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.
Claims 4 and 17 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.
Regarding claim 4, at line 3, "the continuous sheet of paper" lacks antecedent basis.
Regarding claim 17, at line 2, the recitation of "the continuous sheet" lacks antecedent basis. Also, at line 3, the recitation of "a first layer of paper" renders antecedent basis unclear in view of the recitation of "a first layer of paper" at line 4 of claim 16.
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 1-3 and 5-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cik, US 2012/0006471 (hereafter Cik), made of record by Applicant, in view of Kiessner, US 2022/0266567 (hereafter Kiessner).
Regarding claim 1, the preamble recites a "method of forming a packaging product." The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts of each case. MPEP 2111.02. In this instance, the preamble statement does not limit any structure recited in the body of the claim, but rather recites a purpose or intended use. See MPEP 2111.02. I and II. Because the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02.II. Also, in order to advance prosecution, in this case, Cik teaches a method of forming a corrugated material (para [0002]). In para [0003], Cik discusses how corrugated materials are extremely useful for making finished materials, such as boxes, i.e., packaging products, spacers and structural elements. Although Cik is primarily directed to applications other than packaging, such as the making of furniture elements (para [0102]), the discussion in para [0003] provides one of ordinary skill in the art with the teaching that the methods of Cik may also be applicable to packaging applications.
With reference to Figs. 1 and 3, a method of Cik includes making a corrugated product 16 by feeding a middle substrate 22 of a medium to be corrugated, i.e., a sheet, into a first set of drive rollers 42 at a velocity V3 wherein a feed guide 20 directs the middle substrate 22 into a space, S1 between an upper substrate 32, i.e., a first layer, and a lower substrate 34, i.e., a second layer, driven at respective velocities V1 and V2. The middle substrate 22 bends, i.e., forms a wave pattern comprising upper and lower curves, as the substrate 22 contacts the upper and lower substrates 32, 34 (Figs. 1, paras [0070]-[0071]).
The attaching of the upper substrate 21, i.e., first layer and the lower substrate 34, i.e., the second layer to apexes of the upper and lower curves of the middle substrate 22, i.e., sheet, as they are formed is illustrated in Fig. 1, Cik explaining that when the substrates 22, 32 and 34 are meltable, heaters 48 heat the surfaces such that as the middle substrate 22 contacts either of the upper or lower substrates, the middle substrate 22 is fixed or bonded in place such that a corrugated sandwich is formed as it passes through the form guides 30 that support the upper and lower substrates (para [0017]). As illustrated in Figs. 1-3, sides of the upper curves and lower curves near the upper and lower apexes of the substrate 22 remain unattached to one another. As another example of this, see, e.g., Fig. 12 that shows the substrate 22 having curved portions that are not attached to the outer substrates 32 and 34, but are also not attached to each other.
In an embodiment of Cik illustrated in Fig. 3, the heaters 48 are replaced by an ultrasonic welder discussed at para [0079], the middle substrate 22 being bonded to the upper and lower substrates 32 and 34 as the upper and lower curves are formed wherein the welder can be embedded in form guide 30 (para [0079]), thus providing an activation energy to not only the middle substrate, but also the upper and lower substrates as the upper and lower curves are formed.
Cik teaches that its device can be used with any substrate (para [0007]) and that its media for the middle, first and second substrates (i.e., sheet and first and second layers) may be made from paper (para [0083]). With reference to Fig. 2, Cik teaches an embodiment that includes applying an adhesive 52 to an apex of each flute, i.e., upper and lower curve, of the middle substrate 22, at a location upstream of where the middle substrate 22 comes into contact with the upper and lower substrates 32 and 34 (para [0078]), thus teaching a method that would apparently work with paper substrates However, in such method, the attaching of the middle substrate to the upper and lower substrates is performed immediately after the upper and lower curves are formed, not "as they are formed" as required by the claim. Cik is silent as to how the embodiments illustrated in Figs. 1 and 3 that use heat or an ultrasonic welder at the location of the upper and lower curves "as they are formed" may be used with paper media.
