cellulose fibers (paragraph [0021]).
Applicant argues, “Re claim 17, states hemp paper treated or coated with AKD sizing. Examiner argues sizing agents used to improve stiffness and strength of boxes. A wax coating (AKD sizing) would not be added to Stamets, since it would prevent the seeds from coming out of the carton. Further, the wax coating would make the box stiffer.
Therefore this would not be used in Stamets from Everett. For this reason and reasons stated above, claim 17 is not obvious.
Re claims 19-22, 27, 30 for reasons stated above, claims 19-22, 27, 30 are not
obvious over prior art.”
However, nowhere does Stamets state that they do not want improved mechanical properties. The box of Stamets must function as a regular box before it is planted into the ground. Furthermore, Stamets already provides mechanisms to ease germination and growth of seedlings such as providing thinner paper on the interior of the corrugated cardboard and fine cuts during manufacturing (paragraphs [0050-0059]). Stamets would not be looking to provide a box which can’t function as a regular, or enhanced, box before it is planted in the ground. Stamets would be looking to provide improvements in the same way as any other box since Stamets already provides mechanisms to ease germination and growth of seedlings. Moreover, Everett also discloses the added feature of improved water permeability (paragraph [0014]) which would aid in the germination and growth seedlings. Everett discloses improved recyclability (paragraph [0017]) which is another motivation to combine the references.
Applicant argues, “Re Claim 28 nowhere in paras cited by Examiner is it taught cardboard carton or corrugated box is biodegradable, compostable, or both. As stated throughout, Stamets does not disclose the same material recited by Applicant. For this reason and reasons stated above for claim 1, claim 28 is not anticipated or obvious.
Re claim 29, nowhere in cites by Examiner does it teach cardboard carton or
corrugated box has some combination environmentally friendly features: chlorine free,
toxin free, compostable, recyclable, biodegradable, BPA free, lead free, Phthalates free
and PFA free. Just because not disclosed does not mean that it does not have chlorine,
toxins, etc. Stamets does not teach the same box or carton as the present invention.
For this reason and reasons stated above for claim 1, claim 29 is not anticipated or obvious over prior art.”
Stamets discloses biodegradability (paragraphs [0042], [0044], [0089-0090]). Furthermore, Stamets discloses hemp (paragraph [0053]) which is the same material used by applicant. Applicant has not explained how the hemp of Stamets is different than the hemp of the instant application.
Applicant argues, “Examiner rejected claim 18 as obvious over Stamets, Everett and Payauys. Examiner admits Stamets does not teach box manufacturer's certificate comprised circular stamp of manufacturer's name and technical info. Payauys teaches. Examiner argues Stamets functions as a regular box before planted in the ground, therefore motivation to provide customized retail packaging of Payauys in Stamets.
Payauys teaches putting info and designs on inside surface of shipment container, which are customized. Abstract. One of skill in the art would not look to put information and designs on the inside surface of a box that is used to be planted. For this reason and reasons stated above, claim 18 is not obvious over prior art.”
However, Stamets functions as a regular box before it is planted in the ground and therefore there is motivation to provide the customized retail packaging of Payauys in Stamets just as there is motivation to provide customized retail packaging for a box not planted in the ground.
Applicant argues “Examiner rejected claim 23 obvious over Stamets, Everett, Mueller, admits Stamets does not teach carton or box have corner guard of multiple layers of cardboard sheets comprised of hemp, taught by Mueller. Examiner admits Mueller teaches corner guard for protecting corner of an object. Examiner states corner guard formed of cardboard, but not used for a carton or box.
Mueller relates to a corner shield, but not for a carton or box. No teaching that it
would ever be used for a carton or a box. The corner guard protects corners of objects, Abstract, not a corner of a carton or box. The corner shield protects corners/structures from being damaged during moving of furniture or construction. Para 1. Nowhere does Mueller teach or make reference to a carton or box. Again as stated above, even though the carton or box is a box before planted, anything that would make the box stronger or thicker would prevent the seeds from sprouting once planted and teach against the objects of Stamets. For this reason and reasons stated above, claim 23 is not obvious over prior art.”
