Continued Prosecution Application
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 07/15/2026 has been entered.
Specification
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
The following is a quotation of 37 CFR 1.71(a)-(c):
(a) The specification must include a written description of the invention or discovery and of the manner and process of making and using the same, and is required to be in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which the invention or discovery appertains, or with which it is most nearly connected, to make and use the same.
(b) The specification must set forth the precise invention for which a patent is solicited, in such manner as to distinguish it from other inventions and from what is old. It must describe completely a specific embodiment of the process, machine, manufacture, composition of matter or improvement invented, and must explain the mode of operation or principle whenever applicable. The best mode contemplated by the inventor of carrying out his invention must be set forth.
(c) In the case of an improvement, the specification must particularly point out the part or parts of the process, machine, manufacture, or composition of matter to which the improvement relates, and the description should be confined to the specific improvement and to such parts as necessarily cooperate with it or as may be necessary to a complete understanding or description of it.
The specification is objected to under 37 CFR 1.71, as the specification, as originally filed, does not provide support for the new matter as now claimed. The specification as filed does not provide support for “when the packaging cushion material is housed in the box body, 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” as in claim 1 because the specification as originally filed fails to provide support for 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 when the packaging cushion material is housed in the box body.
Claims 1-11 are rejected under pre-AIA 35 USC 112, first paragraph, for the reasons set forth in the objection to the specification.
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.
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) 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 discloses the holder portion, the holder support portion, and the hinge portion are integrally molded as one component (column 5, lines 1-29), and 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. Ooi further discloses 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 when the packaging cushion material is housed in the box body (Figs. 3-4 & 8; the box body is not positively claimed) 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 (Fig. 1). To the extent that Ooi fails to disclose 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 when the packaging cushion material is housed in the box body (the box body is not positively recited), 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 packaging cushion material of Ooi so the packaging cushion material is constructed with 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 when the packaging cushion material is housed in the box body prior of loading an article into the holder portion to prevent the article from getting damage during loading.
As to claim 2, Ooi discloses that when he 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(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 07/15/2026 have been fully considered but they are not deemed to be persuasive.
Applicant argues in the remarks that “… claim 1 now expressly requires that, in the housed configuration, the holder portion is spaced from the holder support portion and supported only through the hinge portion in an unloaded state” is noted, but this is not persuasive because claim 1 only recites a packaging cushion material. Regarding the intended use of the claimed invention for “in the housed configuration” and/or “when the packaging cushion material is housed in the box body”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987).
Applicant argues that “… Ooi therefore, does not disclose that, when the packing device is housed with the buffer sections in their folded packing positions, the alleged holder portion spaced from the alleged holder support portions and supported only through hinge lines 105 in an unloaded state.” in the remarks is noted. However, it appears that the instant patent application also fails to provide support for such situation as stated (see the objection as indicated above).
Applicant further argues in the remarks that “Ooi does not disclose that hinge line 105 deform in a loaded state so that a facing surface of an initially spaced holder support portion contacts the holder portion” is noted. This is not persuasive because it appears that the hinge line 105 of the packaging cushion material of Ooi is stretched/deformed from the unloaded state (Fig. 1) to the loaded state (Fig. 3).
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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