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 .
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 – 5 and 7 – 9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 9, and 12 – 15 of U.S. Patent No. 12,281,442 to Hunter et al. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards oval paperboard products.
Hunter et al. discloses a racetrack oval paperboard product comprising two straight sidewalls parallel to one another in the longitudinal direction of the product, the racetrack oval paperboard products further comprising at least one modified starch and at least one crosslinker, wherein the at least one modified starch is present in an amount ranging from 2% to 20% by weight of the oval paperboard product, wherein the at least one crosslinker is present in an amount ranging from 0.5% to 8% by weight based on a dry weight of the starch content in the oval paperboard product, and wherein the racetrack oval paperboard product has a rigidity value ranging from 375 to 500 (Claims 1 and 6) as in claim 1. With respect to claim 2, the at least modified starch is a highly branched amylopectin present in an amount ranging from 10 to 20% based on the weight of the paperboard product (Claims 2 and 7). Regarding claim 3, the at least one crosslinker is chosen from glyoxal crosslinkers, potassium zirconium crosslinkers, ammonia zirconium crosslinkers, citric acid crosslinkers (Claims 3 and 8). For claim 4, the at least one crosslinker is present in an amount ranging from 0.5 to 6% based on the weight of the paperboard product (Claims 4 and 9). In claim 5, the product is a 9.2" x 12" oval plate, and wherein the plate has a thickness ranging from 18 points to 24 points (Claims 5 and 12). Hunter et al. further disclose a racetrack oval paperboard product comprising at least one modified starch and at least one crosslinker, wherein the paperboard product has two straight sides parallel to one another separated by two semicircular curved ends and further comprises: a substantially planar bottom region; a substantially frustoconical sidewall extending upward and outward from an outer periphery of the bottom region; an annular inner brim portion contiguous with a radially outer extent of the frustoconical sidewall; and an annular outer frustoconical brim portion contiguous with a radially outer extent of the annular inner brim portion, wherein a first arcuate portion interconnects the bottom region and a radially inner end of the frustoconical sidewall, a second arcuate portion interconnects the radially outer extent of the frustoconical sidewall and the annular inner brim portion, and a third arcuate portion interconnects the radially outer extent of the annular inner brim portion and the annular outer frustoconical brim portion, the annular outer frustoconical brim portion includes a distal concave lip portion around an outer periphery of the product, the frustoconical sidewall extends upward and outward from the bottom region at an angle of 22.0±0.5 degrees from a vertical line parallel to a central axis of the product, the annular inner brim portion slopes downward and outward from the radially outer extent of the frustoconical sidewall at an angle that is 4.0 ± 0.5 degrees from a horizontal line parallel to the bottom region, and the annular outer frustoconical brim portion slopes downward more steeply than the downward slope of the annular inner brim portion, extending from the radially outer extent of annular inner brim portion at an angle that is 40.0±0.5 degrees from the vertical line parallel to the central axis of the product (Claim 13) as in claim 7. With respect to claim 8, the substantially planar bottom region has a thickness of 0.018 ±0.0005 inch, the frustoconical sidewall has a thickness of 0.018±0.0005 inch, the annular inner brim portion has a thickness of 0.024 ± 0.0005 inch, and the annular outer frustoconical brim portion has a thickness of 0.026 ±0.0005 inch (Claim 14). Regarding claim 9,the product is a 9.2" x 12" racetrack oval plate (Claim 15).
