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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 16 September 2026 has been entered.
Drawings
The drawings were received on 16 September 2026. These drawings are acceptable.
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, 6, 7, 11, and 13 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.
Claim 1 recites the limitation "the expandable polylactic acid-based molded bead foam" in lines 10-11. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is led to be indefinite as it is unclear if “an adhesion strength” and “a strength of adhesion” are distinct or refer to the same value. In order to apply art the limitation will be interpreted as the latter.
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.
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) 1, 7, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Skinner (US 20190299557) further in view of Bowen (US 20220324625) and Kontz (US 4645480).
Claim 1: Skinner discloses a box (container) comprising: sides 14 and ends 15 (at least two portions) configured to be joined together without the use of adhesive to form the container [as Skinner discloses that clips or a strap can be used, P. 0050, 0055]; at least one interface between the sides 14 and ends 15 (at least two portions) [see fig. 6], wherein each side 14 and end 15 (portion) consists entirely of expandable polystyrene based molded bead foam, wherein the box (container) is in the form of a shipper free of labels, tape, and adhesive, that there are many other ways of holding the box (container) assembled, and that if boxes (containers) do not need to be reused they can be adhesively secured together prior to use (see P. 0033, 0055, and fig. 4 & 6).
Skinner does not disclose wherein the at least one interface is heat-sealed, wherein the at least one heat-sealed interface comprises a tamper-evident seal, wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions, wherein the at least one heat-sealed interface has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam, wherein the container consists entirely of expandable polylactic acid-based molded bead foam, or wherein the box (container) is capable of being recycled or composted without removal of labels or additional packaging.
Bowen teaches polylactic acid foam material (expandable polylactic acid-based molded bead foam) used to produce expanded foam pieces (see P. 0145-0148).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the box (container) out of polylactic acid foam material (expandable polylactic acid-based molded bead foam) instead of polystyrene, as taught by Bowen, in order to reduce waste due to its composability and 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.
Kontz teaches fabricating cylindrical sleeves from rectangular blanks of an expanded polymeric material, wherein a seam sealing device seals overlapping leading and trailing edges of the blank to one another in a lapped seam, wherein, preferably the seal sealing device is a heat sealing device, and a hot air heat sealing device is preferred for expanded polystyrene and other popular types of expanded thermoplastic materials, resulting in an interface between the leading edge and trailing edge being heat-sealed (see C. 2 L. 30-33 and C. 3 L. 3-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have held the box (container) together only by heat sealing the interfaces between the sides 14 and ends 15 (at least two portions) instead of securing them by clips, straps, or adhesive, as taught by Kontz, in order to provide a stronger more durable bond that can withstand a wide range of temperature, pressure, and environmental conditions as well as reducing materials and associated costs.
The combination results in a box (container) which consists entirely of polylactic acid foam material (expandable polylactic acid-based molded bead foam) and wherein the box (container) is capable of being recycled or composted without removal of labels or additional packaging. Examiner notes that Skinner discloses that on at least one side of the blank there can be located a film of water-impervious material, such that the film is not required and in this case is absent (see P. 0012).
The at least one heat-sealed interface of the combination inherently or in the alternative obviously comprises a tamper-evident seal as the prior art combination discloses a structurally identical box (container) to the inventions claimed container and as the material of the prior art container of polylactic acid foam material is identical to the claimed material of polylactic acid-based molded bead foam. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
The combination discloses wherein a strength of adhesion between the sides 14 and ends 15 (at least two portions) is configured to be adjustable based on a cross-section of adhesion between the sides 14 and ends 15 (at least two portions).
The at least one heat-sealed interface of the combination inherently or in the alternative obviously has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam as the prior art combination discloses a structurally identical box (container) to the inventions claimed container, as the material of the prior art container of polylactic acid foam material is identical to the claimed material of polylactic acid-based molded bead foam, and as the attachment between the sides 14 and ends 15 (at least two portions) is made by heat sealing which is identical to the claimed attachment which is identically heat-sealed. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
Claim 7: The combination discloses wherein the box (container) is configured to be composted without undergoing separation of any component part of the box (container).