Kiessner teaches systems and methods for forming corrugated boards, in particular a system and method that uses an ultrasonic unit (i.e., ultrasonic welder), that performs functions including activating, heating and/or drying adhesive used to attach a fluted layer of a board and outer liners (Abstract). Kiessner also teaches ultrasonic vibrations cause the paper fibers of the fluted layer and the outer liners to weave/intertwine, or otherwise stick together to achieve the bonding (para [0004]). According to an embodiment of Kiessner, at a glue station 160, glue may be applied to an outer liner 108 that is pressed together with a fluted single face board 100 (see Fig. 1A illustrating a single face board as described at para [0014] for use in shipping and packaging industries), followed by passing through an ultrasonic device 170 that activates the glue and may include heating the glue (Figs. 2A and 2B; paras [0023]-[0026]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention, that when paper media is used for the substrates of Cik, a predictable and suitable modification of the method of Cik would be to apply glue on the upper and lower substrates at a location upstream of the ultrasonic welder of Cik (element 54 in the embodiment depicted in Fig. 3 of Cik), as taught by Kiessner, so that the ultrasonic welder activates/heats the adhesive on the upper and lower substrates such that the substrates are attached to the middle substrate as the upper and lower curves of the middle substrate are formed. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007). Furthermore, when using the method of Cik as described with respect to Fig. 3 for use with paper upper and lower substrates that have been coated with glue, such modification would be advantageous in view of the Kiessner teaching that the use of an ultrasonic welder results in the paper fibers of the fluted layer and the outer layers to weave/intertwine to achieve the bonding.
Regarding claim 2, see the discussion at the rejection of claim 1 above that the middle substrate of Cik, i.e., the sheet, is driven at a velocity V3 while the substrate 32, i.e., a first layer, and a lower substrate 34, i.e., a second layer, are driven at respective velocities V1 and V2. The middle substrate is fed into the space S1 that is understood as a defined space because it is limited by a form guide 30 for guiding the upper and lower substrates (Figs. 1 and 3; paras [0070]-[0071]). Cik teaches the velocity V3 of the middle substrate 22 (i.e., the sheet first rate recited in claim 2) is greater than the velocities of the upper and lower substrates 32, 34 (para [0071]) (i.e., the second rate recited in claim 2), thus teaching the recitation that the first layer of paper and the second layer of paper "are fed at a second rate that is slower than the first rate" (see also Cik at para [0008]).
Regarding the recitation of "attaching the first layer and the second layer to the sheet of paper comprises heating the first layer and the second layer to activate an adhesive coated on surfaces of the first layer and the second layer facing the sheet of paper without attaching the sides of the at least some of the upper curves to one another," see the rejection of claim 1 above, Cik in view of Kiessner teaching these limitations.
Regarding claim 3, see Fig. 3 of Cik illustrating no attachment between adjacent curves of the middle substrate 22, thus teaching the recitation of "wherein attaching the first layer and the second layer to the sheet of paper is conducted without attaching at least some of the lower curves to one another."
Regarding claims 5-8, Cik teaches that the stiffness and resilience of the corrugated product made according to Cik can be modified depending on a desired use. For example, varying the ratio of velocity V3 (of the middle substrate) to V1 and V2 (of the outer substrates) allows for greater or lesser periodicity with respect to the flutes of the corrugated substrate. Thus, if the ratio of V3 to V1 and V2 is very high, there will be an increased number of flutes per lineal foot of the corrugated product and a stiffer product. However, if the ratio is low, there will be a decreased number of flutes per linear foot of the corrugated product (para [0089]). Therefore, such ratios are understood to be a result effective variable and it would have been obvious to one having ordinary skill in the art at the time of filing the claims of the invention to perform the method of Cik/Kiessner at any of the ratios recited in claims 5-8, depending on a desired stiffness for a desired use, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 9, with reference to the embodiments of Figs. 1 and 3 of Cik, as discussed in the rejection of claim 2, the form guide 30 for guiding the upper and lower substrates 32,34 provides a defined space, such form guide 30 is illustrated as upper and lower plates, i.e., upper and lower restraints in Figs. 1 and 3 (paras [0070]-[0071]). Cik also teaches that the form guide 30 illustrated in Fig. 1 may be replaced by form rollers 66, Cik teaching that such rollers provide for easier adjustment of the apparatus (Fig. 5 and para [0094]). Cik teaches that varying the space between the substrates allows for further optimization of the corrugated product wherein of the space between upper and lower substrates is large, the flutes will be large and the corrugated product will have greater elasticity and less stiffness. Conversely, if the space is small the corrugated product will be more stiff and have less elasticity (para [0090]). In view of these teachings, Cik is understood to teach that the restraints in the form of the opposing plates of the guide 30 or pair of rollers 66 are taught by Cik as adjustable restraints.
