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 .
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.
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.
Claims 1, 2, 4-7, 9-11 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wade (International Patent Publication No. WO 2015/009518 A1, cited in IDS submitted August 7, 2025) in view of either of Isshiki et al. (U.S. Patent Application Publication No. 2005/0163944 A1) or Michael-Sapia et al. (International Patent Publication No. WO 2021/150540 A1).
Regarding claim 1, Wade discloses a method of thermoforming a film to a substrate (Abstract of Wade, method for manufacturing sealable container comprising laminating a film material to a container blank; [0051] of Wade, shaping operation may include a thermoforming mold) comprising: positioning a substrate within a substrate holder (FIG. 8 of Wade, container structure #134 placed in vacuum mold #152), the substrate defining a substrate surface (FIG. 8 of Wade, container structure #134 has an upper surface); positioning a film relative to the substrate, the film also being positioned relative to a heating element (FIG. 8 of Wade, film material #150 positioned between container structure #134 and heater #156), the film and the substrate forming a film-substrate cavity between the film and the substrate, the film defining a film surface (FIG. 8, [0055] of Wade, film material #150 applied to container structure #134; applying film material to container structure would necessarily form a cavity therebetween); generating heat with the heating element such that the heat from the heating element increases the temperature of the film, wherein the heat from the heating element increases the temperature of the film to a forming temperature range (FIGS. 8-9, [0055] of Wade, film material #150 heated to render the film pliable and formed to container structure #134 under vacuum); and applying a suction force to the film, the suction force being applied through the substrate and the substrate holder (FIGS. 8-9, [0054] of Wade, container structure #134 positioned in vacuum mold #152 coupled to vacuum source which draws air through container structure #134), the suction force manipulating the film such that the film contacts at least a portion of the substrate surface while the film remains within the forming temperature range, the suction force manipulating the film such that the portion of the film conforms to at least a portion of the substrate surface (FIGS. 8-9, [0054] of Wade, film material #150 drawn against internal side #48 of container structure #134 by vacuum source #154).
Wade does not specifically disclose the film comprising a biodegradable and/or paper recyclable polymer. Wade, however, discloses that the film material may provide a desired functionality such as a moisture barrier layer ([0037] of Wade). Isshiki discloses a biodegradable film having a moisture barrier layer which can be shaped into a container by vacuum forming (Abstract, [0026] of Isshiki). According to Isshiki, the biodegradable film can be used to make packaging containers which can be broken down by bacteria and return to soil ([0002] of Isshiki). Michael-Sapia similarly discloses a biodegradable film that can be formed into films (Abstract of Michael-Sapia)and used to manufacture packaging materials ([0002] of Michael-Sapia). According to Michael-Sapia, the resulting products have adequate performance properties for their intended use and are compostable and/or biodegradable ([0003] of Michael-Sapia). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use the biodegradable film of Isshiki of Michael-Sapia as the film material in the method of Wade. One of skill in the art would have been motivated to do so in order to manufacture packaging containers which are compostable and/or biodegradable as taught by Isshiki and Michael-Sapia ([0002] of Isshiki; [0003] of Michael-Sapia).
Regarding claim 2, Wade discloses that the substrate and/or substrate holder is permeable to air ([0054] of Wade, air drawn through container structure #134; claim only requires that one of the recited elements is permeable to air).
Regarding claim 4, Wade discloses that the substrate is perforated, wherein a bottom wall and one or more side walls of the substrate are perforated ([0047] of Wade, container blank may be perforated to facilitate fluid flow through the substrate during vacuum lamination).
Regarding claim 5, Wade discloses that the film-substrate cavity comprises air, wherein the step of applying a suction force to the film further comprises a withdrawal of air from the film-substrate cavity (FIGS. 8-9, [0054] of Wade, air drawn through container structure by vacuum source to drawn film material #150 against container structure #134; air would necessarily be present between film material and container structure prior to drawing the film material against the container structure), the withdrawal of air from the film-substrate cavity resulting in the portion of the film surface moving closer to the portion of the substrate surface until the portion of the film surface contacts the portion of the substrate surface (FIGS. 8-9, [0054] of Wade, film material #150 drawn against container structure #134 by vacuum source).
Regarding claim 6, Wade disclose that the step of applying a suction force to the film further comprises bonding of the portion of the film surface to the portion of the substrate surface, an interior surface of the substrate comprising the portion of the substrate surface, the interior surface of the substrate defining a substrate cavity ([0055] of Wade, film material applied to and adheres to container structure).
Regarding claim 7, Wade discloses the step of applying a suction force to the film further comprises maintaining the film at the forming temperature range (FIGS. 8-9, [0055] of Wade, film material heated while being applied to container structure to render the film pliable such that the film takes the shape of the container structure).
Regarding claims 9 and 10, Michael-Sapia discloses that the forming temperature range of the film is from about 150 °C to about 220 °C as recited in claim 9 or that the forming temperature range of the film is from about 160 °C to about 200 °C as recited in claim 10 ([0267] of Michael-Sapia, film stretched at temperatures of 165 and 185 °C to mimic thermoforming conditions).
