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 . 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.
Response to Amendment
The Amendment filed 06/30/2026 has been entered. Claims 1-26 remain pending in the application, with claims 14-26 remaining withdrawn as being drawn to a non-elected invention.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: pressing element (in claim 1), supporting body and supporting element (claims 5 & 6).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. The pressing element is interpreted as element (15) (Figure 6), and the supporting body and supporting element are interpreted as elements (20) and (23), respectively (Figures 5 & 6).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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, 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 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.
Claim(s) 1-5, 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enguix Nicolas (U.S PG Pub 20210086942A1 - referred to hereinafter as Nicolas).
Regarding claim 1, Nicolas discloses a method for making a container (referred to as package) (Figures 2a-2c; figures 6-7b; [0001]), wherein Nicolas discloses the package comprising an outer skeleton (Figures 2a-2c & 6-7b – sheets 10, 20, 30 formed into a package) and an insert liner (40) that is thermoformable and adheres to the inner surface of the outer skeleton (figures 2a-2c & 6-7b). Nicolas discloses the method comprising a heating step [0195-0196] and a thermoforming step [0199] and a pressing/inserting step [0197-0198] for thermoforming the insert liner (40) and adhering it to the container inner surface of the outer skeleton (see generally [0193]-0199]). While Nicolas has disclosed the heating, thermoforming and pressing/inserting steps as simultaneous steps or as one step rather than separate split up steps, the rearrangement or splitting up of simultaneous steps into sequential steps is held to be obvious in the absence of new or unexpected results (MPEP 2144.04 VI (C)).
Regarding claim 2, Nicolas discloses the outer skeleton comprising a bottom wall with a perimetric edge, a lateral wall which extends between a lower edge connected to the perimetric edge (i.e. side walls of the container) and an upper edge which defines an upper opening, wherein the bottom wall and the lateral wall together define a compartment (see figures 2a-2c & 6-7b – it can be seen that the outer skeleton forms a container with side and bottom edges and with an upper opening). Nicolas also discloses that the thermoformable film is pressed with the pressing element against the bottom wall and/or against at least one portion of the side wall (Figure 6 – the liner (40) covers the entirety of the inner package (1) [0187] & Figures 8a-8b which shows piston 5 pressing down).
Regarding claim 3, the outer skeleton comprises a concave or curved wall and further a rectangular hemispherical wall (see figures 7a-7b & 9). Further, it is noted that the instant limitations merely amount to a change in shape or size limitations, and as such it is held that changes in shape and size are obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 IV (A) & (B)).
Regarding claim 4, Nicolas has disclosed that the shape of the pressing element (piston 5) matches the shape of the compartment i.e. inner cavity of the package (1) (see figures 8a-8b & figures 7a-7b).
Regarding claim 5, Nicolas has disclosed the outer skeleton being kept inside a seat (cavity 41) supported by a supporting body (4) and wherein the film and outer skeleton are pressed against the supporting body (see figures 8a-8b).
Regarding claim 8, Nicolas discloses the outer skeleton being formed of multiple sheets (10,20,30) i.e. superimposed panels, between which attachment means (3) (which is a heat activable glue) [0184-0186] are present and wherein in the thermoforming and inserting step, the action of the piston (with heating means [0196]) causes the heat-activable glue to be bond panels [0196 & 0184].
Regarding claim 9, Nicolas discloses the liner (40) to cover the entirely of the outer skeleton inner surface [0187].
Regarding claim 10, Nicolas discloses an embodiment wherein thermoforming of the liner (40) over the outer skeleton and inserting of the pressing element taking place wherein the seat is open i.e. with suction holes (5.3) and having injectors (5.2) in the piston that allow air applied by the piston to exit out [0197]. Thus, in this embodiment the seat is initially closed when the outer skeleton and liner are placed on it and then open (to outside environment in order for air to be expelled out) when inserting is taking place, i.e. being closed during placement and thermoforming and then open during pressing.
