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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/13/2025 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the nested flutes crushed in the sealed side edge portions (claims 1 and 16) and the nested flutes crushed in the sealed side edge portions wherein the liner layer of the single-face corrugated material extends beyond outer side edges of the fluted layer (Fig. 13) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-18, 21, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the specification, as originally filed, lacks antecedent basis for the nested flutes being crushed in the sealed side edge portions. This is a new matter rejection.
Regarding claim 1, the specification fails to provide an adequate written description of the nested flutes being crushed in the sealed side edge portions.
Regarding claim 13, the specification, as originally filed, lacks antecedent basis for the nested flutes crushed in the sealed side edge portions wherein the liner layer of the single-face corrugated material extends beyond outer side edges of the fluted layer. This is a new matter rejection.
Regarding claim 13, the specification fails to provide an adequate written description of the nested flutes crushed in the sealed side edge portions wherein the liner layer of the single-face corrugated material extends beyond outer side edges of the fluted layer.
Regarding claim 16, the specification, as originally filed, lacks antecedent basis for the nested flutes being crushed in the sealed side edge portions. This is a new matter rejection.
Regarding claim 16, the specification fails to provide an adequate written description of the nested flutes being crushed in the sealed side edge portions.
Claims that have not been specifically mentioned are rejected since they depend from claims rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-12, 14-18, and 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6, 10-13, 18, 19, 21, 22, and 25-28 of U.S. Patent No. 11,713,177. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,713,177 contain every element of claims 1, 3-18, and 21-23 of the instant application, and as such anticipated claimed 1, 3-18, and 21-23.
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.
Claims 1, 3, 4, 7-9, 11, 12, 14, 16, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Document No. 2010-208310 to Tamura (hereinafter Tamura), Patent Application Publication No. 2012/0248177 to Beaulieu et al. (hereinafter Beaulieu), US Patent No. 1849065 to Biederman, and Patent Application Publication No. 2021/00787767 to Simpkins et al. (hereinafter Simpkins).
Regarding claim 1, Tamura discloses a shipping mailer, comprising:
a first wall (3) and a second wall (2) that are sealed along sealed side edge portions (10, 11, 12, 13) of the shipping mailer, the first and second walls defining an interior of the shipping mailer, the shipping mailer comprising a closed first end portion and a second end portion (7) comprising an opening sealable by a closure (4);
the shipping mailer comprising a single-face corrugated material comprising a liner layer and a fluted layer (Fig. 8);
the shipping mailer comprising a closed first end portion edge (5) at the closed first end portion;
the fluted layer comprising a plurality of flutes (Fig. 1),; and
wherein the first wall and the second wall have a same width (Fig. 1), and the nested flutes are crushed in the sealed side edge portions (Fig. 8).
Tamura does not disclose the fluted layer’s plurality of flutes extending parallel to the closed first end portion, the nested flutes between the sealed side edge portions, or the fluted layer comprises a plurality of preformed longitudinal fold lines formed in the flutes of the fluted layer, and the preformed longitudinal fold lines are outside of the sealed side edge portions.
However, Beaulieu teaches a similar shipping mailer wherein the fluted layer comprises a plurality of flutes extending in a direction parallel or substantially parallel to the closed first end portion edge along the width of the first and second walls (see Fig. 2).
Because Tamura and Beaulieu both teach corrugated shipping mailers, it would have been obvious to one of ordinary skill in the art to substitute the horizontally aligned (side edge to side edge) flutes taught by Beaulieu for the vertically aligned (top edge to bottom edge) flutes taught by Tamura to achieve the predictable result of padding the mailer to protect the contents.
Additionally, Biederman teaches a similar corrugated packaging container wherein flutes of the first wall nest with flutes of the second wall between the side edge portions (Figs. 2, 4) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to construct the mailer taught by Tamura as modified above where the flutes nest with each other across the packaging as taught by Biederman, in order to enhance economy of space in packing and to prevent crushing the corrugations as taught by Biederman (col. 5, ll. 6-8 and 28-31).
Further, Simpkins teaches that it is known in the art to provide a fluted layer with a plurality of preformed longitudinal fold lines (patterned crease) formed in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of a sealed side edge portions in an analogous shipping mailer (Figs. 2, 3, 6, 8, and 9). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the Tamura shipping mailer, as in Simpkins, in order to allow the corrugated walls to conform to an article placed into the mailer.
Regarding claim 3, forming a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the Tamura shipping mailer, as in Simpkins and discussed above, meets the recitation “wherein the preformed longitudinal fold lines extend from the closed first end portion along the first wall and the second wall to the second end portion.”
Regarding claim 4, forming a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the Tamura shipping mailer, as in Simpkins and discussed above, meets the recitation “wherein the preformed longitudinal fold lines are straight.”
Regarding claim 7, forming a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the Tamura shipping mailer, as in Simpkins and discussed above, meets the recitation “wherein the preformed longitudinal fold lines are curved.”
