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 .
Claim Status
This Office action is in response to the amendments filed 12/3/2025. Claims 1-2, and 5-12 are currently pending. Claim 1 has been amended. The cancelation of claims 3-4 is acknowledged.
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.
Claims 1-2 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Lisso (US 10183424 B1) in view of Kuhn (US 3870741) and Hochstenbag (DE 102013102747 A1). Note that for convenience, citations to the written description of Hochstenbag refer to the attached translation.
Regarding claim 1, Lisso discloses a box-less packaging method for a product (120 – Fig. 1), comprising: scanning a barcode and determining size information related to the product (col. 5, lines 41-47); obtaining a containment jig (130 – Fig. 1 and col. 6, lines 36-47); locating the product within the containment jig (col. 6, lines 48-50 and see Fig. 1 at 125); disposing an opening strip on the product (col. 7, lines 12-20); spraying the product within the containment jig with expandable foam (col. 2, lines 50-52), a portion of the opening strip is exposed externally to the expandable foam (col. 2, lines 12-20); printing shipping information (col. 7, lines 59-66); and removing the product from the expandable foam by pulling the opening strip to open the expandable foam (col. 7, lines 12-20).
Although Lisso implies that the shipping information may printed onto an exterior surface of the expandable foam for shipping (col. 7, lines 52-58 discuss that the container may optionally be wrapped with a poly wrap, then discusses printing onto the poly wrap; however in cases where a poly wrap is not used, it is implied that the information would be printed directly on the foam), Lisso does not expressly disclose this.
Kuhn teaches a similar method comprising encasing a product in expandable foam (col. 2, lines 19-29) and then printing information directly onto an exterior surface of expandable foam (col. 3, lines 1-2). Although Lisso discloses that a poly wrap may provide a better surface for printing information than the expandable foam, one of ordinary skill in the art, upon reading the teaching of Kuhn, would have recognized that printing directly onto the expandable foam is a known option.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have printed the shipping information of Lisso directly onto the exterior surface of the expandable foam as suggested by Kuhn, since Lisso does not disclose where the shipping information should be printed for cases in which a poly wrap is not used and Kuhn provides a known alternative.
Lisso further does not disclose applying vacuum packaging around the product prior to spraying the product with expandable foam.
Kuhn further teaches applying a packaging around a product, then applying expandable foam by spraying the packaging around the product within a containment jig with the expandable foam (col. 2, lines 14-15), wherein the vacuum packaging includes an opening strip embedded into the vacuum packaging (col. 3, line 28 – col. 4, line 7; note that the opening strip is described as having ends exposed at the surface of the package;); in order further protect any product that may be damaged during the applying of the expandable foam (note that the film is described as protecting, col. 1, lines 11-13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified the method of Lisso such that a packaging is applied around the product prior to the step of applying the expandable foam as taught by Kuhn in order to provide protection to any product that may be sensitive enough to be damaged during spraying of the expandable foam, thereby improving the reliability of the method. Note that Kuhn teaches using an opening strip to open a package by wrapping the opening strip around the product and then having ends protruding through the vacuum packaging and the expandable foam (col. 3, line 28 – col. 4, line 7). Since the opening strip extends through the vacuum packaging and the expandable foam, it is interpreted to be embedded within the vacuum packaging and expandable foam. Hence, when Lisso is modified by Kuhn, the result would be that the opening strip of Lisso also extends through the vacuum packaging and the expandable foam. As noted above, since the opening strip extends through the vacuum packaging, it is interpreted to be embedded into the vacuum packaging.
Lisso, as modified by Kuhn, further teaches that the packaging is sealed tight around a product (Kuhn, col. 2, lines 14-16) but does not expressly teach how the packaging is sealed tight.
Hochstenbag teaches that a packaging can be sealed tight using skin packaging (pg. 2, 6th full paragraph). One of ordinary skill in the art, upon reading the teaching of Hochstenbag, would have recognized that the packaging of Lisso and Kuhn may be applied to products using skin packaging which is a form of vacuum packaging as taught by Hochstenbag since in both methods, the film is sealed tight against a product.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have applied the packaging of Lisso and Kuhn using the vacuum packaging technique of skin packaging as taught by Hochstenbag since Lisso and Kuhn are silent with regard as to how the packaging is applied and Hochstenbag teaches a known solution.
Lisso, as modified by Kuhn and Hochstenbag, further teaches:
Claim 2, the product remains within retail packaging (col. 4, lines 36-39, Lisso discloses that the product may be a bag of candy, the bag is interpreted to be the claimed retail packaging).
Claim 5, the expandable foam surrounds the product (col. 2, line 52, Lisso).
Claim 6, the containment jig shapes the expandable foam upon application to the vacuum packaging (col. 2, lines 49-50, Lisso).
Claim 7, the shipping information includes product information (col. 7, lines 62-66, Lisso).
Claim 8, removing the product surrounded in the expandable foam from the containment jig (col. 2, lines 53-54, Lisso).
Claim 9, adjusting the containment jig to the size of the product (col. 4, line 62 – col. 5, line 3, Lisso).
Claim 10, transporting the product on a conveyor (col. 3, lines 23-25, Lisso).
Claim 11, storing product size information within a barcode for the product; and locating the barcode on the product (col. 5, lines 41-47, Lisso).
Claim 12, regulating the thickness of the expandable foam around the product (col. 4, lines 43-50, Lisso).
Response to Arguments
Applicant's arguments filed 12/3/2025 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues Lisso does not disclose printing information directly onto an exterior surface of the expandable foam.
In response, it is noted that Lisso is not relied upon for the teaching of printing information directly onto expandable foam. Kuhn is relied upon to teach this as set forth above in the rejection of claim 1. Therefore, applicant’s argument is found to be not persuasive.
Regarding previous claim 3 and current claim 1, applicant argues that the combination of Lisso and Kuhn does not teach an opening strip embedded into the vacuum packaging since the opening strip of both Lisso and Kuhn is wrapped around the product.
However, as noted above, in the combination of Lisso and Kuhn, the opening strip would extend through the vacuum packaging. Since it extends through the vacuum packaging, it is necessarily embedded in the vacuum packaging. Therefore, applicant’s argument is found to be 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 THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
1/9/2026