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 .
Response to Amendment
1. The amendment filed by Applicant on April 30, 2026 has been fully considered. In light of the Declaration under 37 CFR 1.130 filed on April 30, 2026, all previous rejections are withdrawn. The new grounds of rejections are set forth below. The following action is made non-final.
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.
2. Claims 17, 28-29 are 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.
Claim 17 refers to “boiling” of the molded bead article, claims 28-29 further refer to specific boiling process to enhance a compressive resistance and density of the molded article. However, it is not clear what kind of solvents are used to conduct said boiling, specifically for 0.25-3 minutes to “to enhance a compressive resistance and density of the molded article”. Further, it is not clear what the term “enhances” in claim 28 means, since instant specification recites that boiling process decreases compressive resistance (see [0039] of instant specification).
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.
3. Claims 17-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Handa (US 2008/0146686).
4. Handa discloses a method for making containers, packaging systems or protective cushioning material (Abstract; [0075], [0068]) comprising:
1) molding foam beads to form a molded sheet, plank or board ([0070]) and
2) cutting and/or shaping the produced sheets, boards or planks into other shapes, or otherwise machining or forming into shaped articles of desired size and shape by thermoforming ([0073], [0071]-[0072], [0007]),
wherein the foam beads comprise a biodegradable polymer including polylactic acid (claim 11; [0020]).
5. As to instant claim 18, since the biodegradable packaging/insulating structure/container of Handa is made from the same polylactic acid foam beads as that claimed in instant invention, therefore, the machining of said biodegradable packaging/insulating structure/container of Handa 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.
6. In the alternative, based on the teachings of Handa, it would have been obvious to a one of ordinary skill in the art to choose and use the polylactic acid foam beads to be molded into the board or plank, and further to cut, shape or otherwise machine said board or plank to form the packaging/insulating structure of desired size and shape, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
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.
7. Claims 17-18 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686).
8. Handa discloses a method for making containers, packaging systems or protective cushioning material (Abstract; [0075], [0068]) comprising:
1) molding foam beads to form a molded sheet, plank or board ([0070]) and
2) cutting and/or shaping the produced sheets, boards or planks into other shapes, further shaped or thermoformed by application of heat and pressure, or otherwise machining or forming into shaped articles of desired size and shape ([0073], [0071]-[0072], [0007]),
wherein the foam beads comprise a biodegradable polymer including polylactic acid, polycaprolactone, polybutylene succinate (claim 11; [0020]).
9. Thus, based on the teachings of Handa, it would have been obvious to a one of ordinary skill in the art to choose and use the polylactic acid foam beads to be molded into the board or plank, and further to cut, shape or otherwise machine said board or plank to form the packaging/insulating structure of desired size, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
10. As to instant claim 18, since the biodegradable packaging/insulating structure/container of Handa is made from the same polylactic acid foam beads as that claimed in instant invention, therefore, the machining of said biodegradable packaging/insulating structure/container of Handa 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.
11. Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686).
12. Witt et al discloses a method for forming packaging material comprising:
introducing polylactic acid expanded beads into a mold to form molded products including molded blocks/containers (Abstract, [0013]-[0020]), the mold being adapted to form shaped molded products in the form of packaging material ([0054]).
13. Though Witt et al does not explicitly teach a further step of machining, such as cutting the molded product/blocks, since the size of the custom packaging material depends on the specific size of material to be packed, it would have been obvious to a one of ordinary skill in the art to add an additional step of cutting the produced molded blocks to a desired size depending on the specific size of said material to be packed, thereby arriving at the present invention.
14. Further, though Witt et al does not explicitly teach a further step of machining, such as cutting the molded product/blocks,
Handa discloses a method for making containers, packaging systems or protective cushioning (Abstract; [0075], [0068]) comprising:
1) molding polylactic acid foam beads to form a sheet, plank or board ([0070]) and
2) cutting and/or shaping the produced sheets, boards or planks into other shapes, further shaped or thermoformed by application of heat and pressure, or otherwise machining or forming into shaped articles of desired size and shape ([0073], [0071]-[0072], [0007], claim 11; [0020]).
