PHDETAILED 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
Applicant’s election without traverse of Species 2 in the reply filed on 6/23/2026 is acknowledged.
No claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/23/2026.
Double Patenting
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 1-3 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,713,177. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,713,177 contain every element of claims 1-3 and 15 of the instant application, and as such anticipated claimed 1-3 and 15.
Claim 1-3 and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-6, 11, and 12 of copending Application No. 18/337,850 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements with only minor variations in verbiage and level of detail.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1, 2, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamura (JP 2010208310) in view of Huenninghaus (EP 0552432) and Vormwald et al. (WO 2021023498, hereinafter ‘Vormwald’).
Tamura discloses a shipping mailer, comprising: a one-piece body (1) comprising a first wall and a second wall that are folded together and sealed along sealed side edge portions of the one-piece body (see Figs. 7, 8), the first and second walls at least partially defining an interior of the shipping mailer, the shipping mailer comprising a closed first end portion (5) and a second end portion (7) comprising an opening sealable by a closure (17); the one-piece body comprising a single face corrugated material comprising a liner layer and a fluted medium layer (see Figs. 6, 8); the one-piece body comprising a center fold line at the closed first end portion from which the first and second walls extend (5, see Figs. 1, 6); the fluted medium layer comprising a plurality of flutes (see Figs. 2, 8); and wherein the flutes are crushed in the sealed side edge portions such that the crushed flutes interlock in the sealed side edge portions (see Fig. 8), and the first and second walls fold along inner boundaries of the sealed side edge portions (functional recitation); except does not expressly disclose the flutes being parallel to the center fold line or the flutes nesting with each other along the walls.
However, Huenninghaus teaches a similar mailer wherein the flutes of the fluted medium layer extend parallel or substantially parallel to the center fold line (see Figs. 2-5) as claimed.
Because Tamura and Huenninghaus both teach single-layer fluted mailers, it would have been obvious to one of ordinary skill in the art to substitute the horizontal flutes taught by Huenninghaus for the vertical flutes taught by Tamura to achieve the predictable result of providing structure to the mailer and padding to the contents.
Further, Vormwald teaches a similar mailer wherein flutes of the first wall nest with flutes of the second wall (see Fig. 3) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to construct the fluted mailer taught by Huenninghaus as modified above such that the flutes nest with each other as taught by Vormwald, in order to allow the mailer to take up minimal space when unfilled as taught by Vormwald (para 0028).
Tamura as modified above further results in a device wherein the inner boundaries of the sealed side edge portions form longitudinal fold lines between the crushed flutes of the sealed side edge portions and intact flutes of the interior of the shipping mailer (at transition from crushed flutes to intact shown in Tamura Fig. 2); and blank for forming the shipping mailer of claim 1 (see Tamura Fig. 1).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamura (JP 2010208310) in view of Huenninghaus (EP 0552432) and Vormwald et al. (WO 2021023498, hereinafter ‘Vormwald’) as applied to claim 1 above, and further in view of Patent Application Publication No. 2021/00787767 to Simpkins et al. (hereinafter Simpkins).
Tamura as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the plurality of longitudinal fold lines as claimed.
However, Simpkins teaches that it is known in the art to provide a fluted layer with a plurality of preformed longitudinal fold lines (patterned crease) formed in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of a sealed side edge portions in an analogous shipping mailer (Figs. 2, 3, 6, 8, and 9).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to form a plurality of preformed longitudinal fold lines in the flutes of the fluted layer, wherein the preformed longitudinal fold lines are outside of the sealed side edge portions in the fluted layer of the Tamura shipping mailer, as in Simpkins, in order to allow the corrugated walls to conform to an article placed into the mailer.
Claim(s) 9-11, 13, 14, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamura (JP 2010208310) in view of Huenninghaus (EP 0552432) and Vormwald et al. (WO 2021023498, hereinafter ‘Vormwald’) as applied to claim 1 above, and further in view of Peterson (US 6019280).
Tamura as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the perforated tear-off strip as claimed.
However, Peterson teaches a mailer wherein a perforated tear-off strip (@22, 23) is formed along one side of the shipping mailer and extending in a direction from the closed first end portion toward the second end portion (see Figs. 1-5).
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to add the perforated tear-off strip taught by Peterson to the mailer taught by Tamura as modified above, in order allow the mailer to be opened as taught by Peterson (col. 5, ll. 7-25).
Tamura as modified above results in a device wherein the perforated tear-off strip comprises a first plurality of perforations formed in the first wall and a second plurality of perforations formed in the second wall (see Peterson Figs. 1-5; perforations through all layers); at least a portion of the perforations of the first plurality of perforations are aligned with perforations of the second plurality of perforations, and at least a portion of the perforations of the first plurality of perforations are offset from perforations of the second plurality of perforations (see Peterson Figs. 1-5; perforations through all layers); the first and second walls each comprise a perforation, and the perforations are on opposite sides of the center fold line (see Peterson Figs. 1-5; perforations through all layers, both sides of fold lines); a perforation that extends from the first wall across the center fold line to the second wall (see Peterson Figs. 1-5; perforations through all layers, both sides of fold lines).
Allowable Subject Matter
Claims 4-8, 12, 16-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER N HELVEY/Primary Examiner, Art Unit 3734
August 21, 2026
Prosecution Insights