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 .
Claims Status
Claims 1, 2, 8, 14, 20, 43, 62, 63, 70, 73-75, 81, 86, 91, 96, 98, 102, and 105-106 are all the claims pending. Claims 1 and 96 are amended.
Claims 98 and 102 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Response to Amendment/Argument
Applicant's amendments and arguments with respect to the rejection of present claims 96 and 106 under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2003/0124316; “Huang”) have been fully considered and are persuasive. Therefore, the previous rejection based on Huang has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made based on Huang in view of newly discovered reference Wu et al. (US 5,575,418, “Wu”) as discussed in details below in the body of the rejection.
Applicant's amendments and arguments with respect to the rejection of present claims 1, 2, 8, 14, 20, 43, 62, 63, 70, 73-75, 81, 86, 91 and 105 under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2003/0124316; “Huang”) in view of Marsh (US 3,925,150) have been fully considered but they are not persuasive for at least the following reasons.
Applicant contends (1) regarding instant amended claim 1, Huang in view of Marsh does not disclose or suggest the instantly claimed corrugating medium of claim 1 that is selected from linerboard grade material and comprises at least 50 wt% kraft fibers (remarks, page 6 to page 7), because per applicant, Marsh does not teach using a linerboard grade material that comprises at least 50 wt% kraft fibers for corrugating medium (remarks, page 6, fourth para).
In response to contention (1), applicant’s arguments have been carefully studied and fully considered but they are not found persuasive.
As an initial matter, it is important to note that the independent claim 1, as amended, recites the limitation “the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers”. However, there is no support in Applicants' originally filed specification for such amendment that the non-wicking corrugating medium of the present invention is selected from linerboard grade material and comprises at least 50 wt% kraft fibers. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
It is noted that applicant pointed to paragraph [0050] of the instant specification for support of the amendment to claim 1 (see remarks, page 5, first para). However, while the para [0050] of the instant specification describes that in certain embodiments the non-wicking corrugating medium can alternatively be EnduraLinerTM material (i.e., linerboard grade material), the pointed disclosure does not support the newly made amendment that the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers. There is no support or evidence that EnduraLiner material comprises at least 50 wt% kraft fibers, or vice versa.
The remainder of the present specification has been carefully reviewed, but there is no support or evidence in Applicants' originally filed specification for the newly amendment to claim 1 that “the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers”. Accordingly, for purpose of examination, the limitation of “the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers” of claim 1 is currently not given patentable weight. For purpose of examination, the examiner considers the prior art reference that otherwise teaches a non-wicking corrugating medium comprises at least 50 wt% kraft fibers as to read on the instantly claimed limitations.
In this connection, in the present case, the secondary reference Marsh teaches corrugated paperboard with the corrugating medium made from kraft fibers is known in the art (col. 1, lines 14-20), and Marsh teaches the commonly used material/suitable material for the corrugating medium being kraft fibers (col. 1, lines 14-20).
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang in view the teachings of Marsh, to select suitable material for the corrugating medium of the corrugated cardboard, such as those the corrugating medium made of kraft fibers (i.e., which reads on a corrugating medium comprising at least 50%% kraft fibers) as taught by Marsh as being the commonly used material/suitable material for corrugating medium (col. 1, lines 14-20), which would have predictably arrived at a satisfactory corrugated cardboard. One of ordinary skill would have understood how to modify and choose suitable materials for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 8, 14, 20, 43, 62, 63, 70, 73-75, 81, 86, 91 and 105 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Independent claim 1, as amended, recites the limitation “the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers”. However, there is no support in Applicants' originally filed specification for such amendment that the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers. It is noted that applicant pointed to paragraph [0050] of the instant specification for support of the amendment to claim 1 (see remarks, page 5, first para).
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While the para [0050] of the instant specification describes that in certain embodiments the non-wicking corrugating medium can alternatively be EnduraLinerTM material (i.e., linerboard grade material), the pointed disclosure does not support the newly made amendment that the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers. There is no support or evidence that EnduraLinerTM material comprises at least 50 wt% kraft fibers, or vice versa.
