DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16 drawn to a custom product packaging, classified in B65D81/22; B29L2031/712.
II. Claims 17-36, drawn to a method for producing custom product packaging, classified in B29C44/5627; B29C44/56.
3. The inventions are independent or distinct, each from the other because:
Inventions of Group I and Group II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process of Group II can be used to make another materially different product, such as polystyrene foam-based molded article used as foam cabinetry, as in US 6,545,729, or insulation barrier as in US 5,506,048.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
They require different areas of search.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
4. During a telephone conversation with Chancellor Shafor on October 7, 2025 a provisional election was made without traverse to prosecute the invention of Group II, claims 17-36. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-16 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
5. Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i). The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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.
6. Claim 31 is 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.
Regarding claim 31, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
7. Claims 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2021/0237953).
8. As to instant claim 17, Bhargava et al discloses a process for making biodegradable insulating structures in the form of container, box or shipper ([0052], [0053]) comprising:
1) forming biobased polymer foam beads, the biobased polymer foam beads including polylactic acid;
2) forming/molding the foam beads into a block of biodegradable foam ([0080])
3) forming/machining ([0080]) a plurality of rigid biodegradable foam panels from the foam block, wherein “machining” means carving or cutting a block of biodegradable foam to reduce its size and shape to the desired shape ([0080]);
4) assembling the biodegradable foam panels into a biodegradable insulating structure ([0106]),
Wherein the edges of the biodegradable foam panels are molded or machined to form the desired edge geometry ([0108]).
Further, though Bhargava et al does not explicitly and sufficient specificity, such as by the way of a single example, showing all the steps 1)-4) of the process, based on the teachings of Bhargava et al, it would have been obvious to a one of ordinary skill in the art to choose and use all of the steps 1)-4) above for making said insulating structures as well.
9. As to instant claim 18, since the biodegradable insulating structure/container of Bhargava et al is made from the same expandable polylactic acid as that claimed in instant invention, therefore, the machining of said biodegradable insulating structure/container Bhargava et al will inherently, or intrinsically and necessarily provide, at least to a minor extent, less dust relative to a comparable molded bead foam article formed from expandable polystyrene. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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.
10. Claims 17-20, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2021/0237953) in view of Gordon-Duffy et al (US 2013/0034700).
11. The discussion with respect to Bhargava et al (US 2021/0237953), set forth in paragraphs 7-9 above is incorporated here by reference.
12. Though Bhargava et al teach that the biodegradable insulating structure/container includes a plurality of biodegradable foam panels formed of biobased polylactic acid foam beads and that each of said panels may be connected to at least one other biodegradable foam panel by using tape ([0069]), Bhargava et al does not recite said connection be made by using an adhesive.
13. However, Gordon-Duffy et al discloses a method for laminating/connecting expanded foam bead boards ([0022]) by using a hot melt adhesive ([0026], as to instant claims 22-23),
Wherein in order to ease the laminating/adhering process, the boards are having peak and grooves spaced at the specific intervals ([0022], Figure 3-5), corresponding to “predefined guides” for guiding adhering of instant claims 19 and 20.
14. Since two expanded foam beads panels can be connected not only by tape, but by adhesives such as hot melt adhesive, also using mating peak and grooves as “guides”, as taught by Gordon-Duffy et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Gordon-Duffy et al and Bhargava et al, and to modify, or obvious to try to modify the process of Bhargava et al by using a hot melt adhesive to connect at least two of the plurality of the panels of the insulating structure/container of Bhargava et al, given such is desired depending on the specific end-use of the insulating container, and to further form, or obvious to try to form mating peaks and grooves, i.e. “guides”, in the molded foam blocks or in the panels of Bhargava et al so to improve the precision of connecting and to ease the process of connecting said two panels by adhesion, as taught by Gordon-Duffy et al as well, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
15. Claims 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2021/0237953) in view of Gleeson (US 6,760,978).
16. The discussion with respect to Bhargava et al (US 2021/0237953), set forth in paragraphs 7-9 above is incorporated here by reference.
