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 I, claims 1-11 and 16-27 in the reply filed on 28 October 2025 is acknowledged.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claims 1, 5-6, 8-10, 16, 20-21, 23-25, and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kannankeril et al. (US 20140117071 A1).
Regarding claim 1, Kannankeril teaches a packaging material, the packaging material comprising a first web (Kannankeril’s second sheet, 14) of paper-based material defining a first surface and a second surface and a second surface opposite the first surface, a second web (Kannankeril’s first sheet, 12) of paper-based material defining a first surface and a second surface opposite the first surface, a second layer of heat seal coating (adhesive, 32) disposed on the second surface of the second web, and a starch-based padding sandwiched between the first web and the second web, wherein the starch-based padding (foam elements, 16) is positioned between the first surface of the first web and the second layer of heat seal coating disposed on the second surface of the second web (Kannankeril, Abstract, Par. 0005-0006, 0031-0037, 0043-0046, 0053-0055, and Fig. 11). Kannankeril teaches the packaging material may be folded over and sealed to itself via an adhesive on the first web, and therefore teaches a first layer of heat seal coating disposed on the second surface of the first web (Kannankeril, Par. 0070-0072 and Fig 13). Regarding the packaging material being for use in an automated packaging machine, this is an intended use claim. Applicants attention is drawn to MPEP 2106(II)(C) which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Kannankeril discloses a packaging material as presently claimed, it is clear that the packaging material of Kannankeril would be capable of performing the intended use, i.e. being used in an automatic packaging machine, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 5-6 and 20-21, Kannankeril teaches the first surface of the first web and the second layer of heat seal coating is moistened prior to contact with the starch-based padding (Kannankeril, Par. 0056).
Regarding claims 8 and 23, Kannakeril teaches the starch-based padding is a plurality of starch-based particles (Kannankeril, Par. 0005-0006 and 0037).
Regarding claims 9 and 24, Kannakeril teaches the plurality of starch-based particles define a particle diameter, wherein the particle diameter is between 5 and 10 mm (0.2-0.39 in) (Kannakeril, Par. 0041), which lies within the claimed range of about 0.2 in to about 0.4 in and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claims 10 and 25, Kannakeril teaches the plurality of starch-based particles define a particle thickness (i.e. the diameter of the particle), wherein the particle thickness is between 3 and 5 mm (0.11-0.2 in) (Kannakeril, Par. 0041), which lies within the claimed range of about 0.1 in to about 0.25 in and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 16, Kannankeril teaches a mailer formed from a padded material, the padded material comprising a first web (Kannankeril’s second sheet, 14) of paper-based material defining a first surface and a second surface and a second surface opposite the first surface, a second web (Kannankeril’s first sheet, 12) of paper-based material defining a first surface and a second surface opposite the first surface, a second layer of heat seal coating (adhesive, 32) disposed on the second surface of the second web, and a starch-based padding sandwiched between the first web and the second web, wherein the starch-based padding (foam elements, 16) is positioned between the first surface of the first web and the second layer of heat seal coating disposed on the second surface of the second web (Kannankeril, Abstract, Par. 0005-0006, 0031-0037, 0043-0046, 0053-0055, 0068 and Fig. 11). Kannankeril teaches the padded material may be folded over and sealed to itself via an adhesive on the first web, and therefore teaches a first layer of heat seal coating disposed on the second surface of the first web (Kannankeril, Par. 0070-0072 and Fig 13).
Regarding claim 27, Kannankeril teaches a mailer produced by the process of: providing a first web (Kannankeril’s second sheet, 14) of paper-based material defining a first surface and a second surface and a second surface opposite the first surface, providing a second web (Kannankeril’s first sheet, 12) of paper-based material defining a first surface and a second surface opposite the first surface, applying a second layer of heat seal coating (adhesive, 32) to the second surface of the second web, applying a starch-based padding (foam elements, 16) onto the first surface of the first web and causing the first web and second web to come together such that the starch-based padding is sandwiched between the first web and the second web, wherein the starch-based padding is positioned between the first surface of the first web and the second layer of heat seal coating disposed on the second surface of the second web (Kannankeril, Abstract, Par. 0005-0006, 0031-0037, 0043-0046, 0053-0055, 0068 and Fig. 11). Kannankeril teaches the padded material may be folded over and sealed to itself via an adhesive on the first web, and therefore teaches applying a first layer of heat seal coating to the second surface of the first web (Kannankeril, Par. 0070-0072 and Fig 13).
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.
Claims 3-4, 7, 18-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kannankeril et al. as applied to claims 1 and 16 above, further in view of Vincent et al. (US 11701872 B1).
Regarding claims 3 and 18, Kannankeril teaches all of the elements of the claimed invention as stated above for claims 1 and 16. Kannankeril is silent regarding the starch-based padding being precrushed as required by claim 3, and is silent regarding the starch-based padding defining a final density between about 1.5 to about 2.25 lbs/ft3 after the starch based padding is precrushed as required by claims 3 and 18.
Vincent teaches a packaging material comprising first and second paper-based webs, and a padding material sandwiched therebetween wherein the padding material comprises starch (Vincent, Abstract, Col. 1 Line 53- Col. 2 Line34, Fig. 1A, and 1D). Vincent teaches the padding material is precrushed and defines a final density of 0.2-5.0 lbs/ft3 after the padding material is precrushed (Vincent, Col. 11 Line 19 – Col. 12 Line 36 and Col. 21 Line 63 – Col. 22 Line 25).
Kannankeril and Vincent are analogous art as they both teach packaging materials comprising a starch-based padding sandwiched between two paper-based webs. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the padding material of Vincent as the padding material of Kannankeril, including precrushing the padding material. This would allow for increased strength and other mechanical properties, as well as better adherence of the starch-based padding and prevention of re-expansion of the padding (Vincent, Col. 21 Line 63 – Col. 22 Line 25).
Regarding claims 4 and 19, modified Kannankeril teaches the starch-based padding comprises lignin (lignocellulosic additives) (Vincent, Col. 10 Line 42 – Col. 11 Line 18).
Regarding claims 7 and 22, modified Kannankeril teaches the starch-based padding comprises starch, a plasticizer, and a foaming aid (nucleating agent) (Vincent, Col. 10 Line 42 – Col. 11 Line 18).
Claims 11 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Kannankeril et al. as applied to claims 1 and 16 above, further in view of Jobe et al. (US 20180162597 A1).
Regarding claims 11 and 26, Kannankeril teaches all of the elements of the claimed invention as stated above for claims 1 and 16. Kannankeril is silent regarding the starch-based padding being a sheet.
Jobe teaches a packaging material comprising a starch-based padding sandwiched between two other layers wherein the padding is in the form of a sheet (Jobe, Abstract, Par. 0002, 0004, 0008-0010, 0043-0045, Fig. 7A-7B).
Kannankeril and Jobe are analogous art as they both teach packaging comprising a starch-based padding sandwiched between two other layers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a sheet of starch-based padding as the starch-based padding of Kannankeril. This would allow for significant thermal insulation (Kobe, Par. 0045).
Allowable Subject Matter
Claims 2 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record does not teach each and every limitation of the instant claims 2 and 17.
The closest prior art of record is considered to be Kannankeril as described above.
The differences between the closest prior art of record and the instant claims 2 and 17 are described below.
Kannankeril is silent regarding the starch-based padding covering between about 20% to about 40% of the first surface of the first web.
The closest prior art of record thus does not teach or render obvious each and every limitation of the instant claims 2 and 17. Therefore, claims 2 and 17 contain allowable subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782