Claim 11: The combination discloses the box (container) is in the form of a box having a plurality of sides 14 (see fig. 4).
Claim 13: The combination discloses wherein the box (container) is initially in the form of a blank 10 (fold-flat shipper) configured to fold into the box (container) for shipping commodities (see fig. 2 and fig. 4).
Claim 1: Under a second interpretation, Skinner discloses a container comprising: at least two portions configured to be joined together without the use of adhesive to form the container; at least one interface between the at least two portions, wherein each portion consists of expandable polystyrene based molded bead foam, wherein the box (container) is in the form of a shipper free of labels, tape, and adhesive, that there are many other ways of holding the box assembled, and that if boxes do not need to be reused they can be adhesively secured together prior to use (see P. 0033, 0055, fig. 4, and annotated fig. 7 below).
Skinner does not disclose wherein the at least one interface is heat-sealed, wherein the at least one heat-sealed interface comprises a tamper-evident seal, wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions, wherein the at least one heat-sealed interface has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam, wherein the container consists entirely of expandable polylactic acid-based molded bead foam, or wherein the box (container) is capable of being recycled or composted without removal of labels or additional packaging.
Bowen teaches polylactic acid foam material (expandable polylactic acid-based molded bead foam) used to produce expanded foam pieces (see P. 0145-0148).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the container out of polylactic acid foam material (expandable polylactic acid-based molded bead foam) instead of polystyrene, as taught by Bowen, in order to reduce waste due to its composability and 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.
Kontz teaches fabricating cylindrical sleeves from rectangular blanks of an expanded polymeric material, wherein a seam sealing device seals overlapping leading and trailing edges of the blank to one another in a lapped seam, wherein, preferably the seal sealing device is a heat sealing device, and a hot air heat sealing device is preferred for expanded polystyrene and other popular types of expanded thermoplastic materials, resulting in an interface between the leading edge and trailing edge being heat-sealed (see C. 2 L. 30-33 and C. 3 L. 3-19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have held the container together only by heat sealing the interfaces between the at least two portions instead of securing the container by clips, straps, or adhesive, as taught by Kontz, in order to provide a stronger more durable bond that can withstand a wide range of temperature, pressure, and environmental conditions as well as reducing materials and associated costs.
The combination results in a container which consists entirely of polylactic acid foam material (expandable polylactic acid-based molded bead foam) and wherein the container is capable of being recycled or composted without removal of labels or additional packaging. Examiner notes that Skinner discloses that on at least one side of the blank there can be located a film of water-impervious material, such that the film is not required and in this case is absent (see P. 0012).
The at least one heat-sealed interface of the combination inherently or in the alternative obviously comprises a tamper-evident seal as the prior art combination discloses a structurally identical box (container) to the inventions claimed container and as the material of the prior art container of polylactic acid foam material is identical to the claimed material of polylactic acid-based molded bead foam. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
The combination discloses wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions.
The at least one heat-sealed interface of the combination inherently or in the alternative obviously has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam as the prior art combination discloses a structurally identical box (container) to the inventions claimed container, as the material of the prior art container of polylactic acid foam material is identical to the claimed material of polylactic acid-based molded bead foam, and as the attachment between the sides 14 and ends 15 (at least two portions) is made by heat sealing which is identical to the claimed attachment which is identically heat-sealed. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
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Claim 6: The combination discloses wherein the at least two portions are initially joined at a hinge 23 (hinged interface) (see fig. 2, 3c, 4, and annotated fig. 6 above).
Claim 7: The combination discloses wherein the container is configured to be composted without undergoing separation of any component part of the container.
Claim 11: The combination discloses the container is in the form of a box having a plurality of sides 14 (see fig. 4).