The remainder of the present specification has been carefully reviewed, but there is no support or evidence in Applicants' originally filed specification for the newly amendment to claim 1 that “the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers”. Accordingly, for purpose of examination, the limitation of “the non-wicking corrugating medium is selected from linerboard grade material and comprises at least 50 wt% kraft fibers” of claim 1 is currently not given patentable weight. For purpose of examination, the examiner considers the prior art reference that otherwise teaches a non-wicking corrugating medium comprises at least 50 wt% kraft fibers as to read on the instantly claimed limitations.
Claims 2, 8, 14, 20, 43, 62, 63, 70, 73-75, 81, 86, 91 and 105 are rejected due to their dependency of claim 1.
Appropriate correction is required.
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(s) 1, 2, 8, 14, 20, 43, 62, 63, 70, 73-75, 81, 86, 91 and 105 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2003/0124316; “Huang”) in view of Marsh (US 3,925,150).
Regarding claims 1 and 43, Huang teaches a corrugated cardboard (10, Fig. 1, para [0001] [0039] [0047]), comprising:
- a first cellulosic fibered linerboard layer (linerboard 12) (Fig. 1, para [0047]);
- a second cellulosic fibered linerboard layer (linerboard 14) (para [0047]); and
- a non-wicking corrugating medium (16, para [0047], the corrugating medium layer 16 is water/humidity resistant, i.e., non-wicking) attached to and disposed between the first cellulosic fibered linerboard layer (12) and the second cellulosic fibered linerboard layer (14, see Fig. 1, para [0047]).
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Huang teaches using various suitable materials for its corrugating medium including various paper/paperboard, paper fibers, fiber pulp (para [0035] [0038]-[0039]). But Huang does not specifically teach its medium material is of the specific amount and the type of the fibers as instantly claimed, i.e., the corrugating medium comprising at least 50%% kraft fibers.
Marsh teaches corrugated paperboard with the corrugating medium made from kraft fibers is known in the art (col. 1, lines 14-20), and Marsh teaches the commonly used material/suitable material for the corrugating medium being kraft fibers (col. 1, lines 14-20).
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang in view the teachings of Marsh, to select suitable material for the corrugating medium of the corrugated cardboard, such as those the corrugating medium made of kraft fibers (i.e., which reads on a corrugating medium comprising at least 50%% kraft fibers) as taught by Marsh as being the commonly used material/suitable material for corrugating medium (col. 1, lines 14-20), which would have predictably arrived at a satisfactory corrugated cardboard. One of ordinary skill would have understood how to modify and choose suitable materials for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Huang does not specifically teach, that in the particular embodiment of the corrugated cardboard of Fig. 1, its first cellulosic fibered linerboard layer (linerboard 12) is treated with a wet strength agent.
However, Huang teaches that it is known in the art to treat/provide the linerboard layer of the paperboard products with wet strength agent/wet strength resin to provide increased wet strength (para [0044]). Huang teaches the suitable wet strength agent includes a wet strength resin (para [0044]), meeting the claimed material limitations of claim 43.
It would have been obvious to one of ordinary skill in the art to modify the modified corrugated cardboard of Huang, to provide/treat the first cellulosic fibered linerboard layer (i.e., linerboard 12) with wet strength agent/wet strength resin as taught by Huang to provide the corrugated cardboard with increased wet strength as taught by Huang (para [0044]), which would have predictably arrived at a satisfactory corrugated cardboard that is the same as instantly claimed, in claims 1 and 43.
Regarding claim 2, Huang does not specifically teach the caliper thickness of its first cellulosic fibered linerboard layer.
Absent a showing of criticality with respect to caliper thickness (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the caliper thickness through routine experimentation in order to achieve the desired properties (strength, durability, etc.) of the corrugated cardboard once produced, which would have arrived at a workable caliper thickness that falls within the broad range as instantly claimed. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claims 8 and 14, Huang teaches using various suitable linerboard material with different dry strength and/or wet strength depending on the intended end applications of the corrugated cardboard (para [0045] [0050]-[0051]).
