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 Interpretation
Instant claim 1 is directed to a protective packaging article wherein at least one molded foam article of said packaging comprises polylactic acid. The molded foam article comprises plurality of ridges.
Under broadest reasonable interpretation the protective package itself does not have to be a foamed package but it has to comprise at least one part which is made of foam. The ridges do not have to be part of the package but have to be part of the molded foam.
Ridges themselves are defined by applicants as protrusion extending from the molded article, which have various shapes and configuration. Consequently, ridges can be rounded or have various cross sections [0018].
With respect to the term “micronized” when referring to graphite and talc, both compounds are known as nucleating agents and to perform as a nucleating agent they have to be in either powder form or in case of graphite exfoliated form as well. Consequently, if the two components are recited as nucleating agents the limitation of being micronized is inherent.
Claim Objections
Claims 2-10 are objected to because of the following informalities: claims recite the content of inorganic components and content of polylactic acid however none of the claims indicated on what bases the content is reported. Specifically, is the content based on the total weight of the composition or based on the weight of PLA. Appropriate correction is required.
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.
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.
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kannankeril (US 2014/0117071) in view of Waggoner (US 2021/0237395).
With respect to claims 1 and 2, is directed to a cushioning assembly that is utilized in protective packaging. The innermost layer of the cushioning assembly comprises foam molded into various shapes. The shapes include protrusions or component extending radially from the center of the molded foam (see Figures 17, 18, 21).
Kannankeril is focused on construction of the protective packaging and shape of the foamed molded part not on the composition, however, Kannankeril clearly states that the cushion assembly is made from biodegradable components [0003, 0033] wherein starch is disclosed as one possible component of the foam [0006].
Waggoner discloses biodegradable composition which is foamed into a packaging peanut [0107] Figure 20. The peanuts also have various shapes and sizes.
The composition of Waggoner is biodegradable and comprises polylactic acid (Abstract) [0045].
With respect to claims 3, 4 and 7, Waggoner discloses use of talc as nucleating agent to increase the crystallization of the polylactic acid [0056]. At minimum talc is added in 0.5 % by weight.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize composition of Waggoner to form packaging peanuts of Kannankeril. Such modification would result in a packaging product of Kannankeril which has to be biodegradable. Furthermore Waggoner, clearly and explicitly states that the foam peanuts made of polylactic acid are more than suitable for use in protective packaging [0107] in various shapes as required by Kannakeril.
Claims 5, 6, 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Kannankeril (US 2014/0117071) in view of Waggoner (US 2021/0237395) as applied to claims 1-4 and 8 above, and further in view of Sampath (US 2019/0127545).
Discussion of Kannakeril and Waggoner from paragraph 1 above is incorporated here by reference.
As it was mentioned above Kannakeril discloses packaging comprising molded foamed “peanuts” which have protrusions extending outward from the center of the peanut, and wherein the packaging is biodegradable. Waggoner supplements Kannakeril with the composition utilized specifically for packaging peanuts comprised of polylactic acid.
The references as applied to claims 1-4 and 8 do not go into details with respect to the polylactic acid composition utilized to make the packaging material as their inventions are directed more to process of making and disclosures of various articles including shapes and cross sections.
Sampath on the other hand is directed to a polylactic composition which utilized to make foam.
Similarily to Kannakeril and Waggoner, Sampath discloses use of nucleating agents, with the purpose of promoting and controlling crystallization of the polylactic acid.
With respect to claims 4 and 5, Nucleating agents are utilized in amount of 0.01-5 wt.% total and can include more than one component. Preferred nucleating agents include talc and graphite. Consequently, it would have been obvious to utilize both as long as their overall content does not exceed 5 wt%. More preferred content is 0.2-1 wt% [0047-0048].
With respect to claim 6, Sampath teaches that in order to give a color to the foam a small amount of pigment can be utilized. Specifically, Sampath discloses use of iron oxide in an amount of 0.01-1 wt.% [0049].
With respect to claim 8, Sampath teaches talc utilized as nucleating agent in an amount of 0.2-1 wt.% and iron oxide in an amount of 0.1-4 wt% [0047-0049].
With respect to claims 9-11, the polylactic composition can comprise 0.2-1 wt.% of graphite and 0.2-1 wt.% of talc as long as the content of the additives does not exceed 5 wt% and combination of nucleating agents is enabled in [0047]. Wherein the amounts encompass content of graphite and talc of instant claim 10. Addition of iron oxide in amount of 0.1-10wt% further encompass additive content of instant claim 11. It should also be noted that both talc and graphite can be utilized as pigments [0049].
In the light of the above disclosure at the time instant invention was filed, one of ordinary skill in the art of making polylactic acid foamed articles, has to posses the basic knowledge such as that disclosed in Sampath. The composition of Sampath is stable with respect to storage before it is foamed and made into any article. Sampath further teaches that the biodegradability can degrade within appropriate time when mixed with, for example, compost [0083].
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12 and 13 of copending Application No. 18/955214 (‘214) Although the claims at issue are not identical, they are not patentably distinct from each other because:
With respect to claims 1 and 2, claim 1 of ‘214 discloses molded foam article formed from polylactic acid comprising at least one ridge. The ridge is a shaped protrusion.
With respect to claim 3, claim 12 of ‘214 discloses use of one or more inorganic additives.
With respect to claims 4 and 5, claim 13 of ‘214 discloses use of graphite.
With respect to instant claims 6-11, all additives are broadly encompassed by claim 12 of ‘214. The broad recitation further encompasses the content of the inorganic additives, because the content and type of additives is not limited and not excluded by claim 12 of ‘214.
Claims 1-11 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 19069675 (‘675). Although the claims at issue are not identical, they are not patentably distinct from each other because:
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
With respect to claims 1-4 and 6, claims 1-2 of ‘675 discloses a molded bead foam article open to having ridges. The composition comprises polylactic acid and inorganic additive such as iron oxide. According to claim 3 of ‘675 the content of inorganic component is 0.2-5 wt.%.
With respect to claims 4, 5 and 7, claims 4-6 of’675 disclose using talc and graphite.
With respect to claims 8-11, instant invention requires combination of the three fillers which include iron oxide, talc and graphite. Copending invention is open to using all three alone or in combination without any specific limitation of the content of each, consequently ‘675 is open to any content as long as the total amount of inorganic filler does not exceed 5 wt.%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 August 20, 2026
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