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 .
RESPONSE TO AMENDMENT
Claims 1-10 and 21-26 are pending in the application. Claims 11-20 have been cancelled. Claims 21-26 have been added.
Amendments to the claims 1, 2, and 5-9, filed on 17 February 2026, have been entered in the above-identified application.
Answers to Applicants' Arguments
Applicants' arguments in the response filed 17 February 2026, regarding the objections made of record, have been fully considered and are deemed persuasive. The objections have been withdrawn in view of the applicants' arguments and amendments to the claims.
Applicants' arguments in the response filed 17 February 2026, regarding the double patenting rejections made of record, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
Applicants' arguments in the response filed 17 February 2026, regarding the 35 U.S.C. §112 and §102 rejections made of record, have been fully considered and are deemed persuasive. The rejections have been withdrawn in view of the applicants' arguments and amendments to the claims.
New and Repeated Rejections
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Objections
Claim 1 is objected to because of the following informalities:
With Regards to Claim 1: Claim 1 recites --material is a comprised of-- in line 7, which appears to be a typographical error; it is recommended to correct this to read "material is [[a]] comprised of".
With Regards to Claim 1: Claim 1 recites --first direction or a second-- in line 10, which appears to be a typographical error; it is recommended to correct this to read "first direction and[[or]] a second".
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 21-23 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.
With Regards to Claim 21: Claim 21 recites --the first layer comprises one of a crepe paper, a crinkled paper, a crimped paper, or a corrugated paper-- in lines 1 to 2. Claim 1, from which claim 21 depends recites --the first layer is comprised of a first material [...] the first material is comprised of a sheet of paper-- in lines 4 to 7. As written, the claim is indefinite because it can have two conflicting interpretations: (1) that claim 21 is attempting to redefine the first layer to be one of the specified paper (i.e., would no longer be of a first material which is selectively expandable); or (2) that claim 21 intended to recite that the "sheet of paper" is one of the specified papers. For the purposes of examination, it is the decision of the examiner that the latter interpretation applies, and the claim will be treated to read as "the sheet of paper is(Appropriate correction is requested.)
With Regards to Claim 22: Claim 22 recites --at least one of the first layer or the second layer is formed of a recyclable packaging material-- in lines 1 to 2. Claim 1, from which claim 22 depends recites --the first layer is comprised of a first material [...] the first material is comprised of a sheet of paper-- in lines 4 to 7 and --the second layer is comprised of a second material-- in line 9. As written, the claim is indefinite because it can have several conflicting interpretations: (1) that claim 22 is attempting to redefine the first layer to be a recyclable packaging material (i.e., would no longer be of a first material which is selectively expandable and made of a sheet of paper); (2) that claim 22 intended to recite that the "sheet of paper" is formed of a recyclable packaging material; or (3) that claim 22 is attempting to redefine the second layer to be a recyclable packaging material (i.e., would no longer be of a second material which is selectively expandable). For the purposes of examination, any of the aforementioned interpretations will be considered to apply. (Appropriate correction is requested.)
With Regards to Claim 23: Claim 23 recites --at least one of the first layer or the third layer is formed of a recyclable packaging material-- in lines 1 to 2. Claim 1, from which claim 23 depends recites --the first layer is comprised of a first material [...] the first material is comprised of a sheet of paper-- in lines 4 to 7 and --the second layer is comprised of a second material-- in line 9. As written, the claim is indefinite because it can have several conflicting interpretations: (1) that claim 23 is attempting to redefine the first layer to be a recyclable packaging material (i.e., would no longer be of a first material which is selectively expandable and made of a sheet of paper); or (2) that claim 23 intended to recite that the "sheet of paper" is formed of a recyclable packaging material. For the purposes of examination, any of the aforementioned interpretations will be considered to apply. (Appropriate correction is requested.)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 22 and 23 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
With Regards to Claim 22: Claim 22 recites --at least one of the first layer or the second layer is formed of a recyclable packaging material-- in lines 1 to 2. Claim 1, from which claim 22 depends recites --the first layer is comprised of a first material which is selectively expandable [...] the first material is comprised of a sheet of paper-- in lines 4 to 7. As written, claim 21 is deemed to be of improper dependent form because it would no longer comprise said "first material" or said "sheet of paper" as recited in claim 1.
With Regards to Claim 23: Claim 23 recites --at least one of the first layer or the third layer is formed of a recyclable packaging material-- in lines 1 to 2. Claim 1, from which claim 22 depends recites --the first layer is comprised of a first material which is selectively expandable [...] the first material is comprised of a sheet of paper-- in lines 4 to 7. As written, claim 21 is deemed to be of improper dependent form because it would no longer comprise said "first material" or said "sheet of paper" as recited in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claims 1, 2, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoffman et al. (US 2019/0100369 A1).