Regarding claim 10, the preamble recites a "method of forming a packaging product." The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts of each case. MPEP 2111.02. In this instance, the preamble statement does not limit any structure recited in the body of the claim, but rather recites a purpose or intended use. See MPEP 2111.02. I and II. Because the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02.II. Also, in order to advance prosecution, in this case, Cik teaches a method of forming a corrugated material (para [0002]). In para [0003], Cik discusses how corrugated materials are extremely useful for making finished materials, such as boxes, i.e., packaging products, spacers and structural elements. Although Cik is primarily directed to applications other than packaging, such as the making of furniture elements (para [0102]), the discussion in para [0003] provides one of ordinary skill in the art with the teaching that the methods of Cik may also be applicable to packaging applications.
With reference to Figs. 1 and 3, a method of Cik includes making a corrugated product 16 by feeding a middle substrate 22 of a medium to be corrugated, i.e., a sheet, into a first set of drive rollers 42 at a velocity V3 wherein a feed guide 20 directs the middle substrate 22 into a space, S1 between an upper substrate 32, i.e., a first layer, (and a lower substrate 34, i.e., a second layer), the upper substrate driven at a velocity V1 (with the lower substrate 34 driven at a velocity V2). The middle substrate 22 bends, i.e., forms an undulating shape comprising upper (and lower) curves, as it contacts the upper (and lower) substrates 32, 34 (Figs. 1, paras [0070]-[0071]).
The attaching of the upper substrate 21, i.e., first layer (and the lower substrate 34, i.e., the second layer) to apexes of the upper (and lower) curves of the middle substrate 22, i.e., sheet, as they are formed is illustrated in Fig. 1, Cik explaining that when the substrates 22, 32 and 34 are meltable, heaters 48 heat the surfaces such that as the middle substrate 22 contacts either of the upper or lower substrates, the middle substrate 22 is fixed or bonded in place such that a corrugated sandwich is formed as it passes through the form guides 30 that support the upper and lower substrates (para [0017]). As illustrated in Figs. 1-3, sides of the upper curves and lower curves near the upper and lower apexes of the substrate 22 remain unattached to one another. As another example of this, see, e.g., Fig. 12 that clearly shows the substrate 22 having curved portions that are not attached to the outer substrates 32 and 34, but are also not attached to each other.
In an embodiment of Cik illustrated in Fig. 3, the heaters 48 are replaced by an ultrasonic welder discussed at para [0079], the middle substrate 22 being bonded to the upper and lower substrates 32 and 34 as the upper and lower curves are formed wherein the welder can be embedded in form guide 30 (para [0079]), thus providing an activation energy to not only the middle substrate, but also the upper and lower substrates as the upper and lower curves are formed.
Cik teaches that its device can be used with any substrate (para [0007]) and that its media for the middle, first and second substrates (i.e., sheet and first and second layers) may be made from paper (para [0083]). With reference to Fig. 2, Cik teaches an embodiment that includes applying an adhesive 52 to an apex of each flute, i.e., upper and lower curve, of the middle substrate 22, at a location upstream of where the middle substrate 22 comes into contact with the upper and lower substrates 32 and 34 (para [0078]), thus teaching a method that would apparently work with paper substrates. However, in such method, the attaching of the middle substrate to the upper and lower substrates is performed immediately after the upper and lower curves are formed, not "as the upper curves are formed" as required by the claim. Cik is silent as to how the embodiments illustrated in Figs. 1 and 3 that use heat or an ultrasonic welding at the location of the upper and lower curves "as they are formed" may be used with paper media.
