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 .
Election/Restrictions
In response to amended claims 7-11 which now all depend from claim 1, it is noted that the restriction requirement between inventions I to III, as set forth in the Office action mailed on 08/06/2025, is hereby withdrawn and claims 7-11 are hereby rejoined and fully examined.
Claim Objections
Claims 7-9 are objected to because of the following informalities:
In reference to claim 7, in each of lines 7, 8, 12, 13 and 22 after “the” and before “film”, insert “single sheet of”, in order to ensure consistency in the claim language. Appropriate correction is required.
In reference to claim 8, in each of lines 3, 4, 8 and 9 after “the” and before “film”, insert “single sheet of”, in order to ensure consistency in the claim language. Appropriate correction is required.
In reference to claim 9, it is suggested to (1) in line 8 after “each” and before “across” insert “other” and (2) in each of lines 9, 10, 11, 16 and 17 after “the” and before “film”, insert “single sheet of”, in order to ensure consistency in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 8 is 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.
In reference to claim 8, the claim has been amended to depend from claim 7 and recite “the single sheet film further comprises”, it is unclear if the spacer is meant to include the slits or the slits are in the single sheet of film before the single sheet film is formed into the spacer. For the purpose of compact prosecution, the limitations will be interpreted to be present prior to forming the spacer. It is suggested to in line 2 after “film” and before “further” insert “before being formed into the spacer”, in order to provide clarity.
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.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Prud’homme et al. (US 2017/0210083) (Prud’homme) in view of Corrigan et al. (WO 2021/130616) (Corrigan).
In reference to claims 1 and 4, Prud’homme teaches a flexible packaging material ([0002]) (corresponding to an article). The packaging material includes a geometrically pattern structure core portion and two face members or liners sandwiching opposing sides of the core portion ([0009]; [0026]) (corresponding to a first substrate; a second substrate; a spacer between the first substrate and the second substrate).
Prud’homme does not explicitly teach the core portion comprises a plurality of beams connecting adjacent walls in the plurality of walls, as presently claimed.
Corrigan teaches a cushioning film for packaging applications ([0001]; [0013]). FIGS. 8G and 8H, provided below, shows a sheet material including a plurality of walls 830 and a plurality of beams 820 ([00114]-[00123]) (corresponding to a spacer; the spacer comprising a plurality of walls spaced apart from each other and a plurality of beams connecting adjacent walls in the plurality of walls). FIGS. 8G and 8H show there are open regions 822 between beams 820 (corresponding to openings between the plurality of beams extending through the spacer). The film is made from a sheet including a pattern of cuts or slits that form beams and openings in the sheet ([0007]; [0114-0115]) (corresponding to the plurality of walls and the plurality of beams originate from a single sheet of film).
FIGS. 8G and 8H further show the plurality of walls include first, second and third wall portions, the first and second wall portion are not parallel each other and have top and bottom opposing edges that define a height of the wall (corresponding to each respective wall in the plurality of walls comprises multiple first, second, and third wall portions, wherein the first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the wall). FIGS. 8G and 8H further show the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the each wall of the plurality of walls, given that the third wall does not extend the height of the wall region (corresponding to the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the wall).
FIGS. 8G and 8H further shows the first, second and third wall portions each have a thickness that is the smallest dimension of the wall portion (corresponding to the first, second, and third wall portions each have a thickness that is the smallest dimension of the wall portion). Corrigan further teaches the wall thickness is between about 0.001 inch and about 5 inch ([00141]). FIGS. 8G and 8H shows the thickness of the walls are uniform from the top edge to the bottom edge for the first and second wall portions (corresponding to at a given plane intersecting one of the first wall portions or one of the second wall portions and perpendicular to the to edge and the bottom edge, a thickness of the top edge is plus or minus ten percent of a thickness at the bottom edge). FIGS. 8G and 8H show the third wall portion is connected with at least some beams 820 (corresponding to the third wall portions are connected with at least some of the plurality of beams connecting the adjacent walls).