Claim 13: The combination discloses wherein the container is initially in the form of a blank 10 (fold-flat shipper) configured to fold into the container for shipping commodities (see fig. 2 and fig. 4).
Claim(s) 1, 7, 11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Skinner (US 20190299557) further in view of Matsumoto (JP 2004181820).
Claim 1: Skinner discloses a box (container) comprising: sides 14 and ends 15 (at least two portions) configured to be joined together without the use of adhesive to form the container [as Skinner discloses that clips or a strap can be used, P. 0050, 0055]; at least one interface between the sides 14 and ends 15 (at least two portions) [see fig. 6], wherein each side 14 and end 15 (portion) consists entirely of expandable polystyrene based molded bead foam, wherein the box (container) is in the form of a shipper free of labels, tape, and adhesive, that there are many other ways of holding the box (container) assembled, and that if boxes (containers) do not need to be reused they can be adhesively secured together prior to use (see P. 0033, 0055, and fig. 4 & 6).
Skinner does not disclose wherein the at least one interface is heat-sealed, wherein the at least one heat-sealed interface comprises a tamper-evident seal, wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions, wherein the at least one heat-sealed interface has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam, wherein the container consists entirely of expandable polylactic acid-based molded bead foam, or wherein the box (container) is capable of being recycled or composted without removal of labels or additional packaging.
Matsumoto teaches a concrete form made by foamed sheets of polylactic acid-based resin (expandable polylactic acid-based molded bead foam) using an inorganic inert gas-based blowing agent laminated upon one another and heat-fused/heat-sealed to produce a panel (see P. 0007, 0020, 0033, & 0037).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the box (container) out of foamed polylactic acid-based resin (expandable polylactic acid-based molded bead foam) instead of polystyrene, as taught by Matsumoto, in order to reduce waste due to its composability, reduce petroleum consumption, and 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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have held the box (container) together only by heat-fusing/heat-sealing the interfaces between the sides 14 and ends 15 (at least two portions) instead of securing them by clips, straps, or adhesive, as taught by Matsumoto, in order to provide a stronger more durable bond that can withstand a wide range of temperature, pressure, and environmental conditions as well as reducing materials and associated costs.
The combination results in a box (container) which consists entirely of polylactic acid-based resin (expandable polylactic acid-based molded bead foam) and wherein the box (container) is capable of being recycled or composted without removal of labels or additional packaging. Examiner notes that Skinner discloses that on at least one side of the blank there can be located a film of water-impervious material, such that the film is not required and in this case is absent (see P. 0012).
The at least one heat-fused/heat-sealed interface of the combination inherently or in the alternative obviously comprises a tamper-evident seal as the prior art combination discloses a structurally identical box (container) to the inventions claimed container and as the material of the prior art container of foamed polylactic acid-based resin is identical to the claimed material of polylactic acid-based molded bead foam. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-fused/heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
The combination discloses wherein a strength of adhesion between the sides 14 and ends 15 (at least two portions) is configured to be adjustable based on a cross-section of adhesion between the sides 14 and ends 15 (at least two portions).
The at least one heat-fusing/heat-sealing interface of the combination inherently or in the alternative obviously has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam as the prior art combination discloses a structurally identical box (container) to the inventions claimed container, as the material of the prior art container of polylactic acid foam material is identical to the claimed material of polylactic acid-based molded bead foam, and as the attachment between the sides 14 and ends 15 (at least two portions) is made by heat-fusing/heat-sealing which is identical to the claimed attachment which is identically heat-sealed. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
Claim 7: The combination discloses wherein the box (container) is configured to be composted without undergoing separation of any component part of the box (container).
Claim 11: The combination discloses the box (container) is in the form of a box having a plurality of sides 14 (see fig. 4).
Claim 13: The combination discloses wherein the box (container) is initially in the form of a blank 10 (fold-flat shipper) configured to fold into the box (container) for shipping commodities (see fig. 2 and fig. 4).
