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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/13/2026 has been entered.
Election/Restrictions
Newly submitted claim 19 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 19 directed to non-elected embodiment because it recites in part at least two intersecting fold lines which is a feature not present in the elected embodiment of Species II, Figs 8-9.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 19 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1, 3, 13-18, 20 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. Regarding claim 1, 13, there is no support for barrier coating substantially free of metallic foil layers, configured to disperse during paper pulping process such that fiber recovery is maintained and thus it constitutes new matter. Regarding claim 14, there is no support for barrier coating comprising polymer or aqueous coating, regarding claim 16, no support for barrier coating configured to break apart into dispersible particles during pulping, regarding claim 17, no support for writable region uncoated or treated to receive ink or pencil markings without smearing, regarding claim 18, no support for lid configured to be sold empty, regarding claim 20, no support for the lid free of laminated metal layers and thus they constitute new matter.
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, 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0238997 to Sarnoff et al. (Sarnoff) in view of US Patent No. 3,037,677 to Debs and US 2023/0312202 to Mueller et al. (Mueller).
Regarding claim 1, 3, Sarnoff discloses a packaged pan and lid (Fig 8) comprising a pan (100) having a well (102) with a bottom surface (104) and single continuous wall surface (106) extending upwardly from the bottom surface (104), a rim (108) extending outwardly from an upper edge of the wall surface and a lip (110) extending upwardly from a terminus of the rim, a recyclable lid (130) having at least one bi-lateral fold line (132) across the lid such that the lid is configurable into a folded configuration (Fig 11), the lid (130) being configured into the folded configuration (Fig 11) and being removably secured within the well (102) of the pan (100) (Fig 9) such that the lid (130) is removable from the well (102) and unfolded to substantially flat configuration (Fig 14), wherein the lip (110) is configured to bend over the edge of the lid (130) when the lid is unfolded to a substantially flat configuration (Fig 14) and positioned such that the perimeter of the lid is positioned on the rim (Fig 14), wherein the lid (130) is made out a recyclable cardboard material (€0008) and includes a first surface being coated with a barrier substrate (aluminum, €0008) defined to provide a water, oil and grease barrier and wherein a second surface which is opposed to the first surface maintains a cardboard finish (€0034, €0038). Sarnoff does not teach the cardboard finish configured with an area of indicia printable on the surface. However, Debs discloses a food package (Fig 1) and in particular discloses a lid (20) configured with area of indicia (22) printable on the surface. One of ordinary skill in the art would have found it obvious to incorporate area of indicia to the top surface of the Sarnoff lid as suggested by Debs in order to identify content material and advertisement (Debs, col. 2, ll. 8-10). In particular, the area of indicia includes a writable region configured to receive handwritten markings applied therto by a consumer after purchase since it has the structure as recited. Sarnoff does not teach the barrier being repulpable and substantially free of metal and also the recited percentage of barrier substrate in relation to lid. However, Mueller discloses packaging with a pan and lid (Fig 2) and in particular discloses lid (13) comprising a repulpable barrier substrate (3-5) substantially free of metallic foil layer and configured to disperse during a pulping process such that fiber recovery is maintained since it has the structure as recited, the barrier substrate represents 10%/5% or less of the total mass of the lid (the lid having a base paper weight of up to 120 g/msup2, the barrier of 1 g/msup2 each). One of ordinary skill in the art would have found it obvious to substitute the material of the barrier of Sarnoff with a functionally equivalent repulpable barrier material in the range as recited as suggested by Mueller in order to facilitate packaging of food 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).
Claim(s) 13-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sarnoff in view of Mueller.
Regarding claim 13, Sarnoff discloses a package pan and lid (Fig 8) comprising a pan (100) having a well (102) with a bottom surface (104), a continuous wall (106) extending upwardly from the bottom surface (104), a rim (108) extending outwardly from the wall (106), a bendable lip (110) extending upwardly from the rim (108), a lid (130) configured to be folded along at least one fold line (132) into a folded configuration (Fig 11) sized to fit within the well of the pan and to be unfolded into a substantially flat configuration (Fig 14) positioned on the rim (108) of the pan, wherein the lid (130) is formed of a paper-based substrate (€0008) and includes a barrier coating (aluminum, €0008) applied to a first surface of the lid, a second surface opposite the first surface (€0034, €0038) defining a writable region configured to receive handwritten markings from a user after purchase of the packaged pan and lid since it has the structure as recited and bendable lip (110) configured to fold over an outer edge of the lid when the lid is in unfolded configuration to secure the lid to the pan. Sarnoff does not teach the barrier coating as recited. Mueller discloses packaging with a pan and lid (Fig 2) and in particular discloses lid (13) comprising a repulpable barrier substrate (3-5) substantially free of metallic foil layer and configured to disperse during a pulping process such that fiber recovery is maintained since it has the structure as recited, the barrier substrate represents 10%/5% or less of the total mass of the lid (the lid having a base paper weight of up to 120 g/msup2, the barrier of 1 g/msup2 each). One of ordinary skill in the art would have found it obvious to substitute the material of the barrier of Sarnoff with a functionally equivalent repulpable barrier material in the range as recited as suggested by Mueller in order to facilitate packaging of food since it has been held that simple substitution of one known element for another to obtain predictable results would have been obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982).
Regarding claim 14, the modified Sarnoff further teaches barrier coating comprising polymer base coating (Mueller, abstract).
Regarding claim 15, the modified Sarnoff further teaches barrier coating (3-5, Mueller) representing 5 percent of less of total mass of lid (the lid having a base paper weight of up to 120 g/msup2, the barrier of 1 g/msup2 each).
Regarding claim 16, the modified Sarnoff further teaches barrier coating (3-5, Mueller) configured to break apart into dispersible particles during pulping since it has the structure as recited.
Regarding claim 17, Sarnoff further teaches writable region uncoated since Sarnoff is silent regarding any coating on the cardboard.
Regarding claim 18, Sarnoff further discloses the lid capable of being sold empty for use by a consumer to store food since it has the structure as recited.
Regarding claim 20, the modified Sarnoff further teaches the lid free of laminated metal layers since Mueller discloses barrier materials that are not metal.
Response to Arguments
Applicant's arguments filed 4/13/2026 have been fully considered but they are not persuasive. Initially, it is noted that applicant does not argue the rejection of the dependent claims. Applicant argues that prior art does not teach a repulpable barrier layer or recyclability in a fiber recovery context. Assuming applicant has support for the claimed subject matter, applicant’s arguments are not persuasive because Mueller discloses barrier layers made of polymer/wax blends that are repulpable (for example, €0049, €0041-0042), and thus would be recyclable in a paper pulping process depending on the process.
In response to applicant's argument that Mueller optimizes barrier layers for entirely different purpose than the claimed invention, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Sarnoff discloses a barrier layer on a lid, the barrier layer made of metal. Mueller discloses a barrier layer on a lid, the barrier layer made of polymer/wax blends. One of ordinary skill in the art would have found it obvious to substitute one barrier layer with another barrier layer of different material since both perform the same function.
In response to applicant's argument that Mueller does not teach changing aluminum barrier layer to repulpable barrier layer to achieve repulpability, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that prior art does not teach a writable region configured to receive handwritten marking applied after purchase, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, any region on a cardboard can be written on since it is made of paper and any tool can be used that is specifically designed to leave markings on the cardboard.
Conclusion
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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