FIGS. 8G and 8H further shows the wall has a fourth wall portion, the fourth wall portion having bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall and connected with beams (corresponding to each respective wall in the plurality of walls further comprises fourth wall portions, wherein the fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall, and wherein the fourth wall portions are connected with others of the plurality of beams connecting the adjacent walls).
Corrigan expressly teaches the tension activated sheets of material provide increased or enhanced protection for things like packages being shipped or mailed ([0013]; [00109]; [00150]).
In light of the motivation of Corrigan, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the core portion of Prud’homme be the tension activated cushioning material, in order to provide increase or enhanced protection to the flexible packaging material, and thereby arriving at the presently claimed invention.
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Given that the beams extend parallel to the top edge and bottom edge of the core portion of Prud’homme in view of Corrigan, it is clear the beams will be positioned parallel to the face members or liners of the packaging material (corresponding to one or more beams of the plurality of beams being positioned parallel to one or both of the first substrate or the second substrate).
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In reference to claim 2, Prud’homme in view of Corrigan teaches the limitations of claim 1, as discussed above. Prud’homme further teaches the face members include several superposed paper plies comprising cellulosic fibers such as wood fibers and resins or polymers ([0036]-[0037]; [0054]) (corresponding to at least one of the first substrate or the second substrate comprise a panel comprising at least one of wood or a polymer composite).
In reference to claim 3, Prud’homme in view of Corrigan teaches the limitations of claim 1, as discussed above. Prud’homme further teaches the flexible packaging material is rollable onto itself in a spiral shape (Prud’homme, [0013]). Thus, it is clear the face members are curved when the packaging is rolled (corresponding to at least one of the first substrate or the second substrate is curved).
In reference to claim 5, Prud’homme in view of Corrigan teaches the limitations of claim 4, as discussed above. FIG. 8G, provided below, shows adjacent walls including a first wall and a second wall have at least some of the beams connected to the third wall portions of the first and second walls, and the others of the plurality of beams are connected to the fourth wall portions of the first wall and a third wall opposite the second wall (corresponding to the adjacent walls
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comprise first and second walls, and wherein the at least some of the plurality of beams connect to the third wall portions of the first and second walls, and wherein the others of the plurality of beams connect to the fourth wall portions of the first wall and a third wall, opposite the second wall).
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In reference to claim 6, Prud’homme in view of Corrigan teaches the limitations of claim 1, as discussed above. FIG. 7B-D, provided below, show the sheet material includes beams comprising ribbons having an undulated shape (corresponding to the plurality of beams further comprises a ribbon having an undulating shape). It would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the core portion include undulated beams, in order to allow the core portion to withstand exposure to greater loads applied in the normal axis relative to other multi-slit pattered structures without being crushed (Corrigan, [00109]).
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In reference to claim 7, Prud’homme in view of Corrigan teaches the limitations of claim 1, as discussed above. Prud’homme in view of Corrigan further teaches the cushioning film is formed from a tension-activated sheet including a slit pattern (Corrigan, [0013]; [0014]) (corresponding to the single sheet of film from which the plurality of walls and the plurality of beams originate). The sheet defines a plane having an axial direction and a transverse direction; a first plurality of slits through the sheet, wherein the first plurality of slits form a first row extending across the sheet in the transverse direction, and wherein each slit in the first plurality of slits extends from a first terminal end to a second terminal end; and a second plurality of slits through the sheet, wherein the second plurality of slits form a second row extending across the sheet in the transverse direction, wherein each slit in the second plurality of slits extends between terminal ends, wherein a first terminal end segment defining the first terminal end of each slit in the first plurality of slits intersects a first imaginary line connecting the terminal ends of a first slit in the second plurality of slits (Corrigan, claim 1). FIG. 8A shows a rectangular region with a first axis in the axial direction and a second axis in the transverse direction, where the rectangular region does not encompass the first terminal end or second terminal end of any of the first plurality of slits or the terminal ends of any of the second plurality of slits.