17. Though Bhargava et al discloses the step of machining a plurality of rigid biodegradable foam panels from the foam block, wherein “machining” means carving or cutting a block of biodegradable foam to reduce its size and shape to the desired shape ([0080]), Bhargava et al does not explicitly recite providing guides/grooves in the foam block at a predetermined distance apart and cutting/machining along said guides.
18. However, Gleeson discloses providing grooves in sheets as a guide for cutting the sheet along the grooves, wherein the grooves are arranged in a regular pattern and spaced apart by a standard unit measurement in order to accurately cut to a precise dimension (Abstract).
Thus, Gleeson explicitly teaches that providing grooves into the sheets of material allows to accurately cut the sheet to precise dimensions.
19. Since Gleeson teaches that providing grooves in the sheet material, which are serving as guides for cutting, allows to provide cutting of said sheet to a precise dimension, therefore, based on the combined teachings of Gleeson and Bhargava et al, it would have been obvious to a one of ordinary skill in the art to introduce, or obvious to try to introduce grooves/guides in the foamed polylactic acid block in the process of Bhargava et al, wherein said grooves are spaced at a desired distance from each other depending on the desired size of the insulator/container, so to ensure accurate cut of the foamed block to form the panels of Bhargava et al having a precise desired size as well, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
20. Claims 17-18, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2021/0237953) in view of Collins (US 3,346,686).
21. The discussion with respect to Bhargava et al (US 2021/0237953), set forth in paragraphs 7-9 above is incorporated here by reference.
22. Though Bhargava et al teach that the biodegradable insulating structure/container includes a plurality of biodegradable foam panels formed of biobased polylactic acid foam beads and that each of said panels may be connected to at least one other biodegradable foam panel by using tape ([0069]), Bhargava et al does not recite said connection be made by pressing heated surfaces together.
22. However, Collins discloses a method for uniting foamed plastic sheets comprising:
1) heating each of the two thermoplastic foam sheets at a temperature of 180-250F (82-121⁰C) using heating lamps (col. 1, lines 42-48; col. 2, lines 28-36);
2) pressing said heated surfaces together into a desired article (col. 1, lines 45-55).
23. Thus, Collins explicitly teaches that foamed sheets/panels can be bonded by heating and pressing to each other.
24. Since the foamed panels can be connected not only by tape but by heating those and pressing to each other, as shown by Collins , therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Collins and Bhargava et al, and to modify, or obvious to try to modify the process of Bhargava et al by using the step of uniting the foamed sheets by heating and pressing those, as taught by Collins, to connect at least two of the plurality of the foamed panels of the insulating structure/container of Bhargava et al, given such is desired depending on the specific end-use of the insulating container, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
25. Claims 17-18, 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2021/0237953) in view of Collins (US 3,346,686), in further view of Tedford et al (US 2014/0091490).
26. The discussion with respect to Bhargava et al (US 2021/0237953) in view of Collins (US 3,346,686) set forth in paragraphs 20-24 above is incorporated here by reference.
27. Though Bhargava et al in view of Collins teach the heating at 82-121⁰C being conducted using heating lamps, but not using water,
Tedford et al teaches a process for making articles from polylactic acid by thermoforming in a mold, wherein heating during such thermoforming is provided by circulating hot water, e.g. at a temperature of 85⁰C, for about 5 seconds ([0081], [0063], as to instant claims 26-27), wherein Tedford et al further teaches that such heat/thermoforming treatment of the polylactic acid-based shaped articles increases heat resistance of said shaped articles (claim 1, [0005], [0050]).
28. Since the use of hot water is taught in the art not only to heat polylactic acid-based articles, but further increases heat resistance of said polylactic acid-based articles, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Tedford et al and Bhargava et al in view of Collins, and to use, or obvious to try to use hot water at a temperature of about 85⁰C as the heat source to heat the polylactic acid-based foam panels in the process of Bhargava et al in view of Collins before pressing those to connect, as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
29. Claims 17-18, 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Bhargava et al (US 2021/0237953) in view of Tedford et al (US 2014/0091490).
