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 § 112
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.
Claim 7 is 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.
Regarding Claim 7, the claim recites the binder is PVA; however, Claim 1 already recites the binder is PVA. Therefore, Claim 7 fails to further limit Claim 1.
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 § 103
Claims 1, 5-7 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Arisumi (JP 2003-276094 A) in view of Karrer et al. (US 2015/0048554 A1) and Versino et al. (NPL)
Regarding Claim 1, Arisumi teaches a foamed biodegradable packaging material (Title; Paragraph 0028, 0051) comprising fibrous material that includes waste paper and/or pulp (Paragraph 0007), a binder of PVA (Paragraph 0006), sodium bicarbonate (Paragraph 0020), a surfactant contains polyoxyethylene alkylether(Paragraph 0017), and water-soluble softener, such as glycerin (Paragraph 0016). Arisumi teaches the softener is used to give elasticity to the resulting material. (Paragraph 0016). Arisumi teaches including alum, a discoloration inhibitor. (Paragraph 0015).
Arisumi does not specifically teach the softener is urea.
Karrer teaches a foamed biodegradable packaging material (Abstract; Paragraph 0046) comprising a pulp or wood waste product, a binder and a softening agent/plasticizer (Abstract; Paragraph 0028, 0034-0035). Karrer teaches glycerin (glycerol) and urea as equivalent for suitable softening agents for making foamed cellulose material. (Paragraph 0034). Substitution of equivalents requires no express motivation (MPEP 2144.06.II.). Thus, it would have been obvious to one with ordinary skill in the art to select urea as the softening agent in Arisumi, as Karrer teaches both urea and glycerin are suitable as softening agents that can control elasticity of resulting foamed material. Versino also notes that urea and glycerol are known plasticizers and that urea provides the advantage of lower migration than glycerol. Thus, one of ordinary skill in the art would select urea over glycerol. (Page 1855).
Regarding Claims 5-6, Arisumi teaches potassium sorbate, an antibacterial agent. (Paragraph 0019)
Regarding Claim 7, Arisumi teaches the binder contains polyvinyl alcohol. (Paragraph 0006).
Regarding Claim 21, Arisumi teaches a foam, which is considered a cushioning material. (Abstract).
Regarding Claim 22, Arisumi teaches molding the package material to any shape, which allows to be formed in accordance with a shape of a product to be packaged. (Claim 1 of Arisumi)
Regarding Claim 23, the combined references discuss a substitution of glycerol for urea, as discussed above.
Claim 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Arisumi, Karrer and Versino, in further view of Ruter (US 4,860,521 A).
Regarding Claim 10-13, Arisumi teaches the material can be used in packaging/packing. Arisumi does not specifically teach the base layer and structure layer as recited in Claims 10-13
Ruter teaches a packing material (Abstract) comprising a base layer having a sheet shape of first and second surfaces and having a thickness of 3 to 5 mm (Column 3), which overlaps the claimed thickness, and a foam structure layer having plurality of structures formed with intervals on the first surface of the base layer and having a thickness greater than the base layer (Fig 2-3; Column 3) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Ruter teaches this foam layer and base layer arrangement allows for secure holding components by structured layer (Column 3-4). Thus, it would have been obvious to one with ordinary skill in the art to form the foam packaging material of Arisumi to the claimed packaging material to allow for secure holding of components when using packaging material of Arisumi.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Arisumi, Karrer, Versino, and Ruter, in further view of DeJesus (US 2014/0290186 A1).
Regarding Claim 14, Arisumi, Karrer and Ruter do not specifically teach the package material is bonded to a base material via an adhesive layer.
DeJesus teaches using adhesive to glue textured foam inserts down to a base material, such as packaging box (Abstract; Paragraph 0029; Fig. 3) DeJesus teaches this allows the foam inserts to be securely applied (Paragraph 0029). Thus, it would have been obvious to one with ordinary skill in the art to apply the foam material of Arisumi, Karrer and Ruter to allow the packaging material be securely applied to a base material via adhesive as taught by DeJesus to yield a packaging material with better protection through well adhered foam inserts.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Arisumi, Karrer, Versino, Ruter, and DeJesus, in further view of Pierce (US 2021/0292974 A1)
Regarding Claim 20, Arisumi teaches a foam, which is considered a cushioning material. (Abstract). Ruter teaches the packaging material laminated to the base material and foam can form a composite cushioning material. (Calims 1-5 of Ruter). Ruter and DeJesus do not specifically teach the base material is pulp mold.
Pierce teaches a packaging material of two layer of cellulose, where the base layer can pulp mold (Abstract). Pierce teaches using pulp mold allows for improved biodegradability. (Paragraph 0009). Thus, it would have been obvious to one with ordinary skill in the art to use a biodegrable solid material in the packaging of Arisumi, Karrer, Versino, Ruter and DeJesus to achieve biodegrability which is desired by Arisumi. (Abstract)
Response to Arguments
Applicant’s arguments have been fully considered.
Applicant argues that unexpected results of urea over glycerol, due to the decrease in migration. However, Versino teaches reduced migration of urea over glycerol. Therefore, one of ordinary skill in the art would expect a reduction of migration when substituting urea for glycerol.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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/Michael Zhang/Primary Examiner, Art Unit 1781
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