In claim 8, the phrase “the first direction” lacks proper antecedent basis.
Regarding the limitation of “… are integrally molded …”, in accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself since determination of patentability is based on the product itself because this limitation is directed to the product-by-process. Therefore, this limitation has not been given patentable weight because a product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 6 and 8-11 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ooi et al. (8,757,384; hereinafter Ooi).
As to claim 1, Ooi discloses a packaging cushion material (100; Figs. 1 & 6-9) to be housed in a box body together with an article (Fig. 4), the packaging cushion material comprising a holder portion (102, 104, 107) adapted to accommodate the article, a holder support portion (106a, 106c; 106b, 106d) adapted to support the holder portion, and a hinge portion (105) connecting the holder portion and the holder support portion to each other. Ooi further discloses the holder portion, the holder support portion, and the hinge portion are integrally molded as one component (column 5, lines 1-29), the holder support portion supports the holder portion with the hinge portion interposed therebetween such that the holder portion is movable relative to the holder support portion, and the holder portion is spaced from the holder support portion such that the holder portion is supported only through the hinge portion in an unloaded state, and the holder support portion includes a facing surface (112) positioned to contact the holder portion upon (column 7, lines 17-27) deformation of the hinge portion in a loaded state.
As to claim 2, Ooi discloses the packaging cushion material is housed in the box body (the box body 512 with the packaging cushion material as in Figs. 6-9) in a state where the hinge portion is folded, the holder portion is supported by the holder support portion with the hinge portion interposed therebetween so as to be movable relative to the holder support portion in a first direction (Fig. 8; a straight up direction from a cavity 104), and when the packaging cushion material is housed in the box body in a state where the hinge portion is folded, the holder support portion faces the holder portion at a portion of the holder support portion in one side in the first direction and is in contact with the box body at a portion of the holder support portion in the other side in the first direction (Figs. 7 & 9).
As to claim 6, see Figs. 7-9.
As to claim 8, Ooi discloses the holder support portion comprises a first holder support portion (106a) and a second holder support portion (106c), the hinge portion includes a first hinge portion (105) connecting the holder portion and the first holder support portion to each other, and a second hinge portion (105) connecting the holder portion and the second holder support portion to each other, and the first holder support portion and the second holder support portion face each other in a second direction (straight line from the first holder support portion to the second holder support portion) intersecting the first direction (a straight up direction from the cavity 104), when viewed in the first direction.
As to claims 9-11, Ooi further discloses the packaging cushion material comprises a pulp molded body (column 5, lines 1-29 & Fig. 4).
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) 3-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ooi in view of Tanaka et al. (7,981,493; hereinafter Tanaka).
As to claim 3, Ooi discloses the holder portion comprises a cavity/portion opened in the first direction and adapted to accommodate the article, and a flange portion extending outward from an opening end of the cavity/portion, and the hinge portion connects the flange portion of the holder portion and the holder support portion to each other. However, Ooi fails to show the cavity/portion comprises a cylindrical portion as claimed. Tanaka teaches a packaging cushion material (300) comprising a cylindrical portion (390) opened upward in a first direction and adapted to accommodate an article (100-130). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Tanaka to modify the packaging cushion material of Ooi so the cavity/portion comprises a cylindrical portion as claimed for holding a circular shape article and because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
As to claim 4, the packaging cushion material of Ooi as modified includes the holder support portion (106a; 106c) comprises a first facing surface (Fig. 7 shows each buffer member 112 comprises a step portion) adapted to face a bottom portion (Figs. 7 & 9) and an outer peripheral surface of the cylindrical portion of the holder portion when the hinge portion is folded.
As to claim 5, the packaging cushion material of Ooi as modified includes the holder support portion (106a; 106c) comprises a second facing surface (Fig. 7 shows each buffer member 112 comprises a step portion) adapted to face the flange portion of the holder portion when the hinge portion is folded (Figs. 7 & 9) and one of the flange portion and the second facing surface is provided with a protruding portion protruding toward the other (Fig. 7).
As to claim 7, Ooi further discloses the hinge portion (105; Figs. 10-12) has a band shape having a C-shaped cross section (Fig. 11 shows a C-shaped cross section 105 (the hinge portion of the holder support portion 106a)). To the extent that Ooi fails to show the hinge portion comprises a band shape with a C-shaped cross section as claimed, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the hinge portion of Ooi so the hinge portion is constructed with a band shape having a C-shaped cross section as claimed to facilitate folding the holder support portion and because the selection of a specific hinge portion such as the hinge portion as disclosed by Ooi or as claimed would have been an obvious matter of design choice inasmuch as the resultant structures will work equally well.
Response to Arguments
Applicant's arguments filed on 03/30/2026 have been fully considered but they are not deemed to be persuasive.
Applicant’s argument with respect to Ooi in the remarks such as “… Ooi discloses a configuration in which the holder portion is supported by the support portions in a manner that includes direct structural support, rather than hinge-mediate suspension” is noted. This is not persuasive because there is no such “hinge-mediated suspension” in the claims and also not persuasive because claim 1 recites “the holder support portion includes a facing surface positioned to contact the holder portion upon deformation of the hinge portion in a loaded state” which indicates that the holder support portion supports the holder portion by directly contact between the holder portion and the holder support portion.
THIS ACTION IS MADE FINAL. 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 extension fee 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN K BUI whose telephone number is (571)272-4552. The examiner can normally be reached Generally M-F, 7-4.
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/LUAN K BUI/
Primary Examiner, Art Unit 3736
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