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 .
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.
Claim 35 is 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 35 recites the term “substantially covers” which is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, claim 32 will be considered satisfies if the first layer of heat seal coating covers 1-100% of the second outer surface of the first web as supported by the instant specification Par. 0057.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-6, 8-10, 16, 20-21, 23-25, 27, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Kannankeril et al. (US 20140117071 A1) in view of Miller (US 20110114513 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 inner surface facing a starch-based padding and a second outer surface opposite the first inner surface, a second web (Kannankeril’s first sheet, 12) of paper-based material defining a first outer surface and a second inner surface opposite the first outer surface, a second layer of heat seal coating (adhesive, 32) disposed on the second inner surface of the second web, and the 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 inner surface of the first web and the second layer of heat seal coating disposed on the second inner 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 and may include a flap of material of the second sheet extending past the first sheet that may be folded over and adhered to the first sheet (Kannankeril, Par. 0069-0072 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.
Kannankeril is silent regarding a first layer of heat seal coating disposed on the second outer surface of the first web.
Miller teaches a mailer comprising a first material (14), a second material (12), and a padding material therebetween (Miller, Par. 0039-0040 and Fig. 3). Miller teaches the second material extends past the first material to form a flap that is then adhered to the first material via a heat seal coating (Tape, 18) on an exterior surface of the first material (Miller, Par. 0010, 0039-0040, 0043 and Fig. 3).
Kannankeril and Miller are analogous art as they both teach mailers comprising a first material, second material, and padding therebetween wherein the second material extends past the first material to form a flap that is then adhered to the first material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the heat seal coating of Miller on the second outer surface of the first web of Kannankeril. This would allow for safety and tamper prevention (Kannankeril, Par. 0010, 0040, and 0043).
Regarding claims 5-6 and 20-21, modified 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, modified Kannankeril teaches the starch-based padding is a plurality of starch-based particles (Kannankeril, Par. 0005-0006 and 0037).
Regarding claims 9 and 24, modified Kannankeril 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) (Kannankeril, 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, modified Kannankeril 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) (Kannankeril, 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 inner surface facing a starch-based padding and a second outer surface opposite the first inner surface, a second web (Kannankeril’s first sheet, 12) of paper-based material defining a first outer surface and a second inner surface opposite the first outer surface, a second layer of heat seal coating (adhesive, 32) disposed on the second inner surface of the second web, and the 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 inner surface of the first web and the second layer of heat seal coating disposed on the second inner surface of the second web (Kannankeril, Abstract, Par. 0005-0006, 0031-0037, 0043-0046, 0053-0055, 0068 and Fig. 11). Kannankeril teaches the packaging material may be folded over and sealed to itself and may include a flap of material of the second sheet extending past the first sheet that may be folded over and adhered to the first sheet (Kannankeril, Par. 0069-0072 and Fig 13).
Kannankeril is silent regarding a first layer of heat seal coating disposed on the second outer surface of the first web.
Miller teaches a mailer comprising a first material (14), a second material (12), and a padding material therebetween (Miller, Par. 0039-0040 and Fig. 3). Miller teaches the second material extends past the first material to form a flap that is then adhered to the first material via a heat seal coating (Tape, 18) on an exterior surface of the first material (Miller, Par. 0010, 0039-0040, 0043 and Fig. 3).
Kannankeril and Miller are analogous art as they both teach mailers comprising a first material, second material, and padding therebetween wherein the second material extends past the first material to form a flap that is then adhered to the first material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the heat seal coating of Miller on the second outer surface of the first web of Kannankeril. This would allow for safety and tamper prevention (Kannankeril, Par. 0010, 0040, and 0043).
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 inner surface facing a starch-based padding and a second outer surface opposite the first inner surface, providing a second web (Kannankeril’s first sheet, 12) of paper-based material defining a first outer surface and a second inner surface opposite the first outer surface, applying a second layer of heat seal coating (adhesive, 32) to the second inner surface of the second web, applying the starch-based padding (foam elements, 16) onto the first inner 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 inner surface of the first web and the second layer of heat seal coating disposed on the second inner surface of the second web (Kannankeril, Abstract, Par. 0005-0006, 0031-0037, 0043-0046, 0053-0055, 0068 and Fig. 11). Kannankeril teaches the packaging material may be folded over and sealed to itself and may include a flap of material of the second sheet extending past the first sheet that may be folded over and adhered to the first sheet (Kannankeril, Par. 0069-0072 and Fig 13).
Kannankeril is silent regarding a first layer of heat seal coating disposed on the second outer surface of the first web.
Miller teaches a mailer comprising a first material (14), a second material (12), and a padding material therebetween (Miller, Par. 0039-0040 and Fig. 3). Miller teaches the second material extends past the first material to form a flap that is then adhered to the first material via a heat seal coating (Tape, 18) on an exterior surface of the first material (Miller, Par. 0010, 0039-0040, 0043 and Fig. 3).
Kannankeril and Miller are analogous art as they both teach mailers comprising a first material, second material, and padding therebetween wherein the second material extends past the first material to form a flap that is then adhered to the first material. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the heat seal coating of Miller on the second outer surface of the first web of Kannankeril. This would allow for safety and tamper prevention (Kannankeril, Par. 0010, 0040, and 0043).
Regarding claim 35, modified Kannankeril teaches the first layer of heat seal coating covers the second outer surface an amount that would lie within the range of from 1-100% and therefore satisfy the claim limitation (Miller, Par. 0010, 0040, 0043, and Fig. 3).
Claims 3-4, 7, 18-19, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Kannankeril et al. and Miller as applied to claims 1 and 16 above, further in view of Vincent et al. (US 11701872 B1).
Regarding claims 3 and 18, modified Kannankeril teaches all of the elements of the claimed invention as stated above for claims 1 and 16. Modified 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).
Modified 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 modified 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, modified Kannankeril teaches all of the elements of the claimed invention as stated above for claims 1 and 16. Modified 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).
Modified 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 modified 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 modified 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.
Response to Arguments
Applicant’s remarks and amendments filed 07 May 2026 have been fully considered.
Applicant argues that Kannankeril teaches adhesives applied to the interior surfaces of the first and second sheets and thus does not teach a first layer of heat seal coating disposed on the second outer surface of the first web. This is found moot.
The grounds of rejection have been updated above in view of the present claim amendments. In the grounds of rejection above, newly cited Miller is utilized to render obvious the claimed first layer of heat seal coating.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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