15. Since both Witt et al and Handa are related to methods for making molded packaging materials from polylactic acid foam beads, and thereby belong to the same field of endeavor, wherein Handa further explicitly teach a step of cutting/machining/thermoforming the produced molded articles into shaped articles with desired size and shape, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Handa and Witt et al, and to modify, or obvious to try to modify the method of Witt et al by adding an additional step of cutting/machining/thermoforming the produced molded article to form the shaped packaging article having a desired size and shape, depending on the specific shape and size of the articles to be packed, 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
16. As to instant claim 18, since the biodegradable packaging/insulating structure/container of Witt et al in view of Handa is made from the same polylactic acid foam beads as that claimed in instant invention, therefore, the machining of said biodegradable packaging/insulating structure/container of Witt et al in view of Handa will 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.
17. Claims 17-20, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Handa (US 2008/0146686) in view of Gordon-Duffy et al (US 2013/0034700), Longo et al (US 2011/0256274) and Murray et al (US 3,790,019).
18. The discussion with respect to Handa (US 2008/0146686), set forth in paragraphs 7-10 above is incorporated here by reference.
19. Though Handa teaches that the biodegradable polylactic acid boards and planks are being shaped or thermoformed by application of heat and pressure, or machined into shaped articles of desired size and shape forming the custom packaging ([0073], [0068]), Handa does not recite the step of adhering the at least two boards using an adhesive and the boards having guides for guiding the adhering.
20. However,
1) 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 spaced at predetermined distance apart”, for guiding adhering of instant claims 19 and 20.
2) Longo et al further teaches packaging material comprising a multi-layered foamed polyester (PET) material, wherein all layers are bonded by glue- or heat lamination ([0018]), and wherein at least one of the layers comprises polylactic acid ([0008]).
Thus, Longo et al explicitly teaches that packaging material may comprise multi-layered structures, with the layers bonded by either glue/adhesive or by heat lamination.
3) Murray et al further teaches a package formed from a pair or rectangular panels, wherein said panels are overlying each other and bonded by an adhesive (Abstract). Thus, Murray et al teaches that for making packages two separate panels are bonded to each other using adhesives.
21. Since at least two of the foam bead boards can be connected to each other using an adhesive with the help of pre-made grooves and peaks to ensure precision of bonding of said boards, as taught by Gordon-Duffy et al, the packaging material is taught in the art as having multi-layered structures, as shown by Longo et al, and further two separate panels for forming packaging material are taught in the art as being connected by adhesives, as shown by Murray 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, Longo et al , Murray et al and Handa, and to modify, or obvious to try to modify the process of Handa by i) creating mating peaks and grooves, i.e. “guides” in the polylactic acid foam bead molded boards of Handa to improve the precision of connecting separate boards and to ease the process of connecting said boards/panels by adhesion while shaping the boards into desired shaped packaging and further ii) shaping/forming the polylactic acid boards into the packaging material using a hot melt adhesive, also following said pre-formed peaks and grooves, according to the teachings of Gordon-Duffy et al to either a) form a multi-layered packaging material using said polylactic acid foam bead molded boards, as taught by Longo et al, or b) connect two separate polylactic acid boards in a desired arrangement using said adhesive, as taught by Murray et al, which all depend on the specific desired shape, size and purpose for use of said packaging material, 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
22. Claims 17-20, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over
Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), in further view of Gordon-Duffy et al (US 2013/0034700), Longo et al (US 2011/0256274) and Murray et al (US 3,790,019).
23. The discussion with respect to Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), set forth in paragraphs 11-16 above is incorporated here by reference.
24. Though Witt et al in view of Handa teach that the biodegradable polylactic acid boards and planks are being shaped or thermoformed by application of heat and pressure, or machined into shaped articles of desired size and shape forming the custom packaging ([0073], [0068] of Handa), Witt et al in view of Handa do not recite the step of adhering the at least two boards using an adhesive, and the boards having guides for guiding the adhering.