Regarding claim 8, Tamura as modified above disclose the claimed invention, as discussed above, especially a plurality of preformed longitudinal fold lines formed in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the shipping mailer, as in Simpkins. However, the prior art does not disclose the curved preformed longitudinal fold lines having a concavity oriented toward a nearest sealed side edge portion of the shipping mailer. It would have been obvious to a person having ordinary skill in the art to position each curved preformed longitudinal fold line to have a concavity oriented outwardly toward a nearest sealed side edge portion of the modified Tamura shipping mailer, since it has been held that rearranging parts of an invention involves only routine skill in the art.
Regarding claim 9, forming a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the Tamura shipping mailer, as in Simpkins and discussed above, meets the recitation “wherein the curved preformed longitudinal fold lines extend between the closed first end portion and the second end portion.”
Regarding claim 11, Tamura as modified above disclose the claimed invention, as discussed above. Tamura further discloses the first and second walls each comprise at least one zone in which the flutes are crushed (Fig. 8).
Regarding claim 12, Tamura as modified above disclose the claimed invention, as discussed above. Tamura especially discloses the first wall and the second wall comprise preformed fold lines (8 and 9) that originate from and return to a center fold line (5) of the closed first end portion at locations spaced inwardly away from side edges of the shipping mailer (Fig. 1). However, Tamura does not disclose the preformed fold lines (8 and 9) being curved. It would have been an obvious matter of design choice to a person having ordinary skill in the art before the effective filing date of the claimed invention to make the preformed fold lines (8 and 9) that originate from and return to the center fold line (5) of the closed first end portion curved in the Tamura shipping mailer, since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results.
Regarding claim 14, Tamura discloses the second wall (2) comprises a closure flap (4) sized and shaped to be folded over and secured to an exterior of the first wall to close the opening at the second end portion of the shipping mailer.
Regarding claim 21, Tamura discloses the shipping mailer comprises a single piece of single-face corrugated material folded about a fold line to provide the first and second walls (Fig. 1).
Regarding claim 16, Tamura discloses shipping mailer, comprising:
a first wall (3) and a second wall (2) that are sealed along sealed side edge portions (10, 11, 12, 13) of the shipping mailer, the first and second walls at least partially defining an interior of the shipping mailer, the shipping mailer comprising a closed first end portion and a second end portion (7) comprising an opening sealable by a closure (4);
the shipping mailer comprising a single-face corrugated material comprising a liner layer and a fluted layer (Fig. 8);
the shipping mailer comprising a closed first end portion edge (5) at the closed first end portion;
the fluted layer comprising a plurality of flutes extending in the direction of (i.e., toward) the closed first end portion edge (Fig. 1), wherein flutes of the margin portion (12) of the first wall nest with flutes of the margin portion (10) of the second wall (Fig. 8); and
wherein the first wall and the second wall have a same width (Fig. 1), and the nested flutes are crushed in the sealed side edge portions (Fig. 8).
However, Tamura does not disclose the fluted layer’s plurality of flutes extending parallel to the closed first end portion, the nested flutes between the sealed side edge portions, or the fluted layer comprising a plurality of curved preformed longitudinal fold lines formed in the flutes of the fluted layer, and the curved preformed longitudinal fold lines are offset inwardly from the sealed side edge portions, and each curved preformed longitudinal fold line has a concavity oriented outwardly toward a nearest sealed side edge portion of the shipping mailer.
However, Beaulieu teaches a similar shipping mailer wherein the fluted layer comprises a plurality of flutes extending in a direction parallel or substantially parallel to the closed first end portion edge along the width of the first and second walls (see Fig. 2).
Because Tamura and Beaulieu both teach corrugated shipping mailers, it would have been obvious to one of ordinary skill in the art to substitute the horizontally aligned (side edge to side edge) flutes taught by Beaulieu for the vertically aligned (top edge to bottom edge) flutes taught by Tamura to achieve the predictable result of padding the mailer to protect the contents.
Additionally, Biederman teaches a similar corrugated packaging container wherein flutes of the first wall nest with flutes of the second wall between the side edge portions (Figs. 2, 4) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to construct the mailer taught by Tamura as modified above where the flutes nest with each other across the packaging as taught by Biederman, in order to enhance economy of space in packing and to prevent crushing the corrugations as taught by Biederman (col. 5, ll. 6-8 and 28-31).
Further, Simpkins teaches that it is known in the art to form a plurality of curved preformed longitudinal fold lines (patterned crease) in flutes of a fluted layer, wherein the curved preformed longitudinal fold lines are offset inwardly from sealed side edge portions (Fig. 8). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a plurality of curved preformed longitudinal fold lines in the flutes of the fluted layer, wherein the curved preformed longitudinal fold lines are offset inwardly from the sealed side edge portions in the Tamura shipping mailer, as in Simpkins, in order to allow the corrugated walls to conform to an article placed into the mailer.