Regarding claim 11, Michael-Sapia discloses that the suction force applied to the film is from about -0.1 bar to about -2 bar (vacuum forming at 25 in Hg (i.e., -0.85 bar).
Regarding claim 13, Isshiki does not specifically disclose that the film has a thickness of from about 5 microns to about 100 microns. Isshiki, however, discloses films having a thickness of 20 – 1000 µm ([0047] of Isshiki). Isshiki therefore clearly teaches a film thickness range (i.e., 20 – 1000 µm) that overlaps with that recited in claim 13 (i.e., 5 – 100 µm) which would render the claimed thickness range obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (See MPEP 2144.05(I)).
Regarding claim 14, Wade discloses that the substrate has a three-dimensional shape (FIG. 8 of Wade, container structure #134 has a 3-D shape).
Regarding claim 15, Michael-Sapia discloses that the biodegradable and/or paper recyclable polymer comprises a cellulose ester polymer, wherein the cellulose ester polymer comprises a cellulose acetate, the cellulose acetate comprising primarily cellulose diacetate ([0015] of Michael-Sapia).
Regarding claim 16, Michael-Sapia discloses that the contains a plasticizer in an amount from about 5% by weight to about 45% by weight ([0005] of Michael-Sapia) but does not specifically disclose that the film contains the cellulose ester polymer in an amount from about 55% to about 95% by weight. Michael-Sapia, however, discloses that the film comprises the cellulose acetate in addition to 0-50 wt% of a biodegradable polymer based on the total combined weight of biodegradable polymer and cellulose acetate and 10-25 wt% plasticizer based on the total weight of the composition ([0005] of Michael-Sapia) which encompasses compositions comprising from about 37.5 to 90 wt% cellulose acetate. Michael-Sapia therefore clearly teaches cellulose ester polymer ranges (i.e., 37.5-90 wt%) that overlap with that recited in claim 16 (i.e., 55-95 wt%) which would render the claimed range obvious to one of ordinary skill in the art. Moreover, the courts have held that where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (See MPEP 2144.05(I)).
Regarding claim 17, Wade discloses that an adhesive composition is applied to the film surface before the step of generating heat with the heating element ([0035] of Wade, sealing layer positioned between functional layer #56 and substrate).
Regarding claim 18, Wade discloses that the adhesive composition comprises an acrylic-based polymer ([0036] of Wade, sealing layer may comprise EMA or EMAA copolymers which are acrylic-based polymers).
Regarding claim 19, Isshiki discloses that the film is water resistant (Abstract of Isshiki, biodegradable film has a moisture barrier layer).
Regarding claim 20, Wade discloses that the substrate comprises a biodegradable and/or paper recyclable fibrous material ([0031] of Wade, substrate layer may be made from uncoated paper material which would necessarily be both biodegradable and paper recyclable).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wade in view of Isshiki as applied to claim 1 above and further in view of Mack (U.S. Patent Application Publication No. 2022/0009669 A1, cited in IDS submitted August 7, 2025).
Regarding claim 3, Wade does not specifically disclose that the heat from the heating element is radiant heat, wherein the step of applying a suction force to the film further comprises maintaining the generation of radiant heat. Mack, however, discloses a method of producing a packaging material by vacuum forming a barrier film against a paperboard shell (Abstract, [0011]-[0012] of Mack). According to Mack, the barrier film can be heated using radiation ([0020] of Mack). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use radiant heat to heat the film in the modified method since Mack establishes that it was known to use radiant heat in forming packaging using vacuum lamination methods. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Wade in view of Isshiki as applied to claim 1 above and further in view of Nonomura et al. (U.S. Patent Application Publication No. 2004/0013830 A1).
Regarding claim 3, Wade does not specifically disclose that the the heating element is spaced from the film at a distance of about 10 mm to about 200 mm. Nonomura, however, discloses a method of making a container comprising vacuum laminating a film to a paperboard layer wherein a vacuum forming machine having a heater to resin film distance of 110 mm is used (Abstract, [0496] of Nonomura). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use a vacuum forming machine having a heater to resin film distance of 110 mm in the modified method since Nonomura establishes that it was known to use machines having such a spacing to form vacuum laminated containers (Abstract, [0496] of Nonomura). Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Wade in view of Isshiki or Michael-Sapia as applied to claim 1 above and further in view of Narayan et al. (U.S. Patent Application Publication No. 2009/0160095 A1).
Regarding claim 12, Wade does not specifically disclose that the suction force is applied to the film for a period of from about 1 second to about 20 seconds. Narayan, however, discloses a thermoforming process for biodegradable films wherein the film is thermoformed under a vacuum, for 20 seconds (Abstract, [0085] of Narayan). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to apply the suction force to the film in the modified method for 20 seconds since Narayan establishes that it was known to do so in thermoforming processes. Moreover, as set forth in the MPEP, the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art (MPEP § 2143 I A). The prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. In addition, one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately. One of ordinary skill in the art also would have recognized that the results of the combination were predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746