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang, to select suitable material for its first cellulosic fibered linerboard layer of the corrugated cardboard depending on the intended end applications of the corrugated cardboard, such as those having has an Elmendorf dry tear strength of at least 300 gf (as in instant claim 8) and/or those having an Elmendorf wet tear strength of at least 200 gf (as in instant claim 14), which would have predictably arrived at a satisfactory corrugated cardboard that is the same as instantly claimed, in claims 8 and 14. One of ordinary skill would have understood how to modify and choose suitable materials for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 20, Huang teaches using suitable paperboard material for the first cellulosic fibered linerboard layer, including those having an Elmendorf wet tear strength that is 30 to 40% of the dry tear strength (para [0044]), which range overlaps with the instantly claimed range of at least 20% of an Elmendorf dry tear strength of the first cellulosic fibered linerboard layer. 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). MPEP 2144.05
Regarding claim 62, as discussed above in rejection to claim 1, Huang teaches a corrugated cardboard (10, Fig. 1, para [0001] [0039] [0047]) that includes a second cellulosic fibered linerboard layer (14). Huang does not teach or require the second linerboard (14) be treated with a wet strength agent ([0047]), and is considered as meeting the claimed limitations, i.e., the second cellulosic fibered linerboard layer (14) is untreated with a wet strength agent.
Regarding claim 63, Huang teaches using suitable paperboard material for the second cellulosic fibered linerboard layer, including those having an Elmendorf wet tear strength that is 30 to 40% of the dry tear strength (para [0044]), meeting the claimed limitations of having wet tear strength that is less than 80% of an Elmendorf dry tear strength of the second cellulosic fibered linerboard layer. 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). MPEP 2144.05
Regarding claims 70 and 73, Huang teaches using various suitable materials having various non-wicking properties for the corrugating medium depending on the intended end applications of the corrugated cardboard (para [0050]-[0051]).
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang, to select suitable material with desired non-wicking properties/abilities for the non-wicking corrugating medium layer of the corrugated cardboard depending on the intended end applications of the corrugated cardboard, such as those having a 24-hour edgewick-test wick distance from an edge is less than about 36 mm (as in instant claim 70) and/or those having a 24-hour edgewick-test wick distance from an edge is less than about 6 mm (as in instant claim 73), which would have predictably arrived at a satisfactory corrugated cardboard that is the same as instantly claimed, in claims 70 and 73. One of ordinary skill would have understood how to modify and choose suitable materials for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 74, Huang teaches using suitable materials for its corrugating medium including those having a basis weight of about 33 to 45 lbs/MSF (para [0040] and Table 1), which range overlaps with the instantly claimed range of 18 lbs/MSF to 45 lbs/MSF. 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). MPEP 2144.05
Regarding claim 75, Huang teaches using suitable materials for its corrugating medium including corrugated paper/paperboard (para [0038]–[0040] [0050]), meeting the claimed limitations.
Regarding claim 81, Huang teaches using various suitable materials for its corrugating medium including various paper/paperboard, paper fibers, fiber pulp (para [0035] [0038]-[0039]). Huang does not specifically teach using the medium material comprising the specific amount and the type of the fibers as instantly claimed.
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang, to select suitable medium material for its corrugating medium of the corrugated cardboard depending on the intended end applications of the corrugated cardboard, such as those medium material having at least 50 wt% unbleached fibers, which would have predictably arrived at a satisfactory corrugated cardboard that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 86, Huang teaches using various suitable materials for its corrugating medium including various paper/paperboard, paper fibers, fiber pulp (para [0035] [0038]-[0039]). Huang does not specifically teach using the medium material comprising the specific amount and the type of the fibers as instantly claimed.
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang, to select suitable medium material for its corrugating medium of the corrugated cardboard depending on the intended end applications of the corrugated cardboard, such as those medium material having at least 50 wt% unbleached kraft fibers, which would have predictably arrived at a satisfactory corrugated cardboard that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 91, Huang teaches as in one of its embodiments, in its corrugated cardboard, the first cellulosic fibered linerboard layer and the second cellulosic fibered linerboard layer are attached to the non-wicking corrugating medium at one or more peaks of the non-wicking corrugating medium using an adhesive (para [0047], Fig. 1, the tip of the non-wicking corrugating medium 16 is adhered to the linerboard).
