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 as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters not mentioned in the description: 204a, 401e, 414, 416, 420a, 420b, 466c and 466d. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 48-65 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The new limitation “one or more fold lines disposed between the first layer and the second layer, wherein that the first layer overlaps with the second layer based on the one or more fold lines such that the second layer does not nest with itself or the first layer” in new claims 48 and 57 is deemed new matter. The Specification, as originally filed, does not provide support for this new limitation.
Additionally, the new limitation “wherein the second embossed pattern comprises a plurality of second protrusions, wherein the second protrusions comprise a partial spherical shape” in new claim 49, and the new limitation “wherein the second embossed pattern comprise a plurality of protrusions and the protrusions comprise at least a partial spherical shape” in new claim 59 are deemed new matter. The Specification, as originally filed, does not provide clear support for these new limitations.
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 48-65 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.
The new limitation “one or more fold lines disposed between the first layer and the second layer, wherein that the first layer overlaps with the second layer based on the one or more fold lines such that the second layer does not nest with itself or the first layer” in new claims 48 and 57 is deemed indefinite. It is not clear on the structure of the fold lines and how they are between the first layer and second layer.
Claims 49-56 and 58-65 are also rejected as being dependent on either claim 48 or claim 57 and including the indefinite aspects thereof.
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 54, 55, 58, 64 and 65 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. Claim 54 recites the limitation “a second paper substrate is disposed on a first side of the first paper substrate”, which is already recited in claim 48 from which claim 54 depends from. Claim 58 recites the limitation “a second paper substrate disposed on a first side of the first paper substrate”, which is already recited in claim 57 from which claim 58 depends from. Claim 64 recites the limitation “a second paper substrate is disposed on a first side of the first paper substrate”, which is already recited in claim 57 from which claim 64 depends from. 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
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 46 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gerard (US 3,668,055).
Gerard discloses a product (Figs. 2-3; col. 1, lines 51-58) comprising a first paper substrate forming a plurality of layers (layers N) comprising a first layer (first layer N) comprising a first embossed pattern (K) comprising a plurality of embossed lines defining a plurality of non-embossed portions of the first layer (Figs. 2-3), a second layer (second layer N) comprising a second embossed pattern (L) comprising a plurality of protrusions formed in the second layer (Figs. 2-3), wherein the first layer is disposed to overlap the second layer such that the first layer does not nest with itself or the second layer (Fig. 3; claim 1), a second paper substrate (top sheet T) disposed on a first side of the first paper substrate, and a third paper substrate (bottom sheet T) disposed on a second side of the first paper substrate opposite the first side, wherein the first paper substrate is attached to the second paper substrate at one or more points (Fig. 3; col. 4, lines 9-11).
The limitation “insulation” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “insulation” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Claim 48, 49, 50, 53-55, 57-60, 63 and 65 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greenfield (US 2017/0305101).
Regarding claim 48, Greenfield discloses a product (Figs. 5-7) comprising a first paper substrate forming a plurality of layers comprising a first layer (layer 110), a second layer (embossed medium 130) comprising a second embossed pattern (claim 5), one or more fold lines (115) disposed between the first layer and the second layer (Figs. 5, 6A-6C and 7), wherein that the first layer overlaps with the second layer based on the one or more fold lines such that the second layer does not nest with itself or the first layer (Fig. 6C), and a second paper substrate (layer 140) disposed on a first side of the first paper substrate, wherein the first paper substrate is attached to the second paper substrate at one or more points (Fig. 6A; paragraph [0034]).
The limitation “insulation” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “insulation” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 49, Greenfield discloses the second embossed pattern comprising a plurality of second protrusions, wherein the second protrusions comprise a partial spherical shape (Fig. 6A, embossed medium 130; paragraph [0032]).
Regarding claim 50, Greenfield teaches the first layer is not embossed (Fig. 6A, layer 110).
Regarding claim 53, Greenfield teaches the second paper substrate (140) covering at least a portion of the first paper substrate (Fig. 6A).
Regarding claim 54, Greenfield discloses a third paper substrate is disposed on a second side of the first paper substrate opposite the first side (Fig. 6C; paragraph [0028]).
Regarding claims 55 and 65, Greenfield discloses the third paper substrate covering at least a portion of the first paper substrate (Fig. 6C).
Regarding claim 57, Greenfield discloses a product (Figs. 5-7) comprising a first paper substrate forming a plurality of layers comprising a first layer (layer 110), a second layer (embossed medium 130) comprising a second embossed pattern (claim 5), one or more fold lines (115) disposed between the first layer and the second layer (Figs. 5, 6A-6C and 7), wherein that the first layer overlaps with the second layer based on the one or more fold lines and wherein the second layer with the second embossed pattern does not nest with itself or the first layer (Fig. 6C), and a second paper substrate (layer 140) disposed on a first side of the first paper substrate (Fig. 6A).
The limitation “insulation” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. The preamble “insulation” is merely reciting the intended use of the claimed structure and a preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See MPEP 2111.02.
Regarding claim 58, Greenfield discloses a second paper substrate (layer 140) disposed on a first side of the first paper substrate, and wherein the first paper substrate is attached to the second paper substrate at one or more points with adhesive (Fig. 6A; paragraph [0034]).
Regarding claim 59, Greenfield discloses the second embossed pattern comprising a plurality of protrusions, wherein the protrusions comprise a partial spherical shape (Fig. 6A, embossed medium 130; paragraph [0032]).
Regarding claim 60, Greenfield discloses the first layer is not embossed (Fig. 6A, layer 110).
Regarding claim 63, Greenfield teaches the second paper substrate (140) at least partially covering the first paper substrate (Fig. 6A).
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.
Claims 51, 52, 61 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Greenfield in view of Trani et al. (US 9,034,443) [hereinafter Trani].
Greenfield teaches the claimed product as shown above. However, Greenfield fails to teach the first layer having a first embossed pattern different from the second embossed pattern, wherein the first embossed pattern comprises a plurality of embossed lines defining a plurality of non-embossed portions of the first layer.
Trani teaches that it is well known in the paper packaging art to have the outer paper layer embossed with a different pattern than the core paper layer (Fig. 3), wherein the embossed pattern of the outer layer comprises a plurality of embossed lines (18) defining a plurality of non-embossed portions of the layer for the purpose of providing high rigidity to bending in all directions.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first paper layer in Greenfield to be embossed with a first embossed pattern different from the second embossed pattern, wherein the first embossed pattern comprises a plurality of embossed lines defining a plurality of non-embossed portions of the first layer, as suggested by Trani in order to provide high rigidity to bending in all directions if so desired.
Allowable Subject Matter
Claim 47 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE A SIMONE whose telephone number is (571)272-1501. The examiner can normally be reached M-F 8am-4pm.
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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.
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CATHERINE A. SIMONE
Examiner
Art Unit 1781
/Catherine A. Simone/Primary Examiner, Art Unit 1781