DETAILED ACTION
Election/Restrictions
Applicant’s election of Group I, claims 1-18, in the reply filed on September 24th, 2025 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 19-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 24th, 2025.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/891,737 (and 16/870,195 & 62/845,293), fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The term “width-wise positional variations” is not recited in any prior document except provisional application 63/396,918 and more importantly the term does not comprise a clear scope that would be set forth in any document (including the one herein). However, at least in 63/396,918, the term is directly linked to possible variations as claimed and thus the scope of the term is clarified within those embodiments.
Furthermore, the only two-layer wall structure disclosed by 17/891,737 (and 16/870,195 & 62/845,293) is one wherein the first outer layer is embossed and the second inner paper layer has two-sided embossments would directly contact any items placed within the inner pouch as is that as set forth by Fig. 18 [PGPub of ‘195, 0123 & 0232]. This is insufficient at providing proper support to the broader disclosure of the protective product as currently claimed.
Therefore, the current claims comprise an effective filing date of August 10th, 2022, the filing date of 63/396,918.
Claim Objections
Claims 6-18 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend on any other multiply dependent. See MPEP § 608.01(n). While in order to expedite prosecution, claims will still be examined. However, claims 6-18 will be interpreted as if they are only dependent on the independent claim.
Claim 3 will be treated as claim 3/1 and 3/2
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the Applicant regards as his invention.
Claims 1-2, 5, & 8-18 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.
Regarding claim 1, the term “width-wise positional variations” is indefinite. It is unclear what each word of the term adds to the physical structure of the protective product. There does not seem to be a more general definition of the term outside examples thereof. Therefore, claims 3-4 and 6-7 provide enough physical structure that the scope of the term is clarified enough for focused examination.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claims 5 and 16 recite a broad recitation and then the claims also recite “in some preferred embodiments…” and “in some examples…”, respectively, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Further regarding claim 5, it is unclear how the extent of the ridges or the depth of the envelope is measured. Therefore, it is unclear how one can be a percentage of the other.
Claims 2, 8-15, and 17-18 are rejected for being dependent on rejected claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claims 1-3/2 & 8-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kohn et al. (U.S. Pub. No. 2018/0229910 A1) (hereinafter “Kohn”), wherein claims 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kohn, as evidenced by or in view of Pyroguide (Kraft paper) (hereinafter “Pyroguide”).
Regarding claims 1-3/2 and 8-11, Kohn teaches an envelope comprising first and second sheets or a folded sheet forming a pocket/pouch [0018, 0051] such as one sealed on three sides with one opening (Fig. 1), each sheet comprising an outer layer and an inner layer for contacting objects placed into the pocket/pouch, the outer sheet and the inner sheet comprising at least one cushioning mechanism, the cushioning mechanism comprising an embossed paper as the outer layer, the inner layer, or both the outer and inner layers [0015, 0020-0021, 0048], wherein the paper may be a kraft paper [0010].
Regarding claims 12-16, a kraft paper as claimed is not taught. Pyroguide evidences/teaches a Kraft paper either virgin or recycled having a weight from 30 lbs to 90 lbs with a corresponding thickness from 0.003 to 0.009 inches. It would have been obvious to and motivated for one of ordinary skill in the art at the time of invention to choose a common kraft paper within or near the claimed range.
Claims 4-5 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kohn, as applied to claim 1 above, in view of Porth (DE 2437968 A1) (hereinafter “Porth”) and optionally Nozaki (JP 2002-347848 A) (hereinafter “Nozaki”) OR Lasker (U.S. Patent No. 3,743,173) (hereinafter “Lasker”).
Regarding claims 4-5 and 7, an embossment/ridge shape is not taught to be extending in relation to an envelope outlet/opening.
Porth teaches an embossed cushioned envelope comprising outer paper layers having inner embossed paper padding/cushioning layer, wherein the embossing profile comprises a plurality of stiffening elements that are longitudinally oriented (perpendicular to the opening width) (Fig. 14) and/or transversely oriented (perpendicular to the opening direction) (Fig. 15) or diagonally (substantially perpendicular to either direction) (Fig. 9).
