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REJECTIONS WITHDRAWN
All previous rejections have been withdrawn.
REJECTIONS REPEATED
There are no rejections repeated.
NEW REJECTIONS
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 1-8 and 15-34 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-79 and 1-50 of copending Application Nos. 17/855,536 and 17/868,669, respectively, in view of Katchko et al. (US 2006/0231606. Claims 1-79 and 1-50 of copending Application Nos. 17/855,536 and 17/868,669, respectively, recite paper products made from hemp. Claims 1-79 and 1-50 of copending Application Nos. 17/855,536 and 17/868,669, respectively, do not recite a paper sleeve for holding hot liquids. Katchko discloses a paper sleeve made from hemp for holding hot fluids. It would have been obvious to have provided a paper sleeve for holding hot liquids in order to provide improved heat insulation for a cup and a more environmentally friendly product paragraphs ([0007], [0011], [0014], [0018 – 0022], [0033], Figs. 1-3).
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) 1-8, 15-17, 21, 24-30 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katchko et al. (US 2006/0231606) in view of Everett et al. (US 2020/0063355).
Katchko discloses a paper sleeve comprised of hemp paper for holding hot liquids (paragraphs [0007], [0011], [0014], [0018 – 0022], [0033], Figs. 1-3).
Katchko does not disclose wherein said hemp paper is one hundred percent hemp, wherein said hemp paper is comprised of from one to twenty five percent hemp, wherein said hemp paper is comprised of from twenty five to fifty percent hemp, wherein said hemp paper is comprised of from fifty to seventy-five percent hemp, wherein said hemp paper is comprised of from seventy-five to one hundred percent hemp, wherein remaining percentage of paper that is not hemp paper comprises any combination of post-consumer waste recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, 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 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.
Everett discloses wherein said hemp paper is one hundred percent hemp, wherein said hemp paper is comprised of from one to twenty five percent hemp, wherein said hemp paper is comprised of from twenty five to fifty percent hemp, wherein said hemp paper is comprised of from fifty to seventy-five percent hemp, wherein said hemp paper is comprised of from seventy-five to one hundred percent hemp, wherein remaining percentage of paper that is not hemp paper comprises any combination of post-consumer waste recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, 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 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 (paragraphs [0021, 0060, 0081 – 0086, 0585, 0609, 0620, 0621]) in a paper products (paragraph [0016]) for the purpose of providing improved mechanical properties and/or recyclability (paragraphs [0009 – 0020]).
Therefore it would have been obvious to one of ordinary skill in the art at the time applicant’s invention to have provided wherein said hemp paper is one hundred percent hemp, wherein said hemp paper is comprised of from one to twenty five percent hemp, wherein said hemp paper is comprised of from twenty five to fifty percent hemp, wherein said hemp paper is comprised of from fifty to seventy-five percent hemp, wherein said hemp paper is comprised of from seventy-five to one hundred percent hemp, wherein remaining percentage of paper that is not hemp paper comprises any combination of post-consumer waste recycled content wood pulp, post-industrial recycled content wood pulp and virgin wood pulp, 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 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 in Katchko in order to provide improved mechanical properties and/or recyclability as taught or suggested by Everett.
Katchko discloses wherein said hot liquid comprises coffee, tea, hot chocolate or soup, wherein said paper sleeve is insulated, wherein said paper sleeve is embossed on an external side or on both an internal and external side, wherein said sleeve has a wide face and seamless construction, providing a surface area to accept graphics, wherein said hemp paper sleeve is unbleached, wherein said hemp paper sleeve is bleached, wherein said paper sleeve is recyclable, curbside recyclable, biodegradable or compostable (since Hemp is recyclable), wherein said paper sleeve has some combination of the following environmentally friendly features: chlorine free, toxin free, BPA free, lead free, phthalates free or PFA free (since none of these materials are used), wherein said sleeve has embossment on inside surface, outside surface or both inside surface and outside surface (paragraphs [0007], [0011], [0014], [0018 – 0022], [0033], Figs. 1-3).
