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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/21/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7, 9-10, 12 and 18-19 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In reference to claim 7, the limitation “the formed sheet” is recited in line 2. There is insufficient antecedent basis for the limitation in the claim. Claim 5, on which claim 7 depends has been amended to recite a first formed sheet and a second formed sheet. It is unclear if the formed sheet recited in line 2 is meant to refer to the first formed sheet, the second formed sheet, the extruded sheet of polymeric material of the first formed sheet and the extruded sheet of polymeric material the second formed sheet or a formed sheet different from each of the first formed sheet and second formed sheet. For the purpose of compact prosecution, “the extruded sheet of polymeric material of the formed sheet” will be interpreted as the extruded sheet of polymeric material of the first formed sheet and/or the extruded sheet of polymeric material of the second formed sheet. However, clarification is requested.
In reference to claims 9 and 10, the limitation “the extruded polymeric material” is recited in lines 1-2. Claim 5, on which claims 9 and 10 depend, has been amended to have an upper outside wall, a lower outside wall and intermediate wall each formed from a sheet of extruded polymeric material, therefore it is unclear if the extruded polymeric material is meant to refer to each of the sheets made the extruded polymeric material, one sheet made of the extruded polymeric material or some of the sheets made of the extruded polymeric material. For the purpose of compact prosecution, “the extruded polymeric material
In reference to claim 12, the limitation “the formed sheet” is recited in lines 1-2. There is insufficient antecedent basis for the limitation in the claim. Claim 5, on which claim 12 depends, has been amended to recite a first formed sheet and a second formed sheet. It is unclear if the formed sheet recited in lines 1-2 is meant to refer to the first formed sheet, the second formed sheet or the first formed sheet and the second formed sheet. For the purpose of compact prosecution, “the formed sheet” will be interpreted as the first formed sheet or the second formed sheet. However, clarification is requested.
In reference to claim 18, the limitation “the formed sheet” is recited in line 2. There is insufficient antecedent basis for the limitation in the claim. Claim 5, on which claim 18 depends, has been amended to recite a first formed sheet and a second formed sheet. It is unclear if the formed sheet recited in line 2 is meant to refer to the first formed sheet, the second formed sheet or the first formed sheet and the second formed sheet. For the purpose of compact prosecution, “the formed sheet” will be interpreted as the first formed sheet or the second formed sheet. However, clarification is requested.
Regarding dependent claim 19, these claims do not remedy the deficiencies of parent claim 18 noted above, and are rejected for the same rationale.
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.
Claims 5-7, 9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Orologio (US 2019/0134941) in view of Stofferis (WO 2012/046127).
In reference to claims 5-7, Orologio teaches an insulation sheet for thermally insulating objects ([0002]) (corresponding to a sheeting). FIG. 11, provided below, shows an insulative assembly including the following layers sequentially stacked a polyethylene film, a polyethylene bubbled film, a polyethylene film, a polyethylene bubble film and a polyethylene film ([0080]-[0085]) (corresponding to an upper outside wall, a lower outside wall, and an intermediate wall each formed from a sheet of polymeric material; a first formed sheet, the first formed sheet being formed from a polymeric material including multiple recesses and/or channels formed in opposing sides of the extruded sheet of polymeric material in a symmetrical repeat pattern; at least a second formed sheet, the second formed sheet being formed from a polymeric material including multiple recesses and/or channels formed in opposing sides of the extruded sheet of polymeric material in a symmetrical repeat pattern; the intermediate wall is fixed between the first formed sheet and the second formed sheet and the first formed sheet and the second formed sheet are fixed between the upper outside wall and the lower outside wall). The polyethylene bubble film includes a plurality cavities or bubbles ([0094]; FIG. 11) (corresponding to multiple recesses and/or channels).
Orologio does not explicitly teach at least some of the bubbles of polyethylene bubble film are at least partially filled with a further material, as presently claimed.