Prud’homme in view of Corrigan further teaches an adhesive to laminate the face members to the core portion, wherein the adhesive remains on the surface of the core (Prud’homme, [0055]). Therefore, it would have been obvious to one of ordinary skill in the art to include an adhesive on the spacer of Prud’homme in view of Corrigan including on the rectangular regions.
Further, it is noted that claim 7 defined the product by how the product was made (i.e., a slit pattern in the sheet before being expanded into the spacer). Thus, claim 7 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having the structure defined in claim 1 where an adhesive is on the beams (i.e., rectangular region). The references suggests such a product.
In reference to claim 8, Prud’homme in view of Corrigan teaches the limitations of claim 7, as discussed above. Prud’homme in view of Corrigan further teaches the sheet further comprising a third plurality of slits through the sheet, wherein the third plurality of slits form a third row extending across the sheet in the transverse direction, and wherein each slit in the third plurality of slits extends from a first terminal end to a second terminal end; and a fourth plurality of slits through the sheet, wherein the fourth plurality of slits form a fourth row extending across the sheet in the transverse direction, wherein each slit in the fourth plurality of slits extends between terminal ends, wherein a first terminal end segment defining the first terminal end of each slit in the third plurality of slits intersects a first imaginary line connecting the terminal ends of a first slit in the fourth plurality of slits (Corrigan, claim 17). FIG. 8A of Corrigan further shows the third plurality of slits and the fourth plurality of slits form a mirror image of the first plurality of slits and the second plurality of slits, wherein the rectangular region is a ribbon region extending across the film in the transverse direction between the second plurality of slits and the third plurality of slits, wherein the rectangular region does not encompass the first terminal end or the second terminal end of any of the third plurality of slits or the terminal ends of any of the second plurality of slits.
In reference to claims 9 and 10, Prud’homme in view of Corrigan teaches the limitations of claim 1, as discussed above.
Although Prud’homme in view of Corrigan does not explicitly teach the single sheet of film comprising, before being formed into the spacer, raised structure as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Prud’homme in view of Corrigan meets the requirements of the claimed product, Prud’homme in view of Corrigan clearly meets the requirements of the present claim.
In reference to claim 11, Prud’homme in view of Corrigan teaches the limitations of claim 9, as discussed above. Prud’homme in view of Corrigan further the sheet material includes at least one of plastic, polyester, acrylic, polysulfone, thermoset, thermoplastic, biodegradable polymers, a woven material, a non-woven material, and combinations thereof (Corrigan, claim 26) (corresponding to the single sheet of film comprises at least one of a polymer, a metal, or multiple polymer layers).
Claims 1-2, 4-6 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Corrigan et al. (WO 2021/130612) (Corrigan‘612) in view of Cheich et al. (WO 2021/183570) (Cheich).
In reference to claims 1-2 and 4-5, Corrigan‘612 teaches a tension-activated expanding article used as cushioning films and/or packaging materials ([0001]) (corresponding to an article comprising a paper spacer). FIGS. 17B and 17D, provided below, show the tension activated material 1700 includes a plurality of walls spaced apart from each other and a plurality of beams axial 1720 ([00215]) (corresponding to the spacer comprising a plurality of walls spaced apart from each other and a plurality of beams connecting adjacent walls of the plurality of walls). The axial beams are connected to undulating beams 1730a (FIGS. 17B and 17D) (corresponding to the plurality of beams further comprises a ribbon having an undulating shape).
The single-slit pattern that forms the expanded material is formed in a single sheet ([00210]) (corresponding to the plurality of walls and the plurality of beams originate from a single sheet of film).
FIGS. 17B and 17D show each respective wall of the plurality of walls comprises multiple first, second, third and fourth wall portions, wherein the first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions (corresponding to each respective wall of the plurality of walls comprises multiple first, second, and third wall portions, wherein he first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions; each respective wall of the plurality of walls further comprises fourth wall portions). FIGS. 17B and 17D further show the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the each wall of the plurality of walls, given that the third wall does not extend the height of the wall region. The fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall, given that the fourth wall does not extend the height of the wall region (corresponding to
the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the wall; the fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall).
