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
Applicant’s election without traverse of Group I in the reply filed on 6 August 2026 is acknowledged.
Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
Claim 27 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group III, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
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.
Claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2022/009129 A1 (referenced below using U.S. counterpart publication 2023/0249890 A1, “Törnblom ‘890”).
The applied reference has an inventor common with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Törnblom ‘890 discloses an air-laid fibrous article that anticipates various limitations of claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25. (Törnblom ‘890 abs. ¶¶ 0040 and 0073; and claims 1, 2, 9-11).
Claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by WO 2022/009130 A1 (referenced below using U.S. counterpart publication 2023/0249889 A1, “Törnblom ‘890”).
The applied reference has an inventor common with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Törnblom ‘889 discloses an air-laid fibrous article that anticipates various limitations of claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25. (Törnblom ‘890 abs. and claims 1-11).
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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.
Claims 1, 2, 5, 6, and 9-13; and claims 20, 21, 24, and 25 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2010/0119779 A1 (“Ostendorf”).
Considering claims 1, 2, 5, 6, 9, and 12-14, Ostendorf discloses a fibrous structure having a continuous pillow portion 212 surrounding a groove region 214, wherein each groove region further surrounds a discrete pillow portion 210. (Ostendorf ¶¶ 0061-0063 and Figs. 6A and 6B, reproduced infra). Ostendorf discloses its fibrous structure can be made via airlaying of two populations of fibers, one being synthetic bicomponent fibers comprising PET and the other being natural fibers such as wood pulp fibers. (Id. ¶¶ 0024-0030). Ostendorf is analogous art, for it is directed to the same field of endeavor as that of the instant application (fibrous structure autogenously consolidated using polymeric binder fibers). With the express disclosures in the foregoing, preparing the fibrous structure via airlaying is considered disclosed with sufficient specificity. Were this to be challenged (not conceded), then the foregoing makes air-laying at least obvious.
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As claim 1 is recited using open transitional phrase and as the claim does not require the frame portion to define peripheral edge of the blank, a continuous pillow portion enclosing four groove regions 214 maps onto the frame, and each groove regions 214 maps onto a respective cavity, with discrete pillow portions 210 mapping onto the protruding structures recited in claim 6.
Ostendorf anticipates or renders obvious claims 1, 2, 5, 6, 9, and 12-14.
Considering claim 9, Ostendorf references to U.S. 2004/0157524 A1 (“Polat”) re: fibers used, wherein the reference is incorporated by reference. (Ostendorf ¶¶ 0031 and 0097). Polat discloses replacing 5 or 10 wt% natural fibers with 10 wt% bicomponent binding fibers. (Polat ¶ 0040). The usage of 5 or 10 wt% bicomponent binding fibers is thus at least obvious, if not disclosed with sufficient specificity.
Considering claims 20, 21, 24, and 25, the recitation “cushioning insert” has not been given patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Furthermore, Ostendorf discloses its fibrous structure imparts softness, which makes it suitable as cushioning material. All other limitations in claims 20, 21, 24, and 25 have been addressed above in the rejection of claims 1, 2, 5, and 6.
Claim Rejections - 35 USC § 103
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Ostendorf, as applied to claim 1 above; claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Ostendorf, as applied to claim 20 above.
Considering claims 3 and 4, Ostendorf discloses 1) the area spanned by a groove region, 2) an area spanned by a discrete pillow region located within the groove region, and 3) ratio of 1) and 2). (Ostendorf ¶ 0063). As an area of 2) is a direct proxy for distance between adjacent but spaced apart portions of a particular groove, and as 1) is a direct proxy for diameter of a groove portion, and as 3) further provides ratio of the foregoing. Ostendorf is considered to have disclosed broad ranges that directly yield respective parameters that render obvious the values of claims 3 and 4. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Furthermore, disclosures 1)-3) mentioned above are considered to have disclosed the general characteristic regarding size and spacing of the grooves, and as such, the specifically recited limitations are not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”; MPEP 2144.05 II.A.
Considering claims 22 and 23, all other limitations in claims 22 and 23 have been addressed above in the rejection of claims 1, 2, 5, and 6.
Claims 1, 2, 6, 10, and 12-14; and claims 20, 21, 25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2016/0152396 A1 (“Keene”) in view of U.S. 2021/0024706 A1 (“Mayes”) and optionally in view of U.S. 3,871,521 A (“Szatkowski”).
Considering claims 1, 2, 6, 10, and 12-14, Keene discloses a packaging insert formed from randomly oriented polymeric filaments, the packaging insert has a peripheral thick region encompassing a central region containing a recess used to accommodate storage of an object. (Keene ¶¶ 0024-0025 and 0030, and Fig. 3). It is noted that the general morphology of the packaging insert is similar to that of the Instant Application (thicker peripheral rim surrounding a recess). Keene is analogous art, for it is directed to the same field of endeavor as that of the instant application (packaging material comprising randomly deposited fibers). Keene differs from the claimed invention re: usage of natural fibers and the number of recesses.
For the former, Mayes teaches an air-laid mat for packaging, the air-laid mat comprising both bicomponent binder fibers and wood fibers, wherein the bicomponent fiber is a PP/PE fiber included at 10%. (Mayes ¶¶ 0002 and 0034-0037). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have utilized the air-laying method taught in Mayes to make the packaging insert of Keene, as Mayes teaches that the resulting mat is particularly suited for making thermoformed articles having 3D structures. (Mayes ¶¶ 0002-0006, and 0011). Alternatively, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have formed a recess in the mat of Mayes, as Keene teaches that this is a suitable way of utilizing a fibrous structure having randomly deposited fibers.
The number of recesses contained is considered to be easily adjustable by person of ordinary skill in the art. Wine glasses are commonly sold in multiples, and producing a packaging insert able to accommodate many wine glasses would have been obvious. Alternatively, Szatkowski shows that a packaging insert that has numerous cavities to accommodates fragile articles is known.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Keene in view of Mayes and optionally Szatkowski, as applied to claim 1 above, and further in view of U.S. 2016/0355320 A1 (Maier-Eschenlohr).
Considering claim 7, Keene and Mayes differ from the claimed invention, as they are silent re: usage of high density at a peripheral portion of a packaging. However, in the art of packaging inserts, it is known to provide higher density to edge region of each of six inserts used as packaging liners. (Maier-Eschenlohr ¶ 0120). Person having ordinary skill in the art would have been motivated to design a packaging insert having higher peripheral density, as Maier-Eschenlohr is considered to have demonstrated that such a configuration is known in the art of packaging inserts. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular configuration is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent Application 18/004,501 and Keene. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 of the ‘501 Application recite, with exception of the claimed cavities, all limitations of claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25 of the Instant Application. However, the provisioning of cavity within a rim of a cushioning blank is obvious in view of Keene
This is a provisional nonstatutory double patenting rejection.
Claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, 11 of U.S. Patent No. 18/004,503 (since passed to issuance) and Keene. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3, 7, and 11 of the ‘501 Application recite, with exception of the claimed cavities, all limitations of claims 1, 2, 5, 6, 9, 10, and 12-14; and claims 20, 21, 24, and 25 of the Instant Application. However, the provisioning of cavity within a rim of a cushioning blank is obvious in view of Keene.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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