Kiessner teaches systems and methods for forming corrugated boards, in particular a system and method that uses an ultrasonic unit (i.e., ultrasonic welder), that performs functions including activating, heating and/or drying adhesive used to attach a fluted layer of a board and outer liners (Abstract). Kiessner also teaches ultrasonic vibrations cause the paper fibers of the fluted layer and the outer liners to weave/intertwine, or otherwise stick together to achieve the bonding (para [0004]). According to an embodiment of Kiessner, at a glue station 160, glue may be applied to an outer liner 108 that is pressed together with a fluted single face board 100 (see Fig. 1A illustrating a single face board as described at para [0014] for use in shipping and packaging industries), followed by passing through an ultrasonic device 170 that activates the glue and may include heating the glue (Figs. 2A and 2B; paras [0023]-[0026]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention, that when paper media is used for the substrates of Cik, a predictable and suitable modification of the method of Cik would be to apply glue on the upper and lower substrates at a location upstream of the ultrasonic welder of Cik (element 54 in the embodiment depicted in Fig. 3 of Cik), as taught by Kiessner, so that the ultrasonic welder activates/heats the adhesive on the upper and lower substrates such that the substrates are attached to the middle substrate as the upper and lower curves of the middle substrate are formed. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007). Furthermore, when using the method of Cik as described with respect to Fig. 3 for use with paper upper and lower substrates that have been coated with glue, such modification would be advantageous in view of the Kiessner teaching that the use of an ultrasonic welder results in the paper fibers of the fluted layer and the outer layers to weave/intertwine to achieve the bonding.
Regarding claim 11, as to the recitation of "attaching a second layer of paper to at least some of lower curves of the undulating shape as the lower curves are formed and sides of at least some of the upper curves remain unattached with respect to one another," please see the rejection of claim 10 discussing Cik and how both upper and lower curves of the undulating shape are formed with sides of the curves remaining unattached with respect to one another.
Regarding the recitation of "wherein forming the sheet of paper into an undulating shape comprises feeding the sheet of paper at a first rate between the first layer of paper and a second layer of paper that are fed at a second rate that is slower than the first rate," see the discussion at the rejection of claim 10 above that the middle substrate of Cik, i.e., the sheet, is driven at a velocity V3 while the substrate 32, i.e., a first layer, and a lower substrate 34, i.e., a second layer, are driven at respective velocities V1 and V2. The middle substrate is fed into the space S1 that is understood as a defined space because it is limited by a form guide 30 for guiding the upper and lower substrates (Figs. 1 and 3; paras [0070]-[0071]). Cik teaches the velocity V3 of the middle substrate 22 (i.e., the sheet first rate recited in claim 2) is greater than the velocities of the upper and lower substrates 32, 34 (para [0071]) (i.e., the second rate recited in claim 2), thus teaching the recitation that the first layer of paper and the second layer of paper "are fed at a second rate that is slower than the first rate" (see also Cik at para [0008]).
Regarding the recitation of "attaching the first layer and the second layer to the sheet of paper comprises heating the first layer to activate an adhesive coated on surfaces of the first layer and the second layer facing the sheet of paper," see the rejection of claim 10 above, Cik in view of Kiessner teaching these limitations.
Regarding claims 12-15, Cik teaches that the stiffness and resilience of the corrugated product made according to Cik can be modified depending on a desired use. For example, varying the ratio of velocity V3 (of the middle substrate) to V1 and V2 (of the outer substrates) allows for greater or lesser periodicity with respect to the flutes of the corrugated substrate. Thus, if the ratio of V3 to V1 and V2 is very high, there will be an increased number of flutes per lineal foot of the corrugated product and a stiffer product. However, if the ratio is low, there will be a decreased number of flutes per linear foot of the corrugated product (para [0089]). Therefore, such ratios are understood to be a result effective variable and it would have been obvious to one having ordinary skill in the art at the time of filing the claims of the invention to perform the method of Cik/Kiessner at any of the ratios recited in claims 5-8, depending on a desired stiffness for a desired use, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 16, the preamble recites a "method of forming a packaging product." The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts of each case. MPEP 2111.02. In this instance, the preamble statement does not limit any structure recited in the body of the claim, but rather recites a purpose or intended use. See MPEP 2111.02. I and II. Because the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, the preamble is not considered a limitation and is of no significance to claim construction. MPEP 2111.02.II. Also, in order to advance prosecution, in this case, Cik teaches a method of forming a corrugated material (para [0002]). In para [0003], Cik discusses how corrugated materials are extremely useful for making finished materials, such as boxes, i.e., packaging products, spacers and structural elements. Although Cik is primarily directed to applications other than packaging, such as the making of furniture elements (para [0102]), the discussion in para [0003] provides one of ordinary skill in the art with the teaching that the methods of Cik may also be applicable to packaging applications.