Claim 1: Under a second interpretation, Skinner discloses a container comprising: at least two portions configured to be joined together without the use of adhesive to form the container; at least one interface between the at least two portions, wherein each portion consists of expandable polystyrene based molded bead foam, wherein the box (container) is in the form of a shipper free of labels, tape, and adhesive, that there are many other ways of holding the box assembled, and that if boxes do not need to be reused they can be adhesively secured together prior to use (see P. 0033, 0055, fig. 4, and annotated fig. 7 above).
Skinner does not disclose wherein the at least one interface is heat-sealed, wherein the at least one heat-sealed interface comprises a tamper-evident seal, wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions, wherein the at least one heat-sealed interface has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam, wherein the container consists entirely of expandable polylactic acid-based molded bead foam, or wherein the box (container) is capable of being recycled or composted without removal of labels or additional packaging.
Matsumoto teaches a concrete form made by foamed sheets of polylactic acid-based resin (expandable polylactic acid-based molded bead foam) using an inorganic inert gas-based blowing agent laminated upon one another and heat-fused/heat-sealed to produce a panel (see P. 0020, 0033, & 0037).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have made the container out of foamed polylactic acid-based resin (expandable polylactic acid-based molded bead foam) instead of polystyrene, as taught by Matsumoto, in order to reduce waste due to its composability, reduce petroleum consumption, and 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.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have held the container together only by heat-fusing/heat-sealing the interfaces between the at least two portions instead of securing them by clips, straps, or adhesive, as taught by Matsumoto, in order to provide a stronger more durable bond that can withstand a wide range of temperature, pressure, and environmental conditions as well as reducing materials and associated costs.
The combination results in a container which consists entirely of polylactic acid-based resin (expandable polylactic acid-based molded bead foam) and wherein the container is capable of being recycled or composted without removal of labels or additional packaging. Examiner notes that Skinner discloses that on at least one side of the blank there can be located a film of water-impervious material, such that the film is not required and in this case is absent (see P. 0012).
The at least one heat-sealed interface of the combination inherently or in the alternative obviously comprises a tamper-evident seal as the prior art combination discloses a structurally identical box (container) to the inventions claimed container and as the material of the prior art container of foamed polylactic acid-based resin is identical to the claimed material of polylactic acid-based molded bead foam. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
The combination discloses wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions.
The at least one heat-fusing/heat-sealing interface of the combination inherently or in the alternative obviously has an adhesion strength such that separation of the at least two portions at the at least one heat-sealed interface fractures the expandable polylactic acid-based molded bead foam as the prior art combination discloses a structurally identical box (container) to the inventions claimed container, as the material of the prior art container of polylactic acid foam material is identical to the claimed material of polylactic acid-based molded bead foam, and as the attachment between the sides 14 and ends 15 (at least two portions) is made by heat-fusing/heat-sealing which is identical to the claimed attachment which is identically heat-sealed. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show the heat-sealed interface does not comprise a tamper-evident seal. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
Claim 6: The combination discloses wherein the at least two portions are initially joined at a hinge 23 (hinged interface) (see fig. 2, 3c, 4, and annotated fig. 6 above).
Claim 7: The combination discloses wherein the container is configured to be composted without undergoing separation of any component part of the container.
Claim 11: The combination discloses the container is in the form of a box having a plurality of sides 14 (see fig. 4).
Claim 13: The combination discloses wherein the container is initially in the form of a blank 10 (fold-flat shipper) configured to fold into the container for shipping commodities (see fig. 2 and fig. 4).
Response to Arguments
The drawing objections in paragraph 3 of office action dated 17 March 2026 are withdrawn in light of the amended disclosure filed 16 September 2026.
Applicant's arguments filed 16 September 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that Skinner teaches the opposite of what claim 1 recites as Skinner’s sole tamper-evident disclosure obtains the seal by adding a film and an adhesive and that Skinner therefore confirms that a tamper-evident seal was obtained by introducing a different material and an adhesive and not as an automatic consequence of heat-sealing foam portions to one another, the Examiner initially responds that this is a piecemeal analysis of the references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Further, this argument is not commensurate in scope with the rejection which does not rely on adding either of a film or an adhesive.
