DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-14 in the reply filed on 8/27/2025 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 1 recites “pellets disposed within the panel box are compressed at a pressure ranging from about 3 pounds per square inch to about 4 pounds per square inch”, and Claim 2 recites “wherein the plurality of biodegradable pellets disposed within the panel box are compressed at a pressure of about 3.5 pounds per square inch”, however the Specification as originally filed only supports compression of the pellets at a pressure of “more than about 3.5 pounds per square inch”, which is specifically more than half of the claimed range of claim 1, and more than that which is claimed in claim 2, and therefore lacks support for compression “at a pressure of about 3.5 pounds per square inch” (note claims 10 and 11 further include such unsupported limitations).
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5-6, and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US PG Pub No. 2012/0279896 (Lantz hereinafter), in view of US Patent No. 5,441,170 (Bane III hereinafter).
In re claim 1, with reference to Figs. 11, 20, and 21, Lantz discloses: An insulated panel for a shipping container, the insulated panel comprising:(a) a panel box (226) comprising cardboard (paragraph 0065);(b) a plurality of biodegradable pellets disposed within the panel box (in pillow 232, see paragraph 0064-65); and (c), wherein the plurality of biodegradable pellets disposed within the panel box are compressed (“so that the insulating pillow 232 with portions 232A, 232B, received between these side wall portions is maintained in mild compression on the insulating pellets within that pillow”, paragraph 0065).
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Lantz fails to disclose wherein the plurality of biodegradable pellets disposed within the panel box are compressed at a pressure ranging from about 3 pounds per square inch to about 4 pounds per square inch.
However, would have been obvious to one having ordinary skill in the art at the time the invention was made to have designated the “mild compression” of Lantz to have had a range of 3 to 4 psi, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, paragraph 0038 applicant has not disclosed any criticality for the claimed limitations.
Lantz fails to disclose a film disposed around the panel box.
However, Bane III discloses insulated side panels which are sheathed in a heat shrunk film of a heat shrinkable thermoplastic insulating film (see claim 6 of Bane III).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have incorporated a heat shrink film to envelop the panel of Lantz as taught by Bane III for the purposes of facilitating reuse/cleaning of the panel (Bane III, column 3, lines 45-60, and column 4, lines 64-67).
In re claim 2, with reference to the Figs. noted above, Lantz in view of Bane III disclose the claimed invention except wherein the plurality of biodegradable pellets disposed within the panel box are compressed at a pressure of about 3.5 pounds per square inch.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have assigned the “mild compression” of the pellets of Lantz an approximate value, 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). Please note that in the instant application, paragraph 0038, applicant has not disclosed any criticality for the claimed limitations (Applicant’s paragraph 0038: “Alternatively, the pellets 32 can be compressed to any known thickness to achieve desired thermal insulation properties”).
In re claim 3, with reference to the Figs. noted above, Lantz in view of Bane III disclose a lining disposed within the panel box, wherein the plurality of biodegradable pellets are disposed within the lining (lining shown at 232 housing pellets 234, as well as lining/casing 24 housing pellets 22, paragraph 0038).
In re claim 5, with reference to the Figs. noted above, Lantz in view of Bane III disclose the plurality of biodegradable pellets are formed of plant-based materials (paragraph 0038: “the insulating pellets 22 are formed of foamed or "puffed" vegetable starch”).
In re claim 6, with reference to the Figs. noted above, Lantz in view of Bane III disclose the plurality of biodegradable pellets are generally cylindrical (see Fig. 21 above, paragraph 0052), the biodegradable pellets each having a diameter.
Lantz in view of Bane III fail to disclose the diameter ranging from about 0.5 inches to about 1.0 inches, and having a height ranging from about 1.0 inches to about 2.0 inches.
However it would have been obvious to one of ordinary skill in the art at the time of the invention to have slightly enlarged the cylindrical vegetable-based pellets of Lantz in view of Bane III, since it has been held that the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV, A).
In re claim 8, with reference to the Figs. noted above, Lantz in view of Bane III disclose the film comprises a shrink wrap (envelope 80, see Bane III claim 6, as in re claim 1 above).
Lantz in view of Bane III fails to disclose wherein the shrink wrap is biodegradable.
However, Lantz discloses desire for degradability of polyethylene sheeting (paragraph 0038), and a desire for the container to be biodegradable (Abstract).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have formed the film of a biodegradable shrink wrap, 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. MPEP 2144.07. Please note that in the instant application, paragraph 0035), applicant has not disclosed any criticality for the claimed limitations.