25. However,
1) 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 spaced at predetermined distance apart” for guiding adhering of instant claims 19 and 20.
2) Longo et al further teaches packaging material comprising a multi-layered foamed polyester (PET) material, wherein all layers are bonded by glue- or heat lamination ([0018]), and wherein at least one of the layers comprises polylactic acid ([0008]).
Thus, Longo et al explicitly teaches that packaging material may comprise multi-layered structures, with the layers bonded by either glue/adhesive or by heat lamination.
3) Murray et al further teaches a package formed from a pair or rectangular panels, wherein said panels are overlying each other and bonded by an adhesive (Abstract). Thus, Murray et al teaches that for making packages two separate panels are bonded to each other using adhesives.
26. Since at least two of the foam bead boards can be connected to each other using an adhesive with the help of pre-made grooves and peaks to ensure precision of bonding of said boards, as taught by Gordon-Duffy et al, the packaging material is taught in the art as having multi-layered structures, as shown by Longo et al, and further two separate panels for forming packaging material are taught in the art as being connected by adhesives, as shown by Murray 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, Longo et al , Murray et al and Witt et al in view of Handa, and to modify, or obvious to try to modify the process of Witt et al in view of Handa by i) creating mating peaks and grooves, i.e. “guides” in the polylactic acid foam bead molded boards of Witt et al in view of Handa to improve the precision of connecting separate boards and to ease the process of connecting said boards/panels by adhesion and further ii) shaping/forming the polylactic acid boards into the packaging material using a hot melt adhesive, also following said pre-formed peaks and grooves, according to the teachings of Gordon-Duffy et al to either a) form a multi-layered packaging material using said polylactic acid foam bead molded boards, as taught by Longo et al, or b) connect two separate polylactic acid boards in a desired arrangement using said adhesive, as taught by Murray et al, which all depend on the specific desired shape, size and purpose for use of said packaging material, 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
27. Claims 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Handa (US 2008/0146686) in view of Gleeson (US 6,760,978).
28. The discussion with respect to Handa (US 2008/0146686), set forth in paragraphs 7-10 above is incorporated here by reference.
29. Though Handa teaches that the biodegradable polylactic acid boards and planks are being cut into shapes or thermoformed by application of heat and pressure, or machined into shaped articles of desired size and shape forming the custom packaging ([0073], [0068]), Handa does not explicitly recite providing guides/grooves in the foam block at a predetermined distance apart and cutting/machining along said guides.
30. However, Gleeson teaches a technique of 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.
31. Since Gleeson teaches that making 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 Handa, 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 bead polylactic acid molded board/plank in the process of Handa, 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 bead polylactic acid molded board/plank to form the boards/panels of Handa having a desired precise 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
32. Claims 17-21 are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686) and Gleeson (US 6,760,978).
33. The discussion with respect to Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), set forth in paragraphs 11-16 above is incorporated here by reference.
34. Though Witt et al in view of Handa teach that the biodegradable polylactic acid boards and planks are being cut into shapes or thermoformed by application of heat and pressure, or machined into shaped articles of desired size and shape forming the custom packaging ([0073], [0068] of Handa), Witt et al in view of Handa do not explicitly recite providing guides/grooves in the foam block at a predetermined distance apart and cutting/machining along said guides.
35. However, Gleeson teaches a technique of 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.
36. 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 Witt et al in view of Handa, 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 bead polylactic acid molded board/plank in the process of Witt et al in view of Handa, 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 molded boards to form the boards/panels of Witt et al in view of Handa 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
37. Claims 17-18, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Handa (US 2008/0146686) in view of Collins (US 3,346,686) and Longo et al (US 2011/0256274).
38. The discussion with respect to Handa (US 2008/0146686), set forth in paragraphs 7-10 above is incorporated here by reference.
39. Though Handa teaches that the biodegradable polylactic acid boards and planks are being thermoformed by application of heat and pressure, or machined into shaped articles of desired size and shape forming the custom packaging ([0073], [0068]), Handa does not recite said shaping being made by pressing heated surfaces of the boards together.
