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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “number of paper plies comprised between five and fifty” in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 6-10 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 7-10, the claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. For example, the term “box-shaped” is unclear because there is no technical definition for such a term. Furthermore, “the side wall”, “the opposite side” lacks antecedent basis. Regarding claim 10, the term “valuable” is unclear because there is no technical definition for such a term.
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.
Claim(s) 1, 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0399011 to Littlejohn et al. (Littlejohn) in view of US 2002/0050513 to Player et al. (Player) and US Patent No. 4,136,788 to Robbins.
Regarding claim 1, Littlejohn discloses a package element (102) for containing and exposing a product (intended use), having at least one seat (comprising 1110, 1112, 1120) shaped to accommodate a respective product, the package element capable of being obtained by forming a multilayer (101, Fig 1) comprising a plurality of paper plies (50) made by a wet process, the multilayer capable of being formed by pressing in a mould at a temperature as recited. Note that product by process limitations are given little patentable weight and so long as prior art has the structure as recited, then it would be capable of being made by the process as recited. Littlejohn further discloses multiple layers of paperboard laminated together (€0017) but does not explicitly teach them in direct contact and the number of layers comprise between five and fifty. Player discloses a container and in particular discloses the container made of paperboard laminated together (Fig 3) such that each paper ply (11-14) faces and is in direct contact with adjacent paper ply (11-14, Fig 3). One of ordinary skill in the art would have found it obvious to have the paperboard plies of Littlejohn in direct contact as suggested by Player in order to form multilayer of only paperboard. The modified Littlejohn does not teach the number of layers to be between 5 and 50. However, Robbins discloses multi-ply paper comprising 6 plies (Fig 5). One of ordinary skill in the art would have found it further obvious to incorporate additional plies for strengthening the layer since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 4, Littlejohn teaches the package element of claim 1 but does not teach the recited grammage of the paper plies. However, it would have been obvious to one of ordinary skill in the art change the weight of the paper to lie in the range as recited in order to optimize the weight of the package since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, Littlejohn further teaches paper plies equal to each other in features (€0017).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 10,384,827 to Mehta et al. (Mehta) in view of Littlejohn, Player and Robbins.
Regarding claim 6, Mehta discloses a package (Fig 1) comprising a package element (20) but does not teach the element of claim 1 which is disclosed by Littlejohn in view of Player and Robbins. One of ordinary skill in the art would have found it obvious to substitute the package element (20) of Mehta with a functionally equivalent packaging element as taught by Littlejohn, Player and Robbins in order to facilitate storage and transport of the packaging element.
Regarding claim 7, Mehta further discloses box-shaped body (40) having a bottom (400) and sidewall (401-404) delimiting a housing compartment (405) open on opposite side to the bottom (400), a support structure (30) made of paper and can be inserted into housing compartment of the body, the package element (20) is engaged with the supporting structure, the package adapted to contain or exhibit product (100) as recited, seat being shaped to accommodate a product as recited since it has the structure as recited.
Claim(s) 8-9, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Mehta in view of Littlejohn, Player, Robbins and US 2022/0234782 to Uyeda.
Regarding claim 8, the modified Mehta teaches the package of claim 7 but does not teach decoration mask cover as recited. However, Uyeda discloses a package (Fig 1, 8) and in particular discloses a cover (220) having openings (222) having same shape and number as seats (206). One of ordinary skill in the art would have found it obvious to incorporate openings to cover (41) of Mehta as suggested by Uyeda in order to see the product within.
Regarding claim 9, the modified Mehta teaches the package of claim 8 and further teaches area defined by shape of the opening less than area defined by shape of seats (Fig 8).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mehta in view of Littlejohn, Player, Robbins, Uyeda and US Patent No. 6,422,388 to McCahey.
Regarding claim 10, the modified Mehta teaches the package of claim 8 but does not teach cover with aesthetic decoration. McCahey discloses a decorative package (10) and in particular discloses cover (14) with exposed surface comprising aesthetic decoration (66). One of ordinary skill in the art would have found it obvious to incorporate decoration to the Mehta cover in order to provide aesthetic to container.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive. Applicant argues that prior art does not teach each paper ply facing and in direct contact with adjacent ply. However, Littlejohn discloses that each ply comprises a laminate of multiple layers and Player discloses that it was known in the art to have a laminate paper container where the layers are facing and in direct contact with each other. One of ordinary skill in the art would have found it obvious to have the lamintate of multiple layers direct and facing each other as suggested by Player in order to form multilayer laminate of only paperboard. Applicant further argues that prior art does not teach the recited range of grammage. However, it would have been obvious to one of ordinary skill in the art change the weight of the paper to lie in the range as recited in order to optimize the weight of the package since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT POON/Examiner, Art Unit 3735
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