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 .
Examiner Note
The claim amendment dated 23 July 2025 fails to comply with 37 C.F.R. 1.121(c) as incorrect status identifiers are used. At least claim 5 is not currently amended, but previously presented. For the purposes of compact prosecution the submission will be entered and considered, however this courtesy will not be extended again.
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 1-9 and 12 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 limitation of claim 1 that “said main wall is unapertured except for said pattern formed by said plurality of cuts” fails to comply with the written description requirement. At least figures 1-3 and 7-11 include additional apertures other than the pattern formed by the plurality of cuts. Further, unapertured cannot be found anywhere in the original specification. The original specification does not have any literal support for the exclusion of apertures other than the cuts forming the patter. The figures cannot be relied upon for original disclosure of a negative limitation as the mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i).
The limitation of claim 1 that “said crepe paper is adhered to said pattern formed by said plurality of cuts” fails to comply with the written description requirement. The original specification does not provide that adhesive is located on the pattern formed by the plurality of cuts. As best can be understood from figure 2, the adhesive surrounds the cuts as can be seen by the two rectangles located below the crepe paper sheet.
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 1-9 and 12 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.
Claim 1 recites the limitation "said crepe paper" in line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is led to be indefinite as it is unclear if said crepe paper of line 8 is a newly recited structure or refers back to crepe paper sheet. In light of the original disclosure and in order to apply art the limitation will be interpreted as the latter.
The limitation of claim 2 that “said main wall and side wall are of cardboard, corrugated cardboard” is led to be indefinite. It is unclear if claim 2 is reciting cardboard and corrugated cardboard in the alternative or if the claim corrugated cardboard further defines cardboard. In light of the original disclosure and in order to apply art the limitation will be interpreted as the former.
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) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mueller (US 20030213719) further in view of romwell (DE 202019105255).
Claim 10: Mueller discloses a suspension packaging structure 16 (layered material) comprising a suspension frame 24 (basic layer) of cardboard material having a face, at least a portion of which is covered by a film 20 adhered in correspondence of a pattern formed by a plurality of cuts (see annotated fig. 2 below and P. 0012).
Mueller does not disclose at least a portion of the face of the basic layer being covered by an adhering crepe paper sheet in correspondence of a pattern formed by a plurality of cuts.
Romwell teaches that known packaging elements were formed of a corrugated board and an elastic film, preferably of polyurethane or polyethylene, and further teaches a packaging element 10 having a foldable carrier blank 12 connected with a fixing section 15 of elastic paper being in the form of a crepe paper (adhering crepe paper sheet) having a stretching behavior which leads to improved elasticity compared to uncreped papers, where the natural elasticity of the paper is reinforced by the wrinkles, wherein a packaged good 11 is fixed to the carrier blank 12 by the fixing section 15 (see fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have replaced the material of the film 20 of Muller with crepe paper (adhering crepe paper sheet), as taught by Romwell, in order to reduce costs and lower the environmental impact due to enhanced recyclability.
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Claim 11: The combination discloses crepe paper (crepe paper sheet). The limitation that the crepe paper sheet is produced by a process in which a paper web is compressed while the paper web is still moist or re-moistened is a product-by-process limitation.
“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted).
Response to Arguments
The drawing objections in paragraph 2 of office action dated 25 April 2025 are withdrawn in light of the amended disclosure filed 23 July 2025.
The specification objections in paragraphs 3-4 of office action dated 25 April 2025 are withdrawn in light of the amended disclosure filed 23 July 2025.
The 35 U.S.C. § 112 rejections in paragraphs 5-8 of office action dated 25 April 2025 are withdrawn in light of the amended claims filed 23 July 2025.
In response to applicant’s argument that the combination of Mueller with Romwell fails to disclose or suggest the main wall of the suspension frame being “unapertured except for said pattern formed by said plurality of cuts” as claimed, the Examiner replies that the sum of the cuts present on the main wall of the combination are present in some pattern, such that the main wall of the combination is unapertured except for said pattern formed by said plurality of cuts.
Applicant’s arguments, that the prior art combinations do not disclose a crepe paper adhered to the main wall of the frame, filed 23 July 2025, with respect to claim 1 have been fully considered and are persuasive. The rejection of claims 1-9 and 12 has been withdrawn.
In response to applicant’s argument that claims 2-12 ultimately depend from independent claim 1, the Examiner replies that claim 10 is an independent claim and claim 11 depend from claim 10. Claims 10-11 do not depend from claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO9310010, US 3266706, US 20110024324, JP H11334778, and JP 2004307063 are considered pertinent to cuts in the pattern of a circular crown and series of curvilinear cuts parallel to each other.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLAN D STEVENS whose telephone number is (571)270-7798. The examiner can normally be reached Monday-Friday 12-8 ET.
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/ALLAN D STEVENS/Primary Examiner, Art Unit 3736