However, Mueller is used to merely show that corner guards are well known in the art and are used to protect any object with a corner. Nowhere does Stamets specifically state that anything that would make the box stronger or thicker would prevent the seeds from sprouting once planted and teach against the objects of Stamets especially since Stamets already provides mechanisms to ease germination and growth of seedlings such as providing thinner paper on the interior of the corrugated cardboard and fine cuts during manufacturing (paragraphs [0050-0059]).
Applicant argues, “Examiner rejected claim 24 obvious over Stamets, Everett, Hoffman, admits Stamets not disclose carton or box comprise bleached hemp paper on outside carton or box and unbleached hemp paper inside carton or box or carton or box comprise bleached hemp paper inside carton or box and unbleached hemp paper outside carton or box.
Re claim 24, Examiner states reason for combination is for stability of the box.
Anything that adds to the thickness of the box or that would prevent sprouting of the
seeds would go against the invention of Stamets. There is no reason combine
references as Stamets not looking for stability, but looking for cardboard to add seeds
or fungi to plant and grow. Not matter to Stamets re bleached or unbleached hemp
paper. For this reason and reasons stated above, claim 24 is not obvious over prior art.”
However, Stamets already provides mechanisms to ease germination and growth of seedlings such as providing thinner paper on the interior of the corrugated cardboard and fine cuts during manufacturing (paragraphs [0050-0059]) and making a thicker box would not go against the teachings of Stamets especially since Stamets would not be looking to provide a box which can’t function as a regular, or enhanced, box before it is planted in the ground.
Applicant argues, “Examiner rejected claim 25-26 obvious over Stamets, Everett, Bergstein, admits Stamets not disclose hemp paper oil and grease resistant, cardboard carton or corrugated box leak-proof or coated with water resistant material or moisture proof.
Re claims 25, purpose of Stamets to allow passage of water through cardboard
to water the seeds and fungi as cited to and stated above regarding claim 1. Applicant
acknowledges that the box of Stamets first functions as a box, however, if the box would not allow water to pass through it, it would not function as required by Stamets
for allowing seeds to sprout. Therefore, it is not beneficial to add teachings of
Bergstein to Stamets. For this reason and reasons stated above, claim 25 is not
obvious over prior art.
Re claim 26, purpose of Stamets is to allow passage of water through cardboard
to water the seeds and fungi as cited to and stated above regarding claim 1. Applicant
acknowledges that the box of Stamets first functions as a box, however, if the box
would not allow water to pass through it, it would not function as required by Stamets
for allowing seeds to sprout. Therefore, it is not beneficial to add a water resistant
material of Bergstein. For this reason and reasons stated above, claim 26 is not
obvious over prior art.”
However, Bergstein discloses many types of proofness other than water. Bergstein discloses proofness to organic liquids, vegetable oils, grease and/or gasses. Therefore, Bergstein does not go against the teachings of Stamets.
Applicant argues, “Examiner rejected claim 31 obvious over Stamets, Everett, Fowler, admits Stamets not disclose carton or box has coupons printed on carton or box, taught by Fowler. Fowler discloses QR codes read by mobile phone, require no separation from carton or box.
Fowler does not teach adding coupons printed on cartons or boxes, but states
that it is conceivable. Para 12. Further, Fowler teaches coupons only available after
being separated by disassembling box and tearing off the coupon. This would go
against Stamets as the seeds and fungi are placed in the cardboard of the carton, and if
torn off would go against the teachings. For this reason and the reasons stated above, claim 31 is not obvious over the prior art.”
The examiner disagrees with applicant’s characterization of Stamets modified by Fowler since tearing a portion of the carton or box of Stamets not containing seeds does go against the teaching of Stamets. Furthermore, Fowler discloses QR codes (paragraph [0032]) which can be read by a mobile phone and would require no separation from the carton or box.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
April 2, 2026
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