Regarding claim 11, Nicolas discloses another embodiment wherein the thermoforming of the film is carried out on the outer skeleton, and the inserting step is carried out while the outer skeleton and liner are inside the seat which is closed i.e. wherein the piston is pressing down onto the seat (thus the seat being closed) and the inserting step is carried out in such a manner, with the seat being closed (see figures 8a; [0194-0195]).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enguix Nicolas (U.S PG Pub 20210086942A1 - referred to hereinafter as Nicolas), and Fritz (U.S Patent 6257866B1).
Regarding claims 6-7, Nicolas has not explicitly disclosed the temperature to which the pressing element and the heating element are kept, however, it is known to heat both the upper platen (pressing element) and lower platen (supporting element) to temperatures in the range as instantly claimed, in thermoforming, as disclosed by Fritz.
Fritz, drawn also to the art of thermoforming plastic sheets (Abstract), discloses a typical temperature for forming the sheet to be between 100F to 400F (~37C to 204C) (Column 3, lines 39-41), and discloses upper (16) and lower platens (18) which are both able to be heated and have heating sources (see figure 7) and the upper and lower platen being brought into contact together to press and thermoform the sheet (i.e. thermoforming and inserting step) (see figure 9 which illustrates the method).
It would have been obvious to an ordinarily skilled artisan to have modified the method of Nicolas, with the step of heating the pressing element and support element to a temperature in the range as claimed, as disclosed by Fritz, to arrive at the instant invention, in order to be able to be able to uniformly heat at a desired temperature (Column 3, lines 38-40).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enguix Nicolas (U.S PG Pub 20210086942A1 - referred to hereinafter as Nicolas) and Knowlton (U.S PG Pub 20180036092A1).
Regarding claim 12, Nicolas has not explicitly disclosed the pressing element expanding inside the compartment, however, such a limitation is known from Knowlton.
Knowlton, drawn also to the art of thermoforming a composite [0059], discloses thermoforming by blow-molding, wherein a heated parison is expanded against surfaces a mold using compressed gases [0059]. Thus, blow-molding is a known technique in thermoforming, wherein a pressing tool (parison) is expanded.
It would have been obvious to an ordinarily skilled artisan to have modified the method of Nicolas, with the step of the pressing element expanding against the inner surface, as disclosed by Knowlton, since as such blow molding is a known technique of thermoforming, and the combination of known prior art elements according to known methods is obvious to yield predictable results (thermoforming) (MPEP 2143 I(A)).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Enguix Nicolas (U.S PG Pub 20210086942A1 - referred to hereinafter as Nicolas) and Doornheim (U.S PG Pub 20220143898A1).
Regarding claim 13, Nicolas has not explicitly disclosed the height of the container as claimed, however, it is noted that the instant limitations merely amount to a change in size limitations, and as such it is held that changes in size are obvious to an ordinarily skilled artisan in the absence of new or unexpected results (MPEP 2144.04 IV (A) & (B)). Regardless, in the interest of advancing prosecution, prior art guidance is provided below.
Doornheim, drawn also to the art of thermoforming an article that can contain a food product (Abstract; [0082] – cup) (Nicolas also discloses a container for food – see [0210] of Nicolas), discloses that the thermoformed article to have a height of 90.6mm [0096], thus disclosing a height that is in the range as claimed and thus anticipating the range.
It would have been obvious to an ordinarily skilled artisan to have modified the method of Nicolas, with the height of the container as disclosed by Doornheim, since as such this would merely involve a change in the size, which is held to be obvious in the absence of new or unexpected results (MPEP 2144.04 IV (A)).
Response to Arguments
Applicant's arguments filed 06/30/2026 have been fully considered but they are not persuasive.
Applicant argues that because Nicolas does not teach separate, sequential steps, it does not obviate the instant invention.
The examiner disagrees. It is noted that Nicolas discloses each and every step as claimed, but in a different order, or rather as a set of simultaneous steps, rather than sequential steps. The end result of the process steps is the same as in Nicolas and as instantly claimed. Applicant argues that because Nicolas does not teach an inserting step after a thermoforming step, that Nicolas cannot use thin film, however, nowhere in claim 1 is it recited what size films are used, and the effect of the insertion step on the films, or the fact that the insertion step being after the thermoforming step can allow for use of thin films. The claims are read in light of the specification, but limitations from the specification are not read into the claims.
Conclusion
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 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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
Prosecution Insights