Regarding claim 105, Huang teaches that the corrugating medium may be treated with polymeric material and/or sizing agent for the benefit of having water/humidity resistant (para [0047]), Huang does not teach or state the corrugating medium must be treated with a moisture resistance agent, and is considered as meeting the claimed limitations. It would have been obvious to one of ordinary skill in the art to appreciate that a corrugated cardboard of which the corrugating medium is not being treated with a moisture resistance agent would still function well as a corrugated cardboard if the end application of the corrugated cardboard has low/no requirement for moisture resistant.
Claim(s) 96 and 106 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2003/0124316; “Huang”) in view of Wu et al. (US 5,575,418, “Wu”).
Regarding independent claim 96, Huang teaches a corrugated cardboard (10, Fig. 1, para [0001] [0039] [0047]), comprising:
- a first cellulosic fibered linerboard layer (linerboard 12) (Fig. 1, para [0047]);
- a second cellulosic fibered linerboard layer (linerboard 14) (para [0047]); and
- a non-wicking corrugating medium (16, para [0047], the corrugating medium layer 16 is water/humidity resistant, i.e., non-wicking) attached to and disposed between the first cellulosic fibered linerboard layer (12) and the second cellulosic fibered linerboard layer (14, see Fig. 1, para [0047]).
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Huang does not specifically teach, that in the particular embodiment of the corrugated cardboard of Fig. 1, its first cellulosic fibered linerboard layer (linerboard 12) is treated with a wet strength agent.
However, Huang teaches that it is known in the art to treat/provide the linerboard layer of the paperboard products with wet strength agent/wet strength resin to provide increased wet strength (para [0044]). Huang teaches the suitable wet strength agent includes a wet strength resin (para [0044).
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang, to provide/treat the first cellulosic fibered linerboard layer (i.e., linerboard 12) with wet strength agent/wet strength resin as taught by Huang to provide the corrugated cardboard with increased wet strength as taught by Huang (para [0044]), which would have predictably arrived at a satisfactory corrugated cardboard.
Huang teaches its corrugated carboard includes open edges having the non-wicking corrugating medium exposed (para [0050], Fig. 13), of which the open edges comprise a peripheral edge of the corrugated cardboard (para [0050], see annotated Fig. 13, the edge are peripheral edge).
Huang does not specifically teach that one of the one for more cut edges are crushed.
It would have been obvious to one of ordinary skill in the art to modify the corrugated cardboard of Huang, to crush the peripheral cut edges, i.e., the end peripheral edge of the corrugated cardboard, to push the first and the second cellulose fiber linerboards of the corrugated cardboard close/closer, for the obvious benefit of reducing the exposure area of the middle non-wicking corrugating medium to reduce the moisture/water penetration, to provide a corrugated cardboard with improved moisture resistance, which would have predictably arrived at a satisfactory corrugated cardboard.
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As discussed above, Huang teaches its corrugated carboard includes open edges having the non-wicking corrugating medium exposed (para [0050], Fig. 13), of which the open edges comprise a peripheral edge of the corrugated cardboard (para [0050], see annotated Fig. 13, the edge are peripheral edge). However, Huang does not specifically teach the inclusion of an interior edge of the corrugated cardboard, as instantly claimed.
Wu teaches a corrugated paperboard (Fig. 1a, col. 2, lines 49-55) that includes one or more cut edges comprises a peripheral edge of the corrugated cardboard and an interior edge of the corrugated cardboard (see Fig. 3a, col. 7, lines 9-25, i.e., the edges around the ports 16 and pinholes 17 areas are clearly interior edges of the corrugated cardboard, meeting the claimed limitations). Wu teaches the inclusion of the ports in the corrugated cardboard provides the benefit of allowing the air inflow and outflow as desired (col. 7, lines 9-25).
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Regarding claim 106, Huang teaches a corrugated box made of its corrugated cardboard (para [0045] [0050] [0053]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-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, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782