Katchko does not disclose wherein the paper sleeve fits around an eight ounce, ten ounce, twelve ounce, sixteen ounce or twenty ounce cup, wherein said paper sleeve measures between seven inches and sixteen inches in length, wherein a fully assembled paper sleeve measures between three inches and seven inches in length and between one inch and four inches in width. However, it has been found that changes in size or shape are obvious and well withing the level of one of ordinary skill in the art (MPEP 2144.04(IV)). 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 the paper sleeve fits around an eight ounce, ten ounce, twelve ounce, sixteen ounce or twenty ounce cup, wherein said paper sleeve measures between seven inches and sixteen inches in length, wherein a fully assembled paper sleeve measures between three inches and seven inches in length and between one inch and four inches in width in order to provide a sleeve which will fit a variety of cup sizes providing improved convenience to the consumer.
Claim(s) 18-20, 23, 32 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katchko et al. (US 2006/0231606) in view of Everett et al. (US 2020/0063355), as applied to claims 1-8, 15-17, 21, 24-30 and 33 above, and further in view of Mazzarolo et al. (US 6,250,545).
Katchko discloses wherein said sleeve has a wide face providing a surface area to accept graphics (paragraphs [0007], [0011], [0014], [0018 – 0022], [0033], Figs. 1-3).
Katchko does not disclose wherein said paper sleeve comprises fluting, wherein said paper sleeve has fluting on an external side or on both an internal and external side, wherein said fluting is patterned in a horizontal, vertical or angular direction, and wherein the sleeve has seamless construction, wherein said sleeve has a closure mechanism.
Mazzarolo discloses wherein said paper sleeve comprises fluting, whereinsaid paper sleeve has fluting on an external side or on both an internal and external side, wherein said fluting is patterned in a horizontal, vertical or angular direction, and wherein the sleeve has seamless construction, wherein said sleeve has a closure mechanism (column 1, lines 35-49, column 2, lines 8-67 and Figs. 1-3) in an insulative sleeve for a cup for the purpose of providing improved insulation and/or improved fitting for the cup (column 1, lines 5-10).
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 paper sleeve comprises fluting, wherein said paper sleeve has fluting on an external side or on both an internal and external side, wherein said fluting is patterned in a horizontal, vertical or angular direction, and wherein the sleeve has seamless construction, wherein said sleeve has a closure mechanism in Katchko in order to provide improved insulation and/or improved fitting for the cup as taught or suggested by Mazzarolo.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katchko et al. (US 2006/0231606) in view of Everett et al. (US 2020/0063355), as applied to claims 1-8, 15-17, 21, 24-30 and 33 above, and further in view of Colby (US 2011/0068114).
Katchko does not disclose wherein said sleeve has a heat-activated adhesive that sticks to cup when paper sleeve is attached to said cup.
Colby discloses wherein said sleeve has a heat-activated adhesive that sticks to cup when paper sleeve is attached to said cup (paragraphs [0009, 0012 – 0014]) for the purpose of providing a sleeve with improved stability (paragraphs [0001 – 0003]).
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 sleeve has a heat-activated adhesive that sticks to cup when paper sleeve is attached to said cup in Katchko in order to provide a sleeve with improved stability as taught or suggested by Colby.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Katchko et al. (US 2006/0231606) in view of Everett et al. (US 2020/0063355), as applied to claims 1-8, 15-17, 21, 24-30 and 33 above, and further in view of Barton (US 2013/0043261).
Katchko does not disclose wherein said sleeve has an outside surface having graphics and an inside surface having fluting.
Barton discloses wherein said sleeve has an outside surface having graphics and an inside surface having fluting (paragraphs [0015], [0030], [0035 – 0036] and Figs. 3, 4b and 5) in order to provide improved stability and/or improved printing surfaces for logos or labels (paragraphs [0014 – 0015]).