FIGS. 17B and 17D show that the third and fourth walls are connected to the axial beams (corresponding to the third wall portions are connected with at least some of the plurality of beams connecting the adjacent walls; the fourth wall portions are connected with others of the plurality of beams connecting the adjacent walls of the plurality of walls; the adjacent walls comprises first and second walls, and wherein the at least some of the plurality of beams connect to the third wall portions of the first and second walls, and wherein the others of the plurality of beams connects the fourth wall portions of the first wall and a third wall, opposite the second wall, or the at least some of the plurality of beams connect to the third wall portions of the first wall and to the fourth wall portions of the second wall, wherein the others of the plurality of beams connect to the fourth wall portions of the first wall and to the third wall portions of a third wall).
FIGS. 17B and 17D further shows the first, second and third wall portions each have a thickness that is the smallest dimension of the wall portion (corresponding to the first, second, and third wall portions each have a thickness that is the smallest dimension of the wall portion). FIGS. 17B and 17D shows the thickness of the walls are uniform from the top edge to the bottom edge for the first and second wall portions (corresponding to at a given plane intersecting one of the first wall portions or one of the second wall portions and perpendicular to the to edge and the bottom edge, a thickness of the top edge is plus or minus ten percent of a thickness at the bottom edge).
Corrigan‘612 does not explicitly teach the tension activated material is between a first substrate and a second substrate, as presently claimed. However, Corrigan‘612 teaches the tension activated material is an energy absorbing structure is used to protect objects for shipping or storage ([00275-00276]).
Cheich teaches a dunnage pad including a partially expanded slit-sheet material fixed between a top cover and a bottom cover (p.2, lines 6-8; p. 7, lines 7-9) (corresponding to a first substrate; a second substrate; and a spacer between the first substrate and the second substrate). The top cover and the bottom cover may be any suitable sheet material such as paper, plastic sheets, metal foil or any combination thereof (p. 13, lines 3-7) (corresponding to at least one of the first substrate or the second substrate comprises metal or a polymer composite).
In light of the disclosure of Cheich, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the tension activated material of Corrigan‘612 be placed between a top cover and a bottom cover, in order to provide a pad for protecting objects for shipping, and thereby arriving at the presently claimed
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invention.
In reference to claims 9-10, Corrigan‘612 in view of Cheich teaches the limitations of claim 1, as discussed above. Although Corrigan‘612 in view of Cheich does not explicitly teach the single sheet of film comprising, before being formed into the spacer, raised structure as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Corrigan‘612 in view of Cheich meets the requirements of the claimed product, Corrigan‘612 in view of Cheich clearly meets the requirements of the present claim.
In reference to claim 11, Corrigan‘612 in view of Cheich teaches the limitations of claim 9, as discussed above. Corrigan‘612 further teaches the material includes at least one of plastic, polyester, acrylic, polysulfone, thermoset, thermoplastic, biodegradable polymers and combinations thereof ([0020]) (corresponding to the single sheet of film comprises at least one of a polymer, a metal, or multiple polymer layers).
Claims 1-2, 4-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Corrigan et al. (WO 2021/130613) (Corrigan‘613) in view of Cheich.
In reference to claim 1-2 and 4-5, Corrigan‘613 teaches a tension-activated expanding article used as cushioning films and/or packaging materials ([0001]) (corresponding to an article comprising a paper spacer). FIG. 4E, provided below, shows the tension activated material includes a plurality of walls 330 spaced apart from each other and a plurality of non-rotating beams 320 ([0068-0069]) (corresponding to the spacer comprising a plurality of walls spaced apart from each other and a plurality of beams connecting adjacent walls of the plurality of walls). The single-slit pattern that forms the expanded material is formed in a single sheet ([00210]) (corresponding to the plurality of walls and the plurality of beams originate from a single sheet of film).