Moreover, it would have been obvious to a person having ordinary skill in the art to position each curved preformed longitudinal fold line to have a concavity oriented outwardly toward a nearest sealed side edge portion of the modified Tamura shipping mailer, since it has been held that rearranging parts of an invention involves only routine skill in the art.
Regarding claim 17, forming a plurality of curved preformed longitudinal fold lines in the flutes of the fluted layer, wherein the curved preformed longitudinal fold lines are offset inwardly from the sealed side edge portions in the Tamura shipping mailer, as in Simpkins and discussed above, meets the recitation “wherein the curved preformed longitudinal fold lines extend between the closed first end portion and the second end portion.”
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Japanese Document No. 2010-208310 to Tamura (hereinafter Tamura), Patent Application Publication No. 2012/0248177 to Beaulieu et al. (hereinafter Beaulieu), US Patent No. 1849065 to Biederman, and Patent Application Publication No. 2021/00787767 to Simpkins et al. (hereinafter Simpkins) as applied to claims 1 and 14 above, and further in view of U.S. Patent No. 3,944,131 to Weiss (hereinafter Weiss).
Regarding claim 15, Tamura as modified above disclose the claimed invention, as discussed above. Tamura especially discloses the closure flap (4) comprises flutes (Figs. 1 and 7). However, the applied Tamura and Simpkins references do not disclose the preformed longitudinal fold lines in the flutes extending onto the closure flap. Weiss teaches that it is known in the art to extend preformed longitudinal lines (38) onto the flutes of a closure flap (74) in an analogous shipping mailer. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to extend the preformed longitudinal lines onto the flutes of a closure flap in modified shipping mailer of Tamura, as in Weiss, in order to allow the corrugated closure flap to conform to an article placed in the mailer.
Claim 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Japanese Document No. 2007594 (hereinafter (JP ‘594), Patent Application Publication No. 2012/0248177 Beaulieu (hereinafter Beaulieu), and Patent Application Publication No. 2021/00787767 to Simpkins et al. (hereinafter Simpkins).
Regarding claim 23, JP ‘594 discloses a shipping mailer, comprising:
a first wall (1a) and a second wall (1b) that are sealed along sealed side edge portions of the shipping mailer (Fig. 1), the first and second walls defining an interior of the shipping mailer, the shipping mailer comprising a closed first end portion and a second end portion (Fig. 2) comprising an opening sealable by a closure (4), the first and second walls having a same width;
the shipping mailer comprising a single-face corrugated material comprising a liner layer (8) and a fluted layer (2); the shipping mailer comprising a closed first end portion edge at the closed first end portion (Fig. 2); the fluted layer (2) comprising a plurality of flutes (5a, 5b) extending in a direction parallel or substantially parallel to the closed first end portion edge along the width of the first and second walls (Fig. 2), wherein flutes of the first wall nest with flutes of the second wall between the sealed side edge portions (Fig. 3); and the shipping mailer defining a central longitudinal axis extending from the closed first end portion to the second end portion that is perpendicular to the flutes.
However, JP ‘594 does not disclose the materials being paper, or the fluted layer comprising a plurality of preformed longitudinal fold lines formed in the flutes of the fluted layer, all of the preformed longitudinal fold lines are outside of the sealed side edge portions, and all of the preformed longitudinal fold lines are offset outwardly away from the central longitudinal axis.
However, Beaulieu teaches a similar mailer wherein paper is the material of construction (throughout) as claimed.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the JP ‘594 mailer device out of paper material as taught by Beaulieu, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Further, Simpkins teaches that it is known in the art to provide a fluted layer with a plurality of preformed longitudinal fold lines (patterned crease) formed in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of a sealed side edge portions in an analogous shipping mailer (Figs. 2, 3, 6, 8, and 9). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the JP ‘594 shipping mailer, as in Simpkins, in order to allow the corrugated walls to conform to an article placed into the mailer.
Regarding claim 24, JP ‘594 as modified above results in a device wherein the first wall comprises at least two preformed longitudinal fold lines formed in the flutes between the central longitudinal axis and a left sealed side edge portion of the shipping mailer, and at least two preformed longitudinal fold lines formed in the flutes between the central longitudinal axis and a right sealed side edge portion of the shipping mailer (see Simpkins Fig. 2 showing multiple fold lines).
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-12, 14-18, and 21-24 have been considered but are moot because of the new ground of rejection.
Conclusion
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including: “The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references.” A general allegation that the claims “define a patentable invention” without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section. Moreover, “The prompt development of a clear Issue requires that the replies of the applicant meet the objections to and rejections of the claims.” Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 714.02 and MPEP 2163.06. The “disclosure” includes the claims, the specification and the drawings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
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/PETER N HELVEY/Primary Examiner, Art Unit 3734
January 25, 2026