With reference to Figs. 1 and 3, a method of Cik includes making a corrugated product 16 by feeding a middle substrate 22 of a medium to be corrugated, i.e., a sheet, into a first set of drive rollers 42 at a velocity V3 wherein a feed guide 20 directs the middle substrate 22 into a space, S1 between an upper substrate 32, i.e., a first layer, and a lower substrate 34, i.e., a second layer, driven at respective velocities V1 and V2. The middle substrate 22 bends, i.e., forms a wave pattern comprising upper curves with upper apexes and lower curves with lower apexes, as the substrate 22 contacts the upper and lower substrates 32, 34 (Figs. 1, paras [0070]-[0071]).
The attaching of the upper substrate 21, i.e., first layer and the lower substrate 34, i.e., the second layer to apexes of the upper and lower curves of the middle substrate 22, i.e., sheet (as they are formed) is illustrated in Fig. 1, Cik explaining that when the substrates 22, 32 and 34 are meltable, heaters 48 heat the surfaces such that as the middle substrate 22 contacts either of the upper or lower substrates, the middle substrate 22 is fixed or bonded in place such that a corrugated sandwich is formed as it passes through the form guides 30 that support the upper and lower substrates (para [0017]). As illustrated in Figs. 1-3, sides of the upper curves and lower curves near the upper and lower apexes of the substrate 22 remain unattached to one another. As an example of this, see, e.g., Fig. 12 that shows the substrate 22 having curved portions that are not attached to the outer substrates 32 and 34, but are also not attached to each other.
In an embodiment of Cik illustrated in Fig. 3, the heaters 48 are replaced by an ultrasonic welder discussed at para [0079], the middle substrate 22 being bonded to the upper and lower substrates 32 and 34 as the upper and lower curves are formed wherein the welder can be embedded in form guide 30 (para [0079]), thus providing an activation energy to not only the middle substrate, but also the upper and lower substrates as the upper and lower curves are formed.
Cik teaches that its device can be used with any substrate (para [0007]) and that its media for the middle, first and second substrates (i.e., sheet and first and second layers) may be made from paper (para [0083]). With reference to Fig. 2, Cik teaches an embodiment that includes applying an adhesive 52 to an apex of each flute, i.e., upper and lower curve, of the middle substrate 22, at a location upstream of where the middle substrate 22 comes into contact with the upper and lower substrates 32 and 34 (para [0078]), thus teaching a method that would apparently work with paper substrates and therefore teaches the limitations of claim 16. However, because Cik does not explicitly disclose that the method of Fig. 2 is for paper media, Kiessner is also being applied against the claim. Cik is also silent as to how the embodiments illustrated in Figs. 1 and 3 that use heat or an ultrasonic welder at the location of the upper and lower curves as they are formed might be used with paper media.