Stofferis teaches a composite plate comprising at least one core of sheet material wherein cavities are integrally formed by thermoforming and filled with a filling material (p. 2, lines 15-19) (corresponding to the recesses and/or channels are at least partially filled with a further material). The filling materials can be chosen for physical or chemical or mechanical properties or a combination thereof, for example to enhance mechanical strength (p. 3, lines 1-4) (corresponding to a further material providing improved strength, resilience, resistance and/or thermal properties of the sheeting). Stofferis further teaches the filler material is a superinsulation providing good insulation (p. 6, line 27 - p. 7, line 2) (corresponding to the further material provides reduced thermal conductivity of the sheeting).
In light of the motivation of Stofferis, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include the filling material in the cavities or bubbles of the polyethylene bubble film of Orologio, in order to provide enhanced properties, such as enhanced mechanical strength or good insulation to the insulation sheet.
Although Orologio in view of Stofferis does not explicitly teach the polyethylene films and polyethylene bubble films are extruded films, the bubble films are thermoformed or vacuum-formed and the filling material is filled by cascade filling or waterfall filling, as presently claimed. It is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
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Therefore, absent evidence of criticality regarding the presently claimed process and given that Orologio in view of Stofferis meets the requirements of the claimed product, Orologio in view of Stofferis clearly meets the requirements of the present claim.
In reference to claim 9, Orologio in view of Stofferis teaches the limitations of claim 5, as discussed above. Orologio teaches the films are made of polyethylene ([0080]-[0085]) (corresponding to the extruded polymeric material or each extruded sheet of polymeric material is polyethylene).
In reference to claim 15, Orologio in view of Stofferis teaches the limitations of claim 5, as discussed above.
Orologio in view of Stofferis does not explicitly teach the bubbles are hexagon-shaped. However, Orologio teaches the shape and arrangement of the cavities or bubbles in the film may be as suitably determined by the skilled person ([0094]).
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the presently claimed invention to have the bubbles be hexagon-shaped, since it has been held that the configuration was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration claimed was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Orologio in view of Stofferis as applied to claim 5 above, and further in view of Hoshino (US 2018/0304572).
In reference to claim 10, Orologio in view of Stofferis teaches the limitations of claim 5, as discussed above.
Orologio in view of Stofferis does not explicitly teach the polyethylene films are a composite material including high density polyethylene and a calcium carbonate additive, as presently claimed.
Hoshino teaches a hollow-structure plate that is easy to process while retaining compressive strength ([0001]). The hollow-structure plate includes a hollow convex portion-formed sheet made of a thermoplastic resin sheet with a plurality of hollow convex portions on at least one surface ([0034]). The thermoplastic resin from the viewpoints of processibility, cost, weight and physical properties includes polyethylene such as high density polyethylene (HDPE) ([0065]-[0066]). The thermoplastic resin is blended with filler such as calcium carbonate ([0067]) (corresponding to the extruded polymeric material or each extruded sheet of polymeric material is a composite material including high density polyethylene and a calcium carbonate additive).
In light of the motivation of Hoshino, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the polyethylene films of Orologio in view of Stofferis be HDPE blended with calcium carbonate, in order to provide polyethylene films with good processibility, cost, weight and physical properties, and thereby arriving at the presently claimed invention.
Claims 12 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Orologio in view of Stofferis as applied to claim 5 above, and further in view of Ghali (US 2015/0274390).
In reference to claims 12 and 18-19, Orologio in view of Stofferis teaches the limitations of claim 5, as discussed above.
Orologio in view Stofferis does not explicitly teach channels interconnected between the cavities of the bubbles, as presently claimed. However, Orologio teaches the shape and arrangement of the cavities or bubbles in the film may be as suitably determined by the skilled person ([0094]).