30. The discussion with respect to Bhargava et al (US 2021/0237953), set forth in paragraphs 7-9 above is incorporated here by reference.
31. Though Bhargava et al does not recite treating the molded bead foam article by boiling, i.e. by heating,
Tedford et al teaches a process for making articles from polylactic acid by thermoforming/heat treatment in a mold, wherein said heat treatment at a temperature of as high as 93.3⁰C ([0064], [0068]), including by hot water treatment at about 85⁰C ([0081]) increases heat resistance of said shaped articles (claim 1, [0005], [0050]).
32. Further, since such heat treatment at a temperature of as high as 93.3⁰C ([0064], [0068]), including by hot water treatment at about 85⁰C ([0081]) increases heat resistance of the polylactic acid-based foam molded articles, therefore, it would have been obvious to a one of ordinary skill in the art to try to conduct heat treatment by boiling the molded polylactic acid bead foam of Bhargava et al in a desired solvent as well. It would have been further obvious to and within the skills of a one of ordinary skill in the art to make variations and optimize by routine experimentation the specific duration of such heat treatment depending on the boiling point of the specifically used solvent, so to produce the polylactic acid-based molded bead foam having a desired heat resistance as well (as to instant claims 28-29). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
33. Since said heat treatment by boiling is the same as that claimed in instant invention, therefore, said heat treatment will intrinsically and necessarily lead to, at least partial, enhancing a compressive resistance and density of said foam molded article as well (as to instant claim 28). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
34. Claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Hays et al (US 2004/0146597) in view of Bhargava et al (US 2021/0237953).
35. Hays et al discloses a method for making a packaging insert for supporting fragile articles such as computers ([0024], [0025], as to instant claim 31) during shipment comprising:
1) forming a plurality of separate parts of the mold having pre-selected shapes so that the formed packaging inserts have the pre-selected shapes ([0007]);
2) assembling the mold;
3) using injection molding machine, i.e. by thermoforming, injecting expanded bead foam into the mold to form the foam packaging insert ([0041], [0053]).
Thus, Hays et al teaches the method for making packaging insert by injection molding, i.e. heating and thermoforming, and shaping using the pre-selected shaped mold of the expanded bead foam.
36. Figure 1 shows two separate foamed inserts having the shape at least partially corresponding to the shape of the article, wherein the fragile article is sandwiched between the packaging inserts (Figure 1, [0026]).
37. Hays et al does not specify the expanded foam beads being polylactic acid-based and further does not explicitly teach a step of molding the foam beads before shaping.
38. However, Bhargava et al discloses a process for making biodegradable insulated shipping containers or shippers ([0052], [0053]) comprising:
1) forming biobased polymer foam beads, the biobased polymer foam beads including polylactic acid;
2) forming/molding the foam beads into a block of biodegradable foam ([0080])
2) forming/machining ([0080]) a plurality of rigid biodegradable foam panels from the foam block, wherein “machining” means carving or cutting a block of biodegradable foam to reduce its size and shape to the desired shape ([0080]).
39. Thus, Bhargava et al explicitly teaches insulated packaging being made from foam beads that are biodegradable, i.e. from polylactic acid, and further teaches molding of said polylactic acid beads before shaping.
40. Since foam beads based on polylactic acid are biodegradable, and are specifically taught in the art to be used in insulated packaging materials, as shown by Bhargava et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Bhargava et al and Hays et al, and to use, or obvious to try to use polylactic acid foam beads as the foam beads for making the packaging insert of Hays et al, since such polylactic acid-based foam beads are biodegradable and it would have been obvious to choose those for the purpose of environmental safety. It would have been further obvious to a one of ordinary skill in the art to include, or obvious to try to include a step of at least partial molding the foam beads to at least partially provide a solid preform to said foam beads before inserting those into the pre-selected mold for shaping in the pre-selected mold of Hays et al as well, given such is desired.
Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
41. Claims 30-33 are rejected under 35 U.S.C. 103 as being unpatentable over Hays et al (US 2004/0146597) in view of Bhargava et al (US 2021/0237953), Ohashi et al (US 2006/0194899) and Tedford et al (US 2014/0091490).
42. The discussion with respect to Hays et al (US 2004/0146597) in view of Bhargava et al (US 2021/0237953) set forth in paragraphs 34-40 above, is incorporated here by reference.
43. Though Hays et al in view of Bhargava et al do not explicitly recite heating during injection molding/shaping step being conducted by steam,
1) Ohashi et al discloses an injection molded process for forming an injection molded article based on polylactic acid, wherein the molded article should be subjected to heat treatment at a temperature of 60-130⁰C to crystallize it ([0064]), wherein the heat treatment can be conducted by application of steam and in the mold ([0065], [0066]).
2) Tedford et al teaches a process for making articles from polylactic acid by thermoforming/heat treatment in a mold, wherein said heat treatment increases heat resistance of said shaped articles (claim 1, [0005], [0050]).
44. Given the heat treatment of the polylactic acid using the steam can be conducted in the mold, i.e. injection mold, and said heat treatment with steam can increase heat resistance of the polylactic acid-based molded articles, as shown by Ohashi et al and Tedford et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Tedford et al, Ohashi et al and Hays et al in view of Bhargava et al, and to modify, or obvious to try to modify the process of Hays et al in view of Bhargava et al by further heating the mold using steam as well, so to induce crystallization of the polylactic acid and shaping article and thus increasing heat resistance of the packaging insert of Hays et al in view of Bhargava et al as well, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
45. Claims 30-32, 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Hays et al (US 2004/0146597) in view of Bhargava et al (US 2021/0237953), Meyer (US 2008/0093251), Magnusson et al (US 2008/0070770) and Maarks et al (US 2004/0250516).
46. The discussion with respect to Hays et al (US 2004/0146597) in view of Bhargava et al (US 2021/0237953) set forth in paragraphs 34-40 above, is incorporated here by reference.
47. Though Hays et al in view of Bhargava et al show two separate foamed inserts having the shape at least partially corresponding to the shape of the article, wherein the fragile articles is sandwiched between the packaging inserts (Figure 1, [0026]), Hays et al in view of Bhargava et al do not explicitly recite the two insert being connected to each other by heating and pressing or by adhesive.
48. However,
1) Meyer discloses a foam shipping package comprising two molded foam parts having inner shape according to the shape of the fragile material to be shipped/packaged (Abstract, [0021], [0025], Figure 1-4), wherein the two molded foam parts join together to fully enclose and protect the article ([0044], [0053], [0052]).
2) Magnusson et al discloses a method for manufacturing a dimensionally stable packaging container in a form of a laminate made of a foamed material (Abstract, [0012]), wherein after processing the packaging laminate to a desired shape, it is exposed to heat and pressure, which steps lead to the layers fully adhered to one another ([0022]).
3) Maarks et al discloses a foamed adhesive for use in the manufacturing of packaging materials, such as laminating and seaming applications including heat seal applications ([0001], [0005]), and wherein the packaging includes household products ([0008]).
49. Thus, as taught by Meyer, depending on the type of the fragile material, the molded foam parts of the packaging may need to be joined and fully enclose the package; and both Magnusson et al and Maarks et al teach such joining of said molded foam parts taking place by heat sealing, using adhesive and heat pressing; therefore, based on the combined teachings of Maarks et al, Meyer, Magnusson et al and Hays et al in view of Bhargava et al, it would have been obvious to a one of ordinary skill in the art to modify, or obvious to try to modify the process of Hays et al in view of Bhargava et al by joining the two pre-selected foam inserts using either heating and pressing, i.e. heat pressing, adhesive, or heat seal, as taught by Maarks et al, Meyer, Magnusson et al, thereby to fully protect the fragile articles to be shipped, thus avoiding any possibility of breakage, as well, thereby arriving at the present invention (as to instant claims 34-36).
The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764