Kiessner teaches systems and methods for forming corrugated boards, in particular a system and method that uses an ultrasonic unit (i.e., ultrasonic welder), that performs functions including activating, heating and/or drying adhesive used to attach a fluted layer of a board and outer liners (Abstract). Kiessner also teaches ultrasonic vibrations cause the paper fibers of the fluted layer and the outer liners to weave/intertwine, or otherwise stick together to achieve the bonding (para [0004]). According to an embodiment of Kiessner, at a glue station 160, glue may be applied to an outer liner 108 that is pressed together with a fluted single face board 100 (see Fig. 1A illustrating a single face board as described at para [0014] for use in shipping and packaging industries), followed by passing through an ultrasonic device 170 that activates the glue and may include heating the glue (Figs. 2A and 2B; paras [0023]-[0026]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention, that when paper media is used for the substrates of Cik, a predictable and suitable modification of the method of Cik would be to apply glue on the upper and lower substrates at a location upstream of the ultrasonic welder of Cik (element 54 in the embodiment depicted in Fig. 3 of Cik), as taught by Kiessner, so that the ultrasonic welder activates/heats the adhesive on the upper and lower substrates such that the substrates are attached to the middle substrate as the upper and lower curves of the middle substrate are formed. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007). Furthermore, when using the method of Cik as described with respect to Fig. 3 for use with paper upper and lower substrates that have been coated with glue, such modification would be advantageous in view of the Kiessner teaching that the use of an ultrasonic welder results in the paper fibers of the fluted layer and the outer layers to weave/intertwine to achieve the bonding.
Regarding claim 17, see the discussion at the rejection of claim 16 above that the middle substrate of Cik, i.e., the sheet, is driven at a velocity V3 while the substrate 32, i.e., a first layer, and a lower substrate 34, i.e., a second layer, are driven at respective velocities V1 and V2. The middle substrate is fed into the space S1 that is understood as a defined space because it is limited by a form guide 30 for guiding the upper and lower substrates (Figs. 1 and 3; paras [0070]-[0071]). Cik teaches the velocity V3 of the middle substrate 22 (i.e., the sheet first rate recited in claim 2) is greater than the velocities of the upper and lower substrates 32, 34 (para [0071]) (i.e., the second rate recited in claim 2), thus teaching the recitation that the first layer of paper "is fed at a second rate that is slower than the first rate" (see also Cik at para [0008]).
Regarding the recitation of "attaching the first layer to the sheet of paper comprises heating the first layer and the second layer to activate an adhesive coated on surface of the first layer facing the sheet of paper," see the rejection of claim 16 above discussing how Cik in view of Kiessner teaches this limitation.
Regarding claim 18, please see the rejection of claim 16 above and how Cik in view of Kiessner teaches that the first and second layers of paper are attached to upper and lower apexes as the upper and lower curves are formed.
Regarding claims 19-20, Cik teaches that the stiffness and resilience of the corrugated product made according to Cik can be modified depending on a desired use. For example, varying the ratio of velocity V3 (of the middle substrate) to V1 and V2 (of the outer substrates) allows for greater or lesser periodicity with respect to the flutes of the corrugated substrate. Thus, if the ratio of V3 to V1 and V2 is very high, there will be an increased number of flutes per lineal foot of the corrugated product and a stiffer product. However, if the ratio is low, there will be a decreased number of flutes per linear foot of the corrugated product (para [0089]). Therefore, such ratios are understood to be a result effective variable and it would have been obvious to one having ordinary skill in the art at the time of filing the claims of the invention to perform the method of Cik/Kiessner at any of the ratios recited in claims 5-8, depending on a desired stiffness for a desired use, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and upon the filing of a terminal disclaimer (see the double patenting rejection below).
The following is a statement of reasons for the indication of allowable subject matter:
Neither Cik nor Kiessner, either alone or in combination, teach or suggest the limitation in claim 4 of "wherein at least one axis, perpendicular to a feed direction and a width of the packaging product, passes through the sheet of paper at least three times after the first layer and the second layer are attached to the continuous sheet of paper." The other prior art of record does not provide this deficiency.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 4-20 of U.S. Patent No.11,852,264 (hereafter the reference patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between claims 1-20 of the application and claims 1-2 and 4-20 of the reference patent lies in the fact that independent claims of the reference patent are more specific than claims the independent claims of the application. Thus, the invention of the reference patent is in effect a “species” of the “generic” invention of the current application claims. In other words, the entire scope of the reference patent claims fall within the scope of the application claims. MPEP 804.II.B.1; see also MPEP 806.04(i). Therefore, a patent to the generic invention of the application would improperly extend the right to exclude granted by the parent patent to the species.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746