In response to applicant’s argument that the inherency rationale cannot reach claim 1 as amended because the premise of structural identity fails as to claim 1 as amended, because the seal strength and fracture behavior now recited are nowhere disclosed in any cited reference and that a lapped seam between two ends of a single heat-shrinkable blank of Kontz and a fused stack of foam sheets forming a concrete-form panel of Matsumoto are not the structure recited by claim 1 as amended, the Examiner responds that this is a piecemeal analysis of the references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The prior art combination results in a structurally identical box (container) to the inventions claimed container, made of polylactic acid foam material which is identical to the claimed material of polylactic acid-based molded bead foam, and having a heat sealed (Kontz) interface of heat-fused/heat-sealed interface (Matsumoto) which is identical to the claimed heat-sealed interface. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection and the Examiner presents evidence or reasoning to show inherency the burden or production shifts to the applicant (MPEP 2112 V). Additionally, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01). Here, the Examiner has provided evidence establishing that the prior art combinations were structurally identical to the claimed invention and as such perform identically.
In response to applicant’s argument that the adjustable adhesion strength limitation is not disclosed and that the strength of adhesion is an affirmative design choice by which the seal is tuned to the intended application and not the incidental fact that some bond has some area, the Examiner replies that invention is drawn to the product of a container and not to a method or process. The limitation of “wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion between the at least two portions” is a functional limitation. Any adhesion that exists between the at least two portions necessarily has a cross-section which provides a strength of adhesion. In the prior art, the quantity of heat-sealing at the interface between the at least two portions provides an amount of adhesion which has a cross-section that provides a strength of adhesion between the at least two portions. As such, the combinations disclose wherein a strength of adhesion between the at least two portions is configured to be adjustable based on a cross-section of adhesion, provided by the heat-sealed interface, between the at least two portions.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., selecting or varying the cross-section of the joint in order to set the force required to separate the portions) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant’s argument that the Office’s characterization that the adjustable adhesion strength limitation is functional and that any adhesion between the at least two portions necessarily has a cross-section which provides a strength of adhesion would read the limitation out of claim 1, the Examiner replies that no limitation has been ignored or read out of claim 1. The fact that a functional limitation is necessarily met by a structure does not mean that that functional limitation was not considered.
In response to applicant’s argument that there would have been no motivation to combine the references as proposed followed by acknowledging reasons stated in the Office Action, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See rejections above for supplied motivations.
In response to applicant’s argument that the reasons stated in the Office Action are disconnected from the teachings relied upon, the Examiner replies that “[T]he rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it can be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law”. MPEP 2144 I.
In response to applicant’s argument that Skinner deliberately relies on clips, straps or a shrink sleeve so that its box can be disassembled, reassembled and reused and that permanently heat-sealing Skinner’s portions to one another would frustrate that reusability, the Examiner replies that Skinner explicitly that boxes do not need to be reused (see P. 0055).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that the design choice reasoning of In re Leshin on which the Office relies for the selection of PLA does not supply the specific seal-strength and fracture relationship now recited by claim 1 as amended, the Examiner initially responds that this argument is not commensurate in scope with the rejection which does not rely on In re Leshin or design choice in any manner to meet any limitation regarding specific seal-strength and fracture relationship. Further, the Examiner notes that the rejections do not rely solely on design choice reasoning of In re Leshin for the selection of PLA, but rather rely on a teaching of polylactic acid foam material (expandable polylactic acid-based molded bead foam), when relying on Bowen, or foamed polylactic acid-based resin (expandable polylactic acid-based molded bead foam), when relying on Matsumoto, plus motivation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20210237953 is considered pertinent to containers having at least two portions made of PLA foam.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
/ALLAN D STEVENS/ Primary Examiner, Art Unit 3736