40. However,
1) Collins discloses a method for uniting foamed plastic sheets comprising:
i) 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);
ii) pressing said heated surfaces together into a desired article (col. 1, lines 45-55).
Thus, Collins explicitly teaches that foamed sheets/panels can be bonded by heating and pressing to each other.
2) Longo et al further teaches packaging material comprising a multi-layered foamed polyester (PET) material, wherein all layers are bonded by heat lamination ([0018]), and wherein at least one of the layers comprises polylactic acid ([0008]).
Thus, Longo et al explicitly teaches that layers forming specifically the packaging material may be bonded by heat lamination as well.
41. Since the foamed panels can be connected to each other by heating those and pressing to each other, as shown by Collins, and the layers forming specifically packaging material maybe bonded by heat lamination, i.e. by hot pressing, as taught by Longo et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Collins, Longo et al and Handa, and to modify, or obvious to try to modify the process of Handa by using the step of uniting the foamed bead polylactic acid molded boards by heating and pressing those, as taught by Collins, to connect at least two of the foamed bead polylactic acid molded boards of the insulating structure/container of Handa to form that into a desired shaped packaging material, especially since heat lamination/heat pressing technique for making packaging material is taught in the art as shown by Longo et al, given such is desired depending on the specific end-use of the insulating container/packaging material, 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
42. Claims 17-18, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), Collins (US 3,346,686) and Longo et al (US 2011/0256274).
43. The discussion with respect to Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), set forth in paragraphs 11-16 above is incorporated here by reference.
44. Though Witt et al in view of Handa teach that the biodegradable polylactic acid boards and planks are being thermoformed by application of heat and pressure, or machined into shaped articles of desired size and shape forming the custom packaging ([0073], [0068] of Handa), Witt et al in view of Handa do not recite the shaping being made by pressing heated boards surfaces together.
45. However,
1) Collins discloses a method for uniting foamed plastic sheets comprising:
i) 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);
ii) pressing said heated surfaces together into a desired article (col. 1, lines 45-55).
Thus, Collins explicitly teaches that foamed sheets/panels can be bonded by heating and pressing to each other.
2) Longo et al further teaches packaging material comprising a multi-layered foamed polyester (PET) material, wherein all layers are bonded by heat lamination ([0018]), and wherein at least one of the layers comprises polylactic acid ([0008]).
Thus, Longo et al explicitly teaches that layers forming the packaging material may be bonded by heat lamination as well.
46. Since the foamed panels can be connected to each other by heating those and pressing to each other, as shown by Collins, and the layers forming specifically packaging material maybe bonded by heat lamination, i.e. by hot pressing, as taught by Longo et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Collins, Longo et al and Witt et al in view of Handa, and to modify, or obvious to try to modify the process of Witt et al in view of Handa 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 foamed bead polylactic acid molded boards of the insulating structure/container of Witt et al in view of Handa to form that into a desired shaped packaging material, given such is desired depending on the specific end-use of the insulating container/packaging material, especially since heat lamination/heat pressing technique for making packaging material is taught in the art as shown by Longo et al, 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
47. Claims 17-18, 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Handa (US 2008/0146686) in view of Collins (US 3,346,686) and Longo et al (US 2011/0256274), in further view of Tedford et al (US 2014/0091490).
48. The discussion with respect to Handa (US 2008/0146686) in view of Collins (US 3,346,686) and Longo et al (US 2011/0256274), set forth in paragraphs 37-41 above is incorporated here by reference.
49. Though Handa in view of Collins and Longo et al teach that the biodegradable polylactic acid boards and planks are being thermoformed by application of heat ([0073] of Handa) and the heating being conducted at 82-121⁰C using heating lamps (col. 1, lines 42-48; col. 2, lines 28-36 of Collins),
Handa in view of Collins and Longo et al do not teach said heating being conducted using water for 3-10 seconds.
50. However, 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 25-26), 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]).