FIG. 4E shows each respective wall of the plurality of walls comprises multiple first, second, third and fourth wall portions, wherein the first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions (corresponding to each respective wall of the plurality of walls comprises multiple first, second, and third wall portions, wherein he first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions; each respective wall of the plurality of walls further comprises fourth wall portions). FIG. 4E further show the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the each wall of the plurality of walls, given that the third wall does not extend the height of the wall region. The fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall, given that the fourth wall does not extend the height of the wall region (corresponding to the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the wall; the fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall).
FIG. 4E shows that the third and fourth walls are connected to the axial beams (corresponding to the third wall portions are connected with at least some of the plurality of beams connecting the adjacent walls; the fourth wall portions are connected with others of the plurality of beams connecting the adjacent walls of the plurality of walls; the adjacent walls comprises first and second walls, and wherein the at least some of the plurality of beams connect to the third wall portions of the first and second walls, and wherein the others of the plurality of beams connects the fourth wall portions of the first wall and a third wall, opposite the second wall, or the at least some of the plurality of beams connect to the third wall portions of the first wall and to the fourth wall portions of the second wall, wherein the others of the plurality of beams connect to the fourth wall portions of the first wall and to the third wall portions of a third wall). FIG. 4E further shows the first, second and third wall portions each have a thickness that is the smallest dimension of the wall portion (corresponding to the first, second, and third wall portions each have a thickness that is the smallest dimension of the wall portion). FIG. 4E shows the thickness of the walls are uniform from the top edge to the bottom edge for the first and second wall portions (corresponding to at a given plane intersecting one of the first wall portions or one of the second wall portions and perpendicular to the to edge and the bottom edge, a thickness of the top edge is plus or minus ten percent of a thickness at the bottom edge).
Corrigan‘613 does not explicitly teach the tension activated material is between a first substrate and a second substrate, as presently claimed. However, Corrigan‘613 teaches the tension activated material is an energy absorbing structure is used to protect objects for shipping or storage ([00141-00142]).
Cheich teaches a dunnage pad including a partially expanded slit-sheet material fixed between a top cover and a bottom cover (p.2, lines 6-8; p. 7, lines 7-9) (corresponding to a first substrate; a second substrate; and a spacer between the first substrate and the second substrate). The top cover and the bottom cover may be any suitable sheet material such as paper, plastic sheets, metal foil or any combination thereof (p. 13, lines 3-7) (corresponding to at least one of the first substrate or the second substrate comprises metal or a polymer composite).
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In light of the disclosure of Cheich, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the tension activated material of Corrigan‘613 be placed between a top cover and a bottom cover, in order to provide a pad for protecting objects for shipping, and thereby arriving at the presently claimed invention.
In reference to claims 9-10, Corrigan‘613 in view of Cheich teaches the limitations of claim 1, as discussed above. Although Corrigan‘613 in view of Cheich does not explicitly teach the single sheet of film comprising, before being formed into the spacer, raised structure as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Corrigan‘613 in view of Cheich meets the requirements of the claimed product, Corrigan‘613 in view of Cheich clearly meets the requirements of the present claim.
In reference to claim 11, Corrigan‘613 in view of Cheich teaches the limitations of claim 9, as discussed above. Corrigan‘613 further teaches the material includes at least one of plastic, polyester, acrylic, polysulfone, thermoset, thermoplastic, biodegradable polymers and combinations thereof ([0014]) (corresponding to the single sheet of film comprises at least one of a polymer, a metal, or multiple polymer layers).
Claims 1-2, 4-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Corrigan et al. (WO 2021/130659) (Corrigan‘659) in view of Cheich.
In reference to claims 1-2 and 4-5, Corrigan‘659 teaches a tension-activated expanding article used as cushioning films and/or packaging materials ([0001]) (corresponding to an article comprising a paper spacer). FIG. 8G, provided below, shows the tension activated material includes a plurality of walls 830 spaced apart from each other and a plurality of axial beams 820 ([00107-00114]) (corresponding to the spacer comprising a plurality of walls spaced apart from each other and a plurality of beams connecting adjacent walls of the plurality of walls).
