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 .
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-10, in the reply filed on 11/6/2025 is acknowledged.
Claims 11-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention.
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.
Claims 7-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 7 recites the limitation "the PVOH" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the copolymer" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the PVOH" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 7-9 each depends from claim 1, and claim 1 merely refers to a water-soluble material layer without specifying if the water-soluble material includes PVOH or any copolymer. The examiner noted that claim 4 later defines that the water-soluble material layer comprises PVOH, while claim 5 defines PVOH as being plasticized. It is not clear or understood what applicant intends to claim in claims 7-9.
Appropriate correction and clarification is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1-4 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 11292146A to Sekiguchi et al. (“Sekiguchi”, of record).
Regarding claim 1, Sekiguchi teaches an air cushion (i.e., the air cushion material 10, Fig. 2, para [0009]-[0011]) comprising:
- a first layer comprising a repulpable material (para [0009], [0022], Fig. 2, the layer 11 that is of paper, kraft paper, i.e., repulpable material, meeting the claimed limitations);
- a laminate comprising at least one water-soluble material layer (para [0009], also see para [0038]-[0040], Sekiguchi teaches as in one of its embodiments that the PVA film 13 is a laminated paper material includes a layer of PVA film, i.e., which is the same water-soluble material as that of the instant application, see instant claim 4, meeting the claimed limitations), the laminate adjacently affixed to the first layer (see Fig. 2, para [0009], the laminate and the first layer are adjacently affixed at the peripheral edges, meeting the claimed limitations); and
- an air fillable portion integral with the laminate (see annotated Fig. 2 below for reference the air fillable portion integral with the laminate).
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Regarding the recitation "fluid-fillable" in the preamble of instant claim 1, it should be noted that a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478,481 (CCPA 1951). See MPEP 2111.02. In the present case, the term "fluid-fillable" does not provide any structural features beyond those recited in the claim, the body of the claim does not depend on the preamble for completeness, and the structural limitations are able to stand alone. Therefore, the air cushion of Sekiguchi is considered as to read on the instantly claimed fluid-fillable air cushion.
Regarding claim 2, Sekiguchi teaches the repulpable material is cellulosic sheet (para [0009], [0022], [0037], Sekiguchi teaches suitable paper material for its layer 11 includes commercially available paper sheet, kraft paper, tissue paper, i.e., cellulosic sheet), meeting the claimed limitations.
Regarding claim 3, Sekiguchi teaches the repulpable material is kraft paper sheet (para [0022], Sekiguchi teaches suitable paper material for its layer 11 includes kraft paper), meeting the claimed limitations.
Regarding claim 4, Sekiguchi teaches wherein the at least one water-soluble material layer comprises polyvinyl alcohol (PVOH) (para [0009], Fig. 2, the laminate 13 that includes a layer of PVA film, i.e., PVOH film, meeting the claimed limitations).
Regarding claim 7, Claim 7 cannot be treated on its merits due to the indefiniteness of the claim. See 35 U.S.C. 112(b) rejection of claim 7 made of record in this Office Action.
Regarding claim 8, Claim 8 cannot be treated on its merits due to the indefiniteness of the claim. See 35 U.S.C. 112(b) rejection of claim 8 made of record in this Office Action.
Regarding claim 9, Claim 9 cannot be treated on its merits due to the indefiniteness of the claim. See 35 U.S.C. 112(b) rejection of claim 9 made of record in this Office Action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 5-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 11292146A to Sekiguchi as applied to claim 1 above, in view of EP2447060 to Fiorini et al. (“Fiorini”, of record).
The limitations of claim 1 are taught by Sekiguchi as discussed above.
Regarding claims 5-6, Sekiguchi teaches its water-soluble material layer comprises polyvinyl alcohol (PVOH) (para [0009]), but Sekiguchi does not specifically teach the PVOH is plasticized in the manner as instantly claimed.
Fiorini teaches bags made of composite material for the packing and storage of particular material (para [0001]), of which the composite material having one layer of cellulosic material such as a paper layer, and one water-soluble layer such as PVOH film (para [0005]). Fiorini teaches using plasticized PVOH, and Fiorini teaches adding desired additives/plasticizers to PVOH, such as polyethylene glycols, propylene glycol, that adjusting/changing the mechanical properties of the PVOH film as desired (para [0012]), which are the same plasticizers as that of the instant application (see instant specification, para [0048] which describes “…[T]he plasticizer system can be one, or a combination of conventional plasticizers including … polyethylene glycol, propylene glycol …”), meeting the claimed material limitations of claims 5-6.
It would have been obvious to one of ordinary skill in the art to modify the air cushion of Sekiguchi, to include in the PVOH film of Sekiguchi with the suitable plasticizers such as polyethylene glycols and/or propylene glycol as taught by Fiorini (para [0012]), to provide a PVOH film with desired mechanical properties as taught by Fiorini (para [0012]), which would have predictably arrived at a satisfactory air cushion that is the same as instantly claimed. One of ordinary skill would have understood how to modify and choose suitable additives for intended use. The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
Regarding claim 10, Sekiguchi teaches an air cushion material that is suitable for various applications and articles (para [0039] [0040]). Sekiguchi does not specifically teach a repulpable mailer comprising the sustainable air cushion.
Fiorini teaches bags made of composite material for the packing and storage of particular material (para [0001]), of which the composite material having one layer of cellulosic material such as a paper layer, and one water-soluble layer such as PVOH film (para [0005]). Such bag of Fiorini for the packing and storage of particular materials is considered to read on a mailer.
It would have been obvious to one of ordinary skill in the art to modify the air cushion of Sekiguchi in view the teachings of Fiorini, to provide a bag/mailer made of the air cushion material of Sekiguchi for the packing and storage of particular material as taught by Fiorini (para [0001]), which would have predictably arrived at a satisfactory mailer that is the same as instantly claimed.
Because the mailer of modified Sekiguchi and the instantly claimed mailer are identical or substantially identical in composition in each respective layers (i.e., having a first layer comprising a repulpable material, and having a laminate comprising at least one water-soluble material layer/PVOH film, as discussed above), one would expect that the mailer of modified Sekiguchi is capable of performing in the same or similar manner as the instantly claimed mailer, i.e., repulpable. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YAN LAN/Primary Examiner, Art Unit 1782