Furthermore, Nozaki teaches a cushioned envelope having primarily transversely oriented (perpendicular to the opening direction) ridges, which allows the envelope to better wrap the contents put therein [0006, 0008, 0011-0013, 0017, 0022-0023], wherein the extent in relation to the depth is equal to the ratio of the length/height of the envelope to the width of the envelope.
OR
Lasker teaches a cushioned envelope having primarily longitudinally oriented (perpendicular to the opening width) ridges, which particularly useful for documents and allows for increased widths of envelope, wherein the extent in relation depth extends substantially the entirety thereof.
It would have been obvious to one of ordinary skill in the art at the time of invention to provide ridges/peaks that extend at least substantially perpendicular in relation to the opening/outlet. One of ordinary skill in the art would have been motivated to provide at least some stiffening in at least the desired direction [Porth], specifically to allow better wrapping of the contents therein [Nozaki] OR provide an envelope of increased width that particularly suitable for documents [Lasker].
Claims 6 & 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kohn, as applied to claim 1 above, in view of Gerard (U.S. Patent No. 3,668,055) (hereinafter “Gerard”) and optionally Miyake et al. (U.S. Patent No. 4,374,217) (hereinafter “Miyake”) as applied to claim 18.
Regarding claims 6 and 17-18, the outer and inner layers of the sheet(s) being adhered to each other via (cold) adhesive is not taught.
Gerard teaches embossed packing sheets comprising kraft paper of 0.003 to 0.010 inch thickness (col. 1, lines 14-20) having corrugations/embossments formed and attached to each other via a light application of glue to the tips of the peaks, such as vegetable glue, devoid of organic solvents that minimizes the formation of vapors during assembly (col. 1, lines 31-35; col. 2, lines 42-47).
Furthermore, Miyake teaches a corrugation process that uses a starch-based (vegetable) cold glue that allows for beneficial gluing without heating at both higher and lower speeds (col. 1, line 20 – col. 3, line 3).
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a cold adhesive for adhesively attaching the embossed layers. One of ordinary skill in the art would have been motivated provide a multiply-embossed cushion layer light application of glue that minimizes the formation of vapors during assembly [Gerard], specifically one that allows for a high glue-ability at all speeds [Miyake].
Claims 1-5, 7-8, 10-11, & 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Higuchi et al. (JP 2001-199449 A) (hereinafter “Higuchi”), OR, in the alternative, wherein claims 4-5 & 7 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi in view of Porth (DE 2437968 A1) (hereinafter “Porth”) and optionally Nozaki (JP 2002-347848 A) (hereinafter “Nozaki”) OR Lasker (U.S. Patent No. 3,743,173) (hereinafter “Lasker”), and wherein claims 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi as evidenced by Pyroguide (Kraft paper) (hereinafter “Pyroguide”).
Regarding claims 1-5, 7-8, 10-11, and 17, Higuchi teaches an envelope having cushioning properties comprising a folded base kraft paper having an embossed liner/core kraft paper forming the interior wall of the pouch is embossed and connected to the base paper [0007, 0011, 0014] via a plurality of spot bonds using a process conventionally used for cardboard, wherein the embossment/ridge pattern can be X-shaped or continuously in orthogonal directions (extend perpendicularly to the outlet of the envelope, across nearly 100% of the surface area, being the width or the depth/height of the envelope) choosing the row direction, number, size, and shape [0012].
Further regarding claims 4-5 and 7, in the event that ridges are not extending at least substantially perpendicularly to the outlet: Porth teaches an embossed cushioned envelope comprising outer paper layers having inner embossed paper padding/cushioning layer, wherein the embossing profile comprises a plurality of stiffening elements that are longitudinally oriented (perpendicular to the opening width) (Fig. 14) and/or transversely oriented (perpendicular to the opening direction) (Fig. 15) or diagonally (substantially perpendicular to either direction) (Fig. 9).
Furthermore, Nozaki teaches a cushioned envelope having primarily transversely oriented (perpendicular to the opening direction) ridges, which allows the envelope to better wrap the contents put therein [0006, 0008, 0011-0013, 0017, 0022-0023], wherein the extent in relation to the depth is equal to the ratio of the length/height of the envelope to the width of the envelope.