In re claim 9, with reference to the Figs. noted above, Lantz in view of Bane III disclose the biodegradable shrink wrap is heated to form a fluidic seal around an outer periphery of the insulated panel (see Bane III claim 6).
In re claim 10, with reference to the Figs. noted above, Lantz in view of Bane III disclose A method of making an insulated panel for a shipping container, the method comprising: placing a plurality of biodegradable pellets within a panel box; compressing the plurality of biodegradable pellets with a pressure ranging from about 3 pounds per square inch to about 4 pounds per square inch such that the panel box and the plurality of biodegradable pellets are compressed (as in re claim 1 above) to an initial thickness that is less than a desired final thickness of the insulated panel (Lantz, paragraph 0051-52, note that the pellets have at least degree of elasticity, and upon removal of compression would be expected to increase thickness to a thickness greater than the initial/compressed thickness); releasing the pressure from compressing the plurality of biodegradable pellets (paragraph 0075, i.e. when the pressure applied to the panel to compress the pellets is released, the pellets are held in compression by the panel and not by the pressure applied to the panel to create the compression); and placing a film around the panel box (as in re claim 1 above).
In re claim 11, with reference to the Figs. noted above, Lantz in view of Bane III disclose the pressure is about 3.5 pounds per square inch (as in re claim 2 above).
In re claim 12, with reference to the Figs. noted above, Lantz in view of Bane III disclose the claimed invention including wherein the panel box and the plurality of biodegradable pellets are compressed to the initial thickness (as in re claim 10 above), wherein the initial thickness is about half of the desired final thickness.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the desired initial/final thickness, as Lantz teaches adjustment of the thickness/density of the insulation to modify the R-value of the insulation (paragraph 0076), 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). Please note that in the instant application, paragraph 0038, applicant has not disclosed any criticality for the claimed limitations.
In re claim 13, with reference to the Figs. noted above, Lantz in view of Bane III disclose the claimed invention including using at least one mold while compressing the plurality of biodegradable pellets (folded panels of panel box 226 acts as mold for compressing pellets, paragraph 0068). Note that the claim does not specify what the purpose of the mold is or how it is being used in the step of compressing.
Claim(s) 4, 7, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lantz in view of Bane III as applied to claims 4, 5, and 10 above, and further in view of US Patent No. 10,357,936 (Vincent et al. hereinafter).
In re claim 4, with reference to the Figs. noted above, Lantz in view of Bane III disclose the claimed invention except wherein the lining comprises an upper layer of kraft paper and a lower layer of kraft paper, and wherein the plurality of biodegradable pellets is disposed between the upper layer of kraft paper and the lower layer of kraft paper.
However, Vincent et al. discloses a lining of an insulation includes a top and bottom layer (20/30) of kraft paper lining a particulate foamed insulation material (40).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to utilized a known insulating lining material such as kraft paper for the lining of Lantz in view of Bane III, 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. MPEP 2144.07. Please note that in the instant application, paragraph 0030, applicant has not disclosed any criticality for the claimed limitations.
In re claim 7, with reference to the Figs. noted above, Lantz in view of Bane III disclose the claimed invention except wherein the plurality of biodegradable pellets compressed in the panel box have a density ranging from about 1.5 pounds per cubic foot to about 4.0 pounds per cubic foot.
However, Vincent et al. teaches insulation utilizing foamed particulate materials having a density of about 2 pounds per cubic foot, and may vary in density across multiple foamed particulate layers (column 9, lines 3-26).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modified the density of the particulate/pellets towards a desirable range for achieving particular insulation performance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, paragraph 0034 applicant has not disclosed any criticality for the claimed limitations.
In re claim 14, with reference to the Figs. noted above, Lantz in view of Bane III disclose the claimed invention except wherein placing at least one sheet of kraft paper within the panel box prior to compressing the plurality of biodegradable pellets.
However, Vincent et al. discloses a lining of an insulation includes a top and bottom layer (20/30) of kraft paper lining a particulate foamed insulation material (40).
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to utilized a known insulating lining material such as kraft paper for the lining of Lantz in view of Bane III, 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. MPEP 2144.07. Please note that in the instant application, paragraph 0030, applicant has not disclosed any criticality for the claimed limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW T KIRSCH whose telephone number is (571)270-5723. The examiner can normally be reached Mon-Fri, 9a-5p EST.
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/ANDREW T KIRSCH/Primary Examiner, Art Unit 3733