It is the examiner’s position that the range of “about 5 seconds” of Tedford et al is very close to the claimed value of 8 seconds (as to instant claim 27), the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
51. Since the use of hot water is taught in the art not only to heat polylactic acid-based articles for thermoforming, 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 Handa in view of Collins and Longo et al, and to use, or obvious to try to choose and 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 Handa in view of Collins and Longo et al 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
52. Claims 17-18, 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), Collins (US 3,346,686) and Longo et al (US 2011/0256274), in further view of Tedford et al (US 2014/0091490).
53. The discussion with respect to Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), Collins (US 3,346,686) and Longo et al (US 2011/0256274), set forth in paragraphs 42-46 above is incorporated here by reference.
54. Though Witt et al in view of Handa, Collins and Longo et al teach that the biodegradable polylactic acid boards and planks are being thermoformed by application of heat ([0073] of Handa) and the heating being conducted at 82-121⁰C using heating lamps (col. 1, lines 42-48; col. 2, lines 28-36 of Collins),
Witt et al in view of Handa, Collins and Longo et al do not teach said heating being conducted using water for 3-10 seconds.
55. However, 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 25-26), 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]).
It is the examiner’s position that the range of “about 5 seconds” of Tedford et al is very close to the claimed value of 8 seconds (as to instant claim 27), the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
56. Since the use of hot water is taught in the art not only to heat polylactic acid-based articles for thermoforming, 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 Witt et al in view of Handa, Collins and Longo et al, and to use, or obvious to try to choose and 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 Witt et al in view of Handa, Collins and Longo et al 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
57. Claims 17-18, 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Handa (US 2008/0146686) in view of Tedford et al (US 2014/0091490).
58. The discussion with respect to Handa (US 2008/0146686), set forth in paragraphs 7-10 above is incorporated here by reference.
59. Though Handa teach that the biodegradable polylactic acid boards and planks are being thermoformed by application of heat ([0073] of Handa), Handa does not recite treating/heating the molded bead foam article by boiling.
60. However, 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 for about 5 seconds ([0064], [0068]), including by hot water treatment at about 85⁰C ([0081]) increases heat resistance of said shaped articles (claim 1, [0005], [0050]).
It is the examiner’s position that the range of “about 5 seconds” of Tedford et al is very close to the claimed value of 8 seconds, the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
61. 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, as shown by 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 and Handa, and to conduct, or obvious to try to conduct the heat treatment of the molded polylactic foam bead board/plank of Handa by at least partial boiling that in a desired solvent, including water at such temperature as high as 93.3⁰C, so to further improve heat resistance of said articles as well, thereby arriving at the present invention. It is further noted that specific temperature at which water starts to boil depends on the atmospheric pressure: if atmospheric pressure is lower than normal, water begins to boil at temperature lower than 100⁰C, e.g. 93⁰C.
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/boiling, including from 0.25 minutes up to 3 minutes, 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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(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
It is further noted that instant claims 28-29 do not specify the solvent used for boiling.
62. Since said heat treatment by boiling is the same as that claimed in instant invention, therefore, said heat treatment of the molded article of Handa in view of Tedford et al will intrinsically and necessarily lead to, at least to a minor extent, 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.
63. Claims 17-18, 27-29 are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686) and Tedford et al (US 2014/0091490).
64. The discussion with respect to Witt et al (US 2010/0029793) in view of Handa (US 2008/0146686), set forth in paragraphs 11-16 above is incorporated here by reference.
65. Though Witt et al in view of Handa teach that the biodegradable polylactic acid boards and planks are being thermoformed by application of heat ([0073] of Handa), Witt et al in view of Handa do not recite treating/heating the molded bead foam article by boiling.
66. However, 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 for about 5 seconds ([0064], [0068]), including by hot water treatment at about 85⁰C ([0081]) increases heat resistance of said shaped articles (claim 1, [0005], [0050]).