FIG. 8G shows each respective wall of the plurality of walls comprises multiple first, second, third and fourth wall portions, wherein the first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions (corresponding to each respective wall of the plurality of walls comprises multiple first, second, and third wall portions, wherein he first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions; each respective wall of the plurality of walls further comprises fourth wall portions). FIG. 8G further show the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the each wall of the plurality of walls, given that the third wall does not extend the height of the wall region. The fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall, given that the fourth wall does not extend the height of the wall region (corresponding to the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the wall; the fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall).
FIG. 8G shows that the third and fourth walls are connected to the axial beams (corresponding to the third wall portions are connected with at least some of the plurality of beams connecting the adjacent walls; the fourth wall portions are connected with others of the plurality of beams connecting the adjacent walls of the plurality of walls; the adjacent walls comprises first and second walls, and wherein the at least some of the plurality of beams connect to the third wall portions of the first and second walls, and wherein the others of the plurality of beams connects the fourth wall portions of the first wall and a third wall, opposite the second wall, or the at least some of the plurality of beams connect to the third wall portions of the first wall and to the fourth wall portions of the second wall, wherein the others of the plurality of beams connect to the fourth wall portions of the first wall and to the third wall portions of a third wall). FIG. 8G further shows the first, second and third wall portions each have a thickness that is the smallest dimension of the wall portion (corresponding to the first, second, and third wall portions each have a thickness that is the smallest dimension of the wall portion). FIG. 4E shows the thickness of the walls are uniform from the top edge to the bottom edge for the first and second wall portions (corresponding to at a given plane intersecting one of the first wall portions or one of the second wall portions and perpendicular to the to edge and the bottom edge, a thickness of the top edge is plus or minus ten percent of a thickness at the bottom edge).
Corrigan‘659 does not explicitly teach the tension activated material is between a first substrate and a second substrate, as presently claimed. However, Corrigan‘659 teaches the tension activated material is an energy absorbing structure is used to protect objects for shipping or storage ([00148-00149]).
Cheich teaches a dunnage pad including a partially expanded slit-sheet material fixed between a top cover and a bottom cover (p.2, lines 6-8; p. 7, lines 7-9) (corresponding to a first substrate; a second substrate; and a spacer between the first substrate and the second substrate). The top cover and the bottom cover may be any suitable sheet material such as paper, plastic sheets, metal foil or any combination thereof (p. 13, lines 3-7) (corresponding to at least one of the first substrate or the second substrate comprises metal or a polymer composite).
In light of the disclosure of Cheich, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the tension activated material of Corrigan‘659 be placed between a top cover and a bottom cover, in order to provide a pad for protecting objects for shipping, and thereby arriving at the presently claimed invention.
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In reference to claims 9-10, Corrigan‘659 in view of Cheich teaches the limitations of claim 1, as discussed above. Although Corrigan‘659 in view of Cheich does not explicitly teach the single sheet of film comprising, before being formed into the spacer, raised structure as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Corrigan‘659 in view of Cheich meets the requirements of the claimed product, Corrigan‘659 in view of Cheich clearly meets the requirements of the present claim.
In reference to claim 11, Corrigan‘659 in view of Cheich teaches the limitations of claim 9, as discussed above. Corrigan‘659 further teaches the tension activated material is a sheet of plastic, elastic materials, inelastic materials, polyester, acrylic, polysulfone, and thermoplastic materials ([0138]; [0139]) (corresponding to the single sheet of film comprises at least one of a polymer, a metal, or multiple polymer layers).
Claims 1-2, 4-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Corrigan et al. (WO 2021/130660) (Corrigan‘660) in view of Cheich.