Regarding Claim 1: Hoffman teaches a packaging cushion (ref. #2) including a cushion layer (ref. #4) that includes a flexible mesh (ref. #12) which includes a plurality of legs (ref. #14) extending between a plurality of nodes (ref. #16), the flexible mesh being made of paper (i.e., formed of corrugated and packaging paper, such as rigid corrugated paperboard (a.k.a., cardboard or corrugate)) as a single piece of corrugate (ref. #30), wherein the corrugate has a top mesh surface (ref. #52; which is considered equivalent to the claimed "second layer") and an opposed bottom mesh surface (ref. #54) opposite each other and connected to a third sheet that forms fluting (ref. #56) between the top mesh surface and the bottom mesh surface (figures 3 to 6, [0003], [0021], [0027]-[0032], and [0043] of Hoffman). Hoffman also teaches that the mesh moves from an initial configuration to a first expanded configuration (figures 4 to 6 and [0035] of Hoffman). (In the instant case, it is well-known that cardboard or corrugate comprises two sheet of paper interconnected by an undulating sheet of paper disposed therebetween an connected at peaks of the undulations (as seen in figure 4 of Hoffman).)
Regarding Claim 2: Hoffman teaches that the at least one attachment point between the first layer and the second layer remains intact when the first layer and the second layer are in the expanded condition (figures 4 to 6 of Hoffman).
Regarding Claim 21: Hoffman teaches that the sheet of paper is corrugated paper (figures 4 to 6, [0003], [0029], and [0032] of Hoffman).
Regarding Claim 22: Hoffman teaches that at least one of the first layer or the second layer is formed of a recyclable packaging material ([0046] of Hoffman).
Allowable Subject Matter
Claims 25 and 26 are allowed.
Claims 3-10 and 24 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:
With regards to the closest prior art of record Miller (US 4,550,046 A): Miller teaches --a packaging material--, wherein Miller's packaging material further comprises the structure --an insulating material comprising at least three layers (ref. #20, #22, and #24) disposed between cover sheets (ref. #26 and #28), wherein the layers are each made from slit and expanded sheets that form cells from the planar sheets, and wherein each adjacent and offset cellular layer may be attached to the next cellular layer at selected points of the cellular structure-- (figures 1 to 7, [Col. 6: li. 20-29], and [Col. 8: li. 52-58] of Miller). However, Miller does not teach that --the first material is comprised of a sheet of paper with a plurality of undulations initially formed therein-- {instant claim 1}, --part of the at least one attachment point between the first layer and the second layer is detached from one or both of the first layer and the second layer when the first layer and the second layer are in the expanded condition, or the at least one attachment point breaks as the first layer and the second layer move to the expanded condition, and wherein the first layer and the second layer separate from one another in a region of the broken at least one attachment point-- {instant claim 25}, or --the second layer and the third layer are free of any attachment points therebetween, and wherein the third layer floats free relative to the second layer when the first layer, the second layer, and the third layer are moved from the unexpanded condition to the expanded condition-- {instant claim 26}. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Miller with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Miller in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
With regards to the closest prior art of record Hoffman et al. (US 2019/0100369 A1): Hoffman teaches --a packaging material--, wherein Hoffman's packaging material further comprises the structure --a packaging cushion (ref. #2) including a cushion layer (ref. #4) that includes a flexible mesh (ref. #12) which includes a plurality of legs (ref. #14) extending between a plurality of nodes (ref. #16), the flexible mesh being made of paper (i.e., formed of corrugated and packaging paper, such as rigid corrugated paperboard (a.k.a., cardboard or corrugate)) as a single piece of corrugate (ref. #30), wherein the corrugate has a top mesh surface (ref. #52) and an opposed bottom mesh surface (ref. #54) opposite each other and connected to a third sheet that forms fluting (ref. #56) between the top mesh surface and the bottom mesh surface; wherein the mesh moves from an initial configuration to a first expanded configuration-- (figures 3 to 6, [0003], [0021], [0027]-[0032], [0035], and [0043] of Hoffman). However, Miller does not teach that --part of the at least one attachment point between the first layer and the second layer is detached from one or both of the first layer and the second layer when the first layer and the second layer are in the expanded condition-- {instant claim 3}, --the at least one attachment point breaks as the first layer and the second layer move to the expanded condition, and wherein the first layer and the second layer separate from one another in a region of the broken at least one attachment point-- {instant claim 4}, --a third layer which is selectively movable from the unexpanded condition to the expanded condition when the third layer is initially in the unexpanded condition and then pulled in the first direction, wherein the second layer is interposed between the first layer and the third layer-- {instant claims 6 and 26}, or --part of the at least one attachment point between the first layer and the second layer is detached from one or both of the first layer and the second layer when the first layer and the second layer are in the expanded condition, or the at least one attachment point breaks as the first layer and the second layer move to the expanded condition, and wherein the first layer and the second layer separate from one another in a region of the broken at least one attachment point-- {instant claim 25}. Therefore, the claims as written overcome the prior art of record. Furthermore, no combination of Hoffman with any other prior art of record would have provided sufficient motivation for a person having ordinary skill in the art at the time of the invention to have modified Hoffman in such a way as to meet the claimed invention. It is these teachings that makes the claim(s) allowable over the prior art of record.
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 Donald M. Flores, Jr. whose telephone number is (571) 270-1466. The examiner can normally be reached 7:30 to 17:00 M-F; Alternate Fridays off.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571) 270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DONALD M FLORES JR/
Donald M. Flores, Jr.Examiner, Art Unit 1781
Prosecution Insights