It is the examiner’s position that the range of “about 5 seconds” of Tedford et al is very close to the claimed value of 8 seconds, the values are close enough that one of ordinary skill in the art would have expected the same properties. Case law holds that a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
67. 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, as shown by 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 and Witt et al in view of Handa, and to conduct, or obvious to try to conduct the heat treatment of the molded polylactic foam bead board/plank of Witt et al in view of Handa by at least partial boiling that in a desired solvent, including water at such temperature as high as 93.3⁰C, so to further improve heat resistance of said articles as well, thereby arriving at the present invention. It is further noted that specific temperature at which water starts to boil depends on the atmospheric pressure: if atmospheric pressure is lower than normal, water begins to boil at temperature lower than 100⁰C, e.g. 93⁰C. 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, including from 0.25 minutes up to 3 minutes, 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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(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
It is further noted that instant claims 28-29 do not specify the solvent used for boiling.
68. Since said heat treatment by boiling is the same as that claimed in instant invention, therefore, said heat treatment of the molded articles of Witt et al in view of Handa and Tedford et al will intrinsically and necessarily lead to, at least to a minor extent, 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.
69. Claims 30-32 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686) in view of Hays et al (US 2004/0146597).
70. Handa discloses a method for making protective, packaging systems or protective cushioning wrapping material (Abstract; [0075], [0068]) comprising:
1) molding foam beads to form a molded sheet, plank or board ([0070]) and
2) shaping the produced sheets, boards or planks into other shapes, further thermoforming by application of heat, forming into shaped articles of desired size and shape ([0073], [0071]-[0072], [0007], as to instant claims 30, 32),
wherein the foam beads comprise a biodegradable polymer including polylactic acid (claim 11; [0020]).
71. Thus, based on the teachings of Handa, it would have been obvious to a one of ordinary skill in the art to choose and use the polylactic acid foam beads to be molded into the molded board or plank, and further to shape said molded board or plank to form the packaging/insulating structure of desired size and shape, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
72. Though Handa discloses a method for making protective, packaging systems or protective cushioning by molding foam beads to form a molded sheet, plank or board ([0070]) and further shaping the produced sheets, boards or planks into other desired shapes, by thermoforming by application of heat, Handa does not explicitly teach said desired shape being corresponded to a least a portion of an object such as an electronic device.
73. However, 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 injection molding/thermoforming expanded bead foam into the mold to form the foam packaging insert ([0041], [0053]).
Hays et al teaches the method for making packaging insert by injection molding, i.e. heating and thermoforming of the expanded beads, and shaping that into a shape corresponding to the shape of the fragile object using the pre-selected shaped mold.
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]).
74. Since shaping of the molded articles made from expanded beads into a desired shape by thermoforming can be conducted using pre-selected injection molds, thus to form the shape of the molded article at least partially corresponding to the shape of the object to be packed, such as a computer, as shown by Hays et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Hays et al and Handa, and in the process of Handa to choose and use the injection molding/thermoforming technique to produce the packaging material with the “desired shape” at least partially corresponding to the shape of the object to be packed, such as a computer, i.e. “desired shape” 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
75. Claims 30-33 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686) in view of Hays et al (US 2004/0146597), Ohashi et al (US 2006/0194899) and Tedford et al (US 2014/0091490).
76. The discussion with respect to Handa (US 2008/0146686) in view of Hays et al (US 2004/0146597), set forth in paragraphs 69-74 above, is incorporated here by reference.
77. Though Handa in view of Hays et al do not explicitly recite heating during said shaping/thermoforming 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]).
78. 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 Handa in view of Hays et al, and to modify, or obvious to try to modify the process of Handa in view of Hays et al by further heating the mold during shaping by using steam as well, so to induce crystallization of the polylactic acid and shaping article and thus increasing heat resistance of the packaging/protective material of Handa in view of Hays 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
79. Claims 30-32, 34-36 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686) in view of Hays et al (US 2004/0146597), Meyer (US 2008/0093251), Magnusson et al (US 2008/0070770) and Maarks et al (US 2004/0250516).
80. The discussion with respect to Handa (US 2008/0146686) in view of Hays et al (US 2004/0146597), set forth in paragraphs 69-74 above, is incorporated here by reference.