OR
Lasker teaches a cushioned envelope having primarily longitudinally oriented (perpendicular to the opening width) ridges, which particularly useful for documents and allows for increased widths of envelope, wherein the extent in relation depth extends substantially the entirety thereof.
It would have been obvious to one of ordinary skill in the art at the time of invention to provide ridges/peaks that extend at least substantially perpendicular in relation to the opening/outlet. One of ordinary skill in the art would have been motivated to provide at least some stiffening in at least the desired direction [Porth], specifically to allow better wrapping of the contents therein [Nozaki] OR provide an envelope of increased width that particularly suitable for documents [Lasker].
Regarding claims 12-16, a kraft paper as claimed is not taught. Pyroguide evidences/teaches a Kraft paper either virgin or recycled having a weight from 30 lbs to 90 lbs with a corresponding thickness from 0.003 to 0.009 inches. It would have been obvious to and motivated for one of ordinary skill in the art at the time of invention to choose a common kraft paper within or near the claimed range.
Claims 6 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Higuchi, as applied to claim 1 above, in view of Gerard (U.S. Patent No. 3,668,055) (hereinafter “Gerard”) and optionally Miyake et al. (U.S. Patent No. 4,374,217) (hereinafter “Miyake”) as applied to claim 18.
Regarding claims 6 and 17-18, the outer and inner layers of the sheet(s) being adhered to each other via (cold) adhesive is not taught.
Gerard teaches embossed packing sheets comprising kraft paper of 0.003 to 0.010 inch thickness (col. 1, lines 14-20) having corrugations/embossments formed and attached to either other embossed papers or smooth papers via a light application of glue to the tips of the peaks, such as vegetable glue, devoid of organic solvents that minimizes the formation of vapors during assembly (col. 1, lines 31-35; col. 2, lines 42-47).
Furthermore, Miyake teaches a corrugation process that uses a starch-based (vegetable) cold glue that allows for beneficial gluing without heating at both higher and lower speeds (col. 1, line 20 – col. 3, line 3).
It would have been obvious to one of ordinary skill in the art at the time of invention to provide a cold adhesive for adhesively attaching the embossed layers. One of ordinary skill in the art would have been motivated provide a multiply-embossed cushion layer light application of glue that minimizes the formation of vapors during assembly [Gerard], specifically one that allows for a high glue-ability at all speeds [Miyake].
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Higuchi, as applied to claim 1 above, in view of Kohn et al. (U.S. Pub. No. 2018/0229910 A1) (hereinafter “Kohn”) and Asayama (JP 2018-177304 A) (hereinafter “Asayama”).
Regarding claim 9, the outer layer is not taught to also be embossed.
Kohn teaches an envelope comprising first and second sheets or a folded sheet forming a pocket/pouch [0018, 0051] such as one sealed on three sides with one opening (Fig. 1), each sheet comprising an outer layer and an inner layer for contacting objects placed into the pocket/pouch, the outer sheet and the inner sheet comprising at least one cushioning mechanism, the cushioning mechanism comprising an embossed paper as the outer layer, the inner layer, or both the outer and inner layers [0015, 0020-0021, 0048], wherein the paper may be a kraft paper [0010].
However, a motivation for forming the outer layer as embossed paper is not taught.
Asayama teaches an envelope comprising walls each having at least one embossed layer, wherein the embossed layer faces the outer surface of the envelope such that the envelope can be held without slipping [0019].
It would have been obvious to one of ordinary skill in the art at the time of invention to provide an embossed paper outer layer. One of ordinary skill in the art would have been motivated to provide an embossed cushion/padding inner liner layer as recited above and an embossed non-slipping outer base layer [Asayama].
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Jackson et al. (U.S. Patent No. 11,713,177 B1) teach an envelope comprising a folded main body forming first and second walls each wall comprising an outer (backing) layer (All Figs. [14/16]) and an inner corrugated/ridged/fluted layer (All Figs. [28]) with corrugations that extend substantially perpendicular to the open end portion (All Figs. [25]), wherein the backing table and corrugated layer can both be formed from kraft paper.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JEFFREY A VONCH whose telephone number is (571)270-1134. The Examiner can normally be reached M-F 9:30-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, Applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Frank J Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY A VONCH/Primary Examiner, Art Unit 1781 October 28th, 2025