Ghali teaches a heat-insulation material comprising a sheet of at least one layer of closed-cell gas bubbles ([0008]). The sheet of closed-cell gas bubbles if fabricated of polyethylene ([0008]). Fig. 1, provided below, shows the bubble pack layers 12 include channels interconnected between the recesses in a repeating pattern (corresponding to an upper side of the formed sheet includes the channels interconnected between the recesses; the recesses and channels are formed on the formed sheet in a tessellated pattern; the tessellated pattern on the formed sheet is surrounded by a flat or non-pattered portion of the formed sheet). Accordingly, the prior art references teach that it is known that the bubble film and the sheet of closed-cell gas bubbles are functional equivalents for providing a thermally insulating sheet material.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have used the cellular structure of the bubble sheet of Ghali for the bubble film of Orologio in view of Stofferis because both elements were known equivalents for providing a bubble layer in thermally insulating sheets.
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The substitution would have resulted in the predictable result of providing electrical connectivity to the semiconductor device.
In reference to claim 20, Orologio in view of Stofferis teaches the limitations of claim 5, as discussed above.
Orologio in view of Stofferis does not explicitly teach the thermally insulated sheet comprises packaging sheeting, as presently claimed.
Ghali teaches a heat-insulating material comprising at least one layer of closed-cell gas bubbles ([0008]). The insulation material is useful in the manufacturing of packaging materials for items which must be kept cold during shipping, such as foods, medicine and biological material ([0009]).
In light of the disclosure by Ghali of using the heat-insulating sheet as a packaging material, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the thermally insulating sheet of Orologio in view of Stofferis as a packaging material, in order to provide a thermally insulating sheet to insulate a material being shipped, and thereby arriving at the presently claimed invention.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Orologio in view of Stofferis as applied to claim 5 above, and further in view of Nishisaka et al. (JP 2006-103027) (Nishisaka).
The examiner has provided a machine translation of JP 2006-103027. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 13 and 14, Orologio in view of Stofferis teaches the limitations of claim 5, as discussed above.
Orologio in view of Stofferis does not explicitly teach at least one edge of the thermally insulating sheet is sealed, as presently claimed.
Nishisaka teaches a laminated sheet in which an intermediate sheet having a hollow convex portion is laminated so that both sides of the intermediate sheet are sandwiched between a top sheet and a back sheet ([0001]). The outer periphery of the laminated sheet is curved such that the outer periphery of the front sheet and the outer periphery of the back sheet are curved relative to each other and the end faces are joined to each other ([0012]) (corresponding to at least one edge of the sheeting is sealed). As a result the outer periphery of the laminated sheet has a good appearance ([0012]). The laminated sheet is sandwiched between an upper welding horn and a lower welding horn heated and pressed to form the curved outer periphery ([0035]) (corresponding to the at least one edge of the sheeting is sealed by heat crimping or heat compression).
In light of the motivation of Nishisaka, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to provide the outer periphery of the sheet of Orologio in view of Stofferis with a curved outer periphery, in order to provide a sheet that has a good appearance, and thereby arriving at the presently claimed invention.
Additionally, it is noted that claim 14 defines the product by how the product is made. Therefore, claim 14 is a product-by-process claim. For the purpose of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having at least one edge of the sheeting being sealed. Orologio in view of Stofferis and Nishisaka suggests such a product.
Response to Arguments
In response to amended claim 7, the previous Claim Objections of record are withdrawn.
In response to amended claims 9-10 and cancelled claim 8, the previous 35 U.S.C. 112(b) and 112(d) rejections of record are withdrawn. However, the amendments necessitate a new set of 35 U.S.C. 112(b) rejections, as discussed above.
In response to amended claim 5, which now requires the sheeting comprise an intermediate wall formed form a sheet of extruded polymeric material, a first formed sheet and a second formed sheet, it is noted that Stofferis (WO 2021/046127) and Hoshino (US 2018/0304572), alone or in combination, no longer meets the presently claimed limitations. Therefore, the previous 35 U.S.C. 102/103 rejections over Stofferis and 35 U.S.C. 103 rejections over Hoshino in view of Stofferis are withdrawn from record. However, the amendment necessitates a new set of rejections, as discussed above.
Applicant’s arguments filed 03/21/2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon, namely Kim (US 2019/0359402), is considered pertinent to applicant's disclosure. However, the rejection using this reference would be cumulative to the rejection of record set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784