81. Though Handa in view of Hays et al show the desired shaped protective material/inserts as two separate foamed protective material/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] of Hays et al), Handa in view of Hays et al do not explicitly recite the two insert being connected to each other by heating and pressing or by adhesive.
82. 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]).
83. 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 Handa in view of Hays 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 Handa in view of Hays et al by joining the two pre-selectively shaped protective 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
84. Claims 30-32 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686) in view of Meyer (US 2008/0093251).
85. Handa discloses a method for making protective, packaging systems or protective cushioning wrapping material (Abstract; [0075], [0068]) comprising:
1) molding foam beads to form a molded sheet, plank or board ([0070]) and
2) shaping the produced sheets, boards or planks into other shapes, further thermoforming by application of heat, forming into shaped articles of desired size and shape ([0073], [0071]-[0072], [0007], as to instant claims 30, 32),
wherein the foam beads comprise a biodegradable polymer including polylactic acid (claim 11; [0020]).
86. Thus, based on the teachings of Handa, it would have been obvious to a one of ordinary skill in the art to choose and use the polylactic acid foam beads to be molded into the molded board or plank, and further shape said molded board or plank to form the packaging/insulating structure of desired size, since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. 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).
87. Though Handa discloses a method for making protective, packaging systems or protective cushioning by molding foam beads to form a molded sheet, plank or board ([0070]) and further shaping the produced sheets, boards or planks into other desired shapes, by thermoforming by application of heat, Handa does not explicitly teach said desired shape being corresponded to a least a portion of an object such as a fragile object.
88. However, 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 are joined or bonded together to fully enclose and protect the article ([0044], [0053], [0052], [0059]).
89. Since the packaging material used for shipping fragile objects is taught in the art as being formed from foam material having a shape corresponding to the shape of the fragile material, such as having two molded foam parts enclosing the object to protect said object from breaking, as taught by Meyer, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Meyer and Handa, and to shape, or obvious to try to shape by thermoforming the polylactic acid foam bead molded board/plank of Handa into a shape, i.e. “desired shape”, corresponding to the fragile object to be enclosed by said protective/packaging material, so to totally enclose and thus protect said fragile material from breaking during shipment, as taught by Meyer 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
90. Claims 30-33 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686) in view of Meyer (US 2008/0093251), Ohashi et al (US 2006/0194899) and Tedford et al (US 2014/0091490).
91. The discussion with respect to Handa (US 2008/0146686) in view of Meyer (US 2008/0093251), set forth in paragraphs 84-89 above, is incorporated here by reference.
92. Though Handa in view of Meyer do not recite heating during the shaping/thermoforming 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]).
93. 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 Handa in view of Meyer, and to modify, or obvious to try to modify the process of Handa in view of Meyer by further heating the mold during shaping/thermoforming using steam as well, so to induce crystallization of the polylactic acid and shaping article and thus increasing heat resistance of the packaging/protective material of Handa in view of Meyer 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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(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
94. Claims 30-32, 34-36 are rejected under 35 U.S.C. 103 as unpatentable over Handa (US 2008/0146686) in view of Meyer (US 2008/0093251), Magnusson et al (US 2008/0070770) and Maarks et al (US 2004/0250516).
95. The discussion with respect to Handa (US 2008/0146686) in view of Meyer (US 2008/0093251), set forth in paragraphs 84-89 above, is incorporated here by reference.
96. Though Handa in view of Meyer show the desired shaped protective material as two separate foamed protective parts having the shape corresponding to the shape of the article, wherein the fragile article is sandwiched between said protective parts (Figure 1-4 of Meyer), and wherein said parts are joined/bonded together ([0059] of Meyer), Handa in view of Meyer do not explicitly recite the two parts being connected to each other by heating and pressing or by adhesive.
97. However,
1) 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]).
2) 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]).
98. Since 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, Magnusson et al and Handa in view of Meyer, 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 Handa in view of Meyer by joining the two pre-selectively shaped protective foam parts using either heating and pressing, i.e. heat pressing, adhesive, or heat seal, as taught by Maarks et al and 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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(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
Response to Arguments
99. Applicant's arguments filed on April 30, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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
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