In reference to claims 1-2 and 4-5, Corrigan‘660 teaches a tension-activated expanding article used as cushioning films and/or packaging materials ([0001]) (corresponding to an article comprising a paper spacer). FIG. 8G, provided below, shows the tension activated material includes a plurality of walls 830 spaced apart from each other and a plurality of axial beams 820 ([00107-00114]) (corresponding to the spacer comprising a plurality of walls spaced apart from each other and a plurality of beams connecting adjacent walls of the plurality of walls).
FIG. 8G shows each respective wall of the plurality of walls comprises multiple first, second, third and fourth wall portions, wherein the first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions (corresponding to each respective wall of the plurality of walls comprises multiple first, second, and third wall portions, wherein he first and second wall portions are not parallel to each other and each have top and bottom opposing edges that define a height of the first and second wall portions; each respective wall of the plurality of walls further comprises fourth wall portions). FIG. 8G further show the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the each wall of the plurality of walls, given that the third wall does not extend the height of the wall region. The fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall, given that the fourth wall does not extend the height of the wall region (corresponding to the third wall portions have top edges continuous with the top edges of the first and second wall portions but a smaller height than the height of the wall; the fourth wall portions have bottom edges continuous with the bottom edges of the first and second wall portions but a smaller height than the height of the wall).
FIG. 8G shows that the third and fourth walls are connected to the axial beams (corresponding to the third wall portions are connected with at least some of the plurality of beams connecting the adjacent walls; the fourth wall portions are connected with others of the plurality of beams connecting the adjacent walls of the plurality of walls; the adjacent walls comprises first and second walls, and wherein the at least some of the plurality of beams connect to the third wall portions of the first and second walls, and wherein the others of the plurality of beams connects the fourth wall portions of the first wall and a third wall, opposite the second wall, or the at least some of the plurality of beams connect to the third wall portions of the first wall and to the fourth wall portions of the second wall, wherein the others of the plurality of beams connect to the fourth wall portions of the first wall and to the third wall portions of a third wall). FIG. 8G further shows the first, second and third wall portions each have a thickness that is the smallest dimension of the wall portion (corresponding to the first, second, and third wall portions each have a thickness that is the smallest dimension of the wall portion). FIG. 4E shows the thickness of the walls are uniform from the top edge to the bottom edge for the first and second wall portions (corresponding to at a given plane intersecting one of the first wall portions or one of the second wall portions and perpendicular to the to edge and the bottom edge, a thickness of the top edge is plus or minus ten percent of a thickness at the bottom edge).
Corrigan‘660 does not explicitly teach the tension activated material is between a first substrate and a second substrate, as presently claimed. However, Corrigan‘660 teaches the tension activated material is an energy absorbing structure is used to protect objects for shipping or storage ([00123-00124]).
Cheich teaches a dunnage pad including a partially expanded slit-sheet material fixed between a top cover and a bottom cover (p.2, lines 6-8; p. 7, lines 7-9) (corresponding to a first substrate; a second substrate; and a spacer between the first substrate and the second substrate). The top cover and the bottom cover may be any suitable sheet material such as paper, plastic sheets, metal foil or any combination thereof (p. 13, lines 3-7) (corresponding to at least one of the first substrate or the second substrate comprises metal or a polymer composite).
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In light of the disclosure of Cheich, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the tension activated material of Corrigan‘660 be placed between a top cover and a bottom cover, in order to provide a pad for protecting objects for shipping, and thereby arriving at the presently claimed invention.
In reference to claims 9-10, Corrigan‘660 in view of Cheich teaches the limitations of claim 1, as discussed above. Although Corrigan‘660 in view of Cheich does not explicitly teach the single sheet of film comprising, before being formed into the spacer, raised structure as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven 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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Corrigan‘660 in view of Cheich meets the requirements of the claimed product, Corrigan‘660 in view of Cheich clearly meets the requirements of the present claim.