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 sleeve has an outside surface having graphics and an inside surface having fluting in Katchko in order to provide improved stability and/or improved printing surfaces for logos or labels as taught or suggested by Barton.
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments of 10/29/25 have been carefully considered but are unpersuasive. Applicant’s request to hold the double patenting rejections in abeyance is acknowledged. Applicant’s arguments with regards to the 102 rejections are moot since the 102 rejections have been withdrawn.
Applicant argues, “With regards to claims 29-30, Examiner states hemp is recyclable, but it is not stated what other elements are combined with hemp. Katchko does not specifically teach paper sleeve is recyclable, curbside recyclable, biodegradable or compostable, as Katchko teaches many types of elements, some of which may not have these elements. Further with regards to claim 30, Examiner states that these chemicals are not used in Katchko.”
However, Katchko discloses hemp which is the exact same material recited by applicant and is therefore recyclable. Applicant has not pointed out how the hemp of Katchko is different than the hemp of the instant invention.
Applicant argues, “However, just because they are not mentioned does not mean that the paper sleeve of Katchko does not have the chemicals and therefore does not have some combination of following environmentally friendly features: chlorine free, toxin free, BPA free, lead free, phthalates free or PFA free, especially since it is not a requirement of the different types of paper Katchko teaches."
However, applicant appears to be arguing that something which is specifically not disclosed by Katchko is somehow disclosed. None of the chemicals recited by applicant are disclosed in Katchko.
Applicant argues, “Examiner rejected claims 4-9, 15-17 obvious over Katchko, Everett. Examiner states Katchko does not disclose percentages of hemp paper or remaining percent that is not hemp paper. Examiner states Katchko does not teach hemp paper has a tensile MD or CD strength in ranges claimed; and elongation MD and CD and that hemp paper is treated or coated with AKD sizing. Examiner states Everett discloses limitations, paras 21, 60, 81-86, 585, 609, 620, 621, para 16, paras 9-20. Examiner states obvious combine references to provide improved mechanical properties or recyclability.
With regards to claim 4-8 Examiner states Everett teaches paper bag comprises
1-25% hemp, 5-50% hemp, 50-75% hemp or 75-100% hemp.
Para 21 relates to a paper bag made of cellulose fibers and cellulose ester staple
fibers, not hemp. Para 60 only teaches that the cellulose fibers can be made of hemp,
but the bag is further made of cellulose ester staple fibers. Paras 81-86, 609, 620 do
not mention hemp. Para 81 teaches a composition of cellulose fibers and CE staple
fibers in a composition by weight. Para 82 teaches a composition of woold pulp in a
composition by weight. Para 83 teaches a composition of non-wood cellulose fibers in a
composition by weight. Para 84 teaches a composition of effluent from a refiner and
wet laid products in a composition by weight. Para 85 teaches a composition of a
virgin, non-fibril-lated cellulose fiber or co-refined virgin cellulose fibers in a composition
by weight. Para 86 teaches a composition that contains waste/recycle cellulose fibers
or co-refined waste/recycle cellulose fibers in a composition by weight. Para 609 and
620 teach a wet laid products that exhibit increase dry tensile strength and increased
Mullen burst strength.
Paras 9-20 are in the background of the invention, 585 (relates to a dry tensile
strength) and 621 (relates to Mullen Burst strength), none of these paragraphs mention
hemp paper.”
However, 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, “Further there is no reason to combine Katchko that teaches a paper sleeve with Everett which teaches a paper bag. The paper sleeve is claimed as holding hot beverages, which is different then the function of Everett and therefore, the characteristics and compositions of both products would known to be different by on of skill in the art. Further, Katchko teaches embossing paper for paper sleeve, which would not be done with paper bag of Everett.”
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]).
Katchko and Everett are both drawn to products containing hemp. Therefore, there is motivation to combine in order to provide improved mechanical properties or recyclability (Everett, paragraphs [0013-0016]). Furthermore, Katchko is the primary reference and nowhere in the rejection is it proposed to modify the bag of Everett with the embossments of Katchko. The invention of Katchko is to be modified by the teachings of Everett, not the other way around.