In reference to claim 11, Corrigan‘660 in view of Cheich teaches the limitations of claim 9, as discussed above. Corrigan‘660 further teaches the material includes at least one of plastic, elastic materials, inelastic materials, polyester, acrylic, polysulfone, and thermoplastic materials ([00113]; [00114]) (corresponding to the single sheet of film comprises at least one of a polymer, a metal, or multiple polymer layers).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over each of Corrigan‘612/ Corrigan‘613/Corrigan‘659/ Corrigan‘660 in view of Cheich as applied to claim 1 above, and further in view of Hoffman et al. (US 2019/0100369) (Hoffman).
In reference to claim 3, Corrigan‘612/ Corrigan‘613/Corrigan‘659/ Corrigan‘660 in view of Cheich teaches the limitations of claim 1, as discussed above.
Corrigan‘612/ Corrigan‘613/Corrigan‘659/ Corrigan‘660 in view of Cheich does not explicitly teach at least one of the top cover or bottom cover is curved, as presently claimed.
Hoffman teaches a packaging cushion including a mesh cushion layer between a first outer layer and a second outer layer (Abstract; [0021]). The padded packaging cushion is wrapped around an item to provide protection ([0046]). Fig. 14 shows the layered packaging cushion wrapped around an item will include a curved portion where the first and second outer layers are curved (corresponding to at least one of the first substrate or the second substrate is curved).
In light of the disclosure of Hoffman, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the packaging material of Corrigan‘612/ Corrigan‘613/Corrigan‘659/ Corrigan‘660 in view of Cheich wrap around an item to be shipped or stored, in order to provide protection to the item, and thereby arriving at the presently claimed invention.
Response to Arguments
While the Applicant has disqualified the Corrigan (WO 2021/130616), Corrigan'612 (WO 2021/130612), Corrigan'613 (WO 2021/130613), Corrigan'659 (WO 2021/130659), and Corrigan'660 (WO 2021/130660) as prior art under 35 USC 102(a)(2) by the statement of common ownership on page 6 of the Remarks filed 07/27/2026, however, the references still qualify as prior art under 35 USC 102(a)(1) for the reasons set forth below.
The Declaration filed 07/27/2026 has been fully considered. However, the Declaration does not sufficiently establish that the subject matter disclose in each of Corrigan (WO 2021/130616), Corrigan'612 (WO 2021/130612), Corrigan'613 (WO 2021/130613), Corrigan'659 (WO 2021/130659), and Corrigan'660 (WO 2021/130660) was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint invention. Specifically, the Declaration does not cite any of the document numbers of the references used in the rejections.
Further, the Declaration at 2 states “U.S. Patent Application Nos. 14/364,426 entitled “Tension-activated, Expanding Sheets,” filed on December 16, 2020.” Firstly, none of Corrigan (WO 2021/130616), Corrigan'612 (WO 2021/130612), Corrigan'613 (WO 2021/130613), Corrigan'659 (WO 2021/130659), and Corrigan'660 (WO 2021/130660) are U.S. Patent Applications they are all WIPO documents. Secondly, US Patent Application No. 14/364,426 does not site Thomas R. J. Corrigan as an inventor and is titled “Electrical Connector Latch” and filed 06/11/2014. It is not clear why this application was cited in the Declaration, however clarification is requested.
In order to disqualify Corrigan (WO 2021/130616), Corrigan'612 (WO 2021/130612), Corrigan'613 (WO 2021/130613), Corrigan'659 (WO 2021/130659), and Corrigan'660 (WO 2021/130660) as prior art under 35 USC 102(a)(1) it is suggested to (1) clarify on the record why 14/364,426 was cited and (2) filed another Declaration explicitly citing the disclosures of Corrigan (WO 2021/130616), Corrigan'612 (WO 2021/130612), Corrigan'613 (WO 2021/130613), Corrigan'659 (WO 2021/130659), and Corrigan'660 (WO 2021/130660) were made one year or less before the effective filing date of a claimed invention and were made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
Therefore, Applicant's arguments filed 07/27/2026 have been fully considered but they are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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