Applicant argues, “Re claim 9, is now part of amended claim 1. As stated above these elements are not taught in Katchko that besides hemp, other types of pulp would be used, and such pulp would be post-consumer waste recycled wood pulp, post- industrial recycled wood pulp or virgin wood pulp. Further specific type of pulp claimed is not taught in Everett, nor would it be combined with Katchko which teaches a bag. Therefore claim 9 is not obvious over the prior art.”
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]). Katchko and Everett are both drawn to products containing hemp. Therefore, there is motivation to combine in order to provide improved mechanical properties or recyclability (Everett, paragraphs [0013-0016]).
Applicant argues, “Re claims 15-17, claim 15 relates to hemp paper has tensile MD strength five pounds to two hundred pounds per inch and tensile CD strength five pounds to two hundred pounds per inch. Claim 16 relates to hemp paper has elongation MD percentage one half to twenty pounds per inch and elongation CD percentage one half pound to twenty pounds per inch. Claim 17 relates to hemp paper treated or coated with AKD sizing. Everett teaches a bag composition made of cellulose fibers and cellulose ester staple fibers. Para 21. The tensile MD strength and tensile CD strength does not relate to hemp paper or what is claimed by Applicant. Therefore, claims 15-16 are not obvious over the prior art.”
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]). Katchko and Everett are both drawn to products containing hemp. Therefore, there is motivation to combine in order to provide improved mechanical properties or recyclability (Everett, paragraphs [0013-0016]).
Applicant argues, “Examiner rejected claims 18-20, 23, 32, 34 obvious over Katchko, Mazzarolo. Examiner states Katchko not disclose paper sleeve comprise fluting, where sleeve has fluting on external side or both internal and external side, where fluting is pattern in horizontal, vertical or angular direction and sleeve has seamless construction, closure mechanism. Examiner states Mazzarolo discloses paper sleeve comprise fluting missing from Katchko, insulated sleeve provide insulation and improved fitting. Obvious combine references. Examiner is taking a part of Mazzarolo, the fluting, but not the fact that the fluting is thermoformed plastic and specifically not paper. This goes against case law and the MPEP to only take a portion of a prior art reference, and not consider the part of Mazzarolo that teaches away from combining the references. Examiner has no support for the statement that if plastic can be fluted then so can hemp paper be fluted.
Specifically Mazzarolo teaches the prior art sleeves made of paper are opaque
and obscure trade dress and designs of cups. Background of Invention. Mazzarolo
teaches sleeve made of thermoformed plastic so as not to obscure trade dress and
designs. 1:39-42. Therefore, one cannot combine Katchko and Mazzarolo and
therefore claims are not obvious over prior art.”
However, the proposed modification is not to replace the hemp paper of Katchko with the plastic material of Mazzarolo. The proposed modification is simply to provide the fluting disclosed in Mazzarolo in the invention of Katchko. If plastic can be fluted, hemp paper can certainly be fluted for the purpose of providing improved insulation and/or improved fitting for the cup as taught or suggested by Mazzarolo. There is no specific teaching away from fluting hemp paper in either reference. The fact that they might be made from different materials is not a specific teaching away from the proposed modification. It is common sense that any foldable material can be fluted and the motivation to do so is provided by Mazzarolo to provide improved insulation and/or improved fitting for the cup.
Applicant argues, “Examiner rejected claim 31 obvious over Katchko, Barton. Examiner states Katchko not disclose sleeve has outside surface graphics and inside surface fluting, by Barton, improve stability, printing surfaces for logos or labels, obvious combine. Examiner argues that Katchko teachings do not preclude addition of fluting, however, Katchko does not provide any motivation to have fluting.”
However, the motivation for providing fluting is provided by Barton which is to provide improved stability and/or improved printing surfaces for logos or labels (paragraphs [0014-0015]).
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
February 6, 2026