Claims 1 – 5 and 7 – 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 9 and 12 – 15 of copending Application No. 19/006,541 to Hunter et al. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed towards oval paperboard products.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Hunter et al. discloses a racetrack oval paperboard product comprising two straight sidewalls parallel to one another in the longitudinal direction of the product, the racetrack oval paperboard products further comprising at least one modified starch and at least one crosslinker, wherein the at least one modified starch is present in an amount ranging from 2% to 20% by weight of the oval paperboard product, wherein the at least one crosslinker is present in an amount ranging from 0.5% to 8% by weight based on a dry weight of the starch content in the oval paperboard product, and wherein the racetrack oval paperboard product has a rigidity value ranging from 375 to 500 (Claim 1 and 6) as in claim 1. With respect to claim 2, the at least modified starch is a highly branched amylopectin present in an amount ranging from 10 to 20% based on the weight of the paperboard product (Claims 2 and 7). Regarding claim 3, the at least one crosslinker is chosen from glyoxal crosslinkers, potassium zirconium crosslinkers, ammonia zirconium crosslinkers, citric acid crosslinkers (Claims 3 and 8). For claim 4, the at least one crosslinker is present in an amount ranging from 0.5 to 6% based on the weight of the paperboard product (Claims 4 and 9). In claim 5, the product is a 9.2" x 12" oval plate, and wherein the plate has a thickness ranging from 18 points to 24 points (Claims 5 and 12). Hunter et al. further disclose a racetrack oval paperboard product comprising at least one modified starch and at least one crosslinker, wherein the paperboard product has two straight sides parallel to one another separated by two semicircular curved ends and further comprises: a substantially planar bottom region; a substantially frustoconical sidewall extending upward and outward from an outer periphery of the bottom region; an annular inner brim portion contiguous with a radially outer extent of the frustoconical sidewall; and an annular outer frustoconical brim portion contiguous with a radially outer extent of the annular inner brim portion, wherein a first arcuate portion interconnects the bottom region and a radially inner end of the frustoconical sidewall, a second arcuate portion interconnects the radially outer extent of the frustoconical sidewall and the annular inner brim portion, and a third arcuate portion interconnects the radially outer extent of the annular inner brim portion and the annular outer frustoconical brim portion, the annular outer frustoconical brim portion includes a distal concave lip portion around an outer periphery of the product, the frustoconical sidewall extends upward and outward from the bottom region at an angle of 22.0±0.5 degrees from a vertical line parallel to a central axis of the product, the annular inner brim portion slopes downward and outward from the radially outer extent of the frustoconical sidewall at an angle that is 4.0 ± 0.5 degrees from a horizontal line parallel to the bottom region, and the annular outer frustoconical brim portion slopes downward more steeply than the downward slope of the annular inner brim portion, extending from the radially outer extent of annular inner brim portion at an angle that is 40.0±0.5 degrees from the vertical line parallel to the central axis of the product (Claim 13) as in claim 7. With respect to claim 8, the substantially planar bottom region has a thickness of 0.018 ±0.0005 inch, the frustoconical sidewall has a thickness of 0.018±0.0005 inch, the annular inner brim portion has a thickness of 0.024 ± 0.0005 inch, and the annular outer frustoconical brim portion has a thickness of 0.026 ±0.0005 inch (Claim 14). Regarding claim 9,the product is a 9.2" x 12" racetrack oval plate (Claim 15).
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.
Claims 1 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Swoboda et al. (USPGPub 2009/0173775 A1).
Swoboda et al. discloses a racetrack oval paperboard product comprising two straight sidewalls parallel to one another in the longitudinal direction of the product (Paragraph 0052), the racetrack oval paperboard products further comprising at least one modified starch and at least one crosslinker (Paragraph 0052, wherein the starch may be natural starch, which comprises two components, amylopectin and amylose), wherein the at least one modified starch is present in an amount ranging from 2% to 20% by weight of the oval paperboard product (Paragraph 0121), and wherein the racetrack oval paperboard product has a rigidity value ranging from 375 to 500 (Page 4, Table 1) as in claim 1. With respect to claim 2, the at least modified starch is a highly branched amylopectin present in an amount ranging from 10 to 20% based on the weight of the paperboard product (Paragraphs 0052 and 0121, wherein the starch may be natural starch, which comprises two components, amylopectin and amylose). Regarding claim 3, the at least one crosslinker is chosen from glyoxal crosslinkers (Paragraph 0056). In claim 5, the product is a 9.2" x 12" oval plate, and wherein the plate has a thickness ranging from 18 points to 24 points (Claims 5 and 12). Hunter et al. further disclose a racetrack oval paperboard product (Paragraph 0052; Figures 15A – 15H) comprising at least one modified starch and at least one crosslinker (Paragraph 0052, wherein the starch may be natural starch, which comprises two components, amylopectin and amylose), wherein the paperboard product has two straight sides parallel to one another separated by two semicircular curved ends (Paragraph 0052; Figures 15A – 15H) and further comprises: a substantially planar bottom region (Paragraph 0052; Figures 15A – 15H); a substantially frustoconical sidewall extending upward and outward from an outer periphery of the bottom region (Paragraph 0052; Figures 15A – 15H); an annular inner brim portion contiguous with a radially outer extent of the frustoconical sidewall (Paragraph 0052; Figures 15A – 15H); and an annular outer frustoconical brim portion contiguous with a radially outer extent of the annular inner brim portion (Paragraph 0052; Figures 15A – 15H), wherein a first arcuate portion interconnects the bottom region and a radially inner end of the frustoconical sidewall (Paragraph 0052; Figures 15A – 15H), a second arcuate portion interconnects the radially outer extent of the frustoconical sidewall and the annular inner brim portion (Paragraph 0052; Figures 15A – 15H), and a third arcuate portion interconnects the radially outer extent of the annular inner brim portion and the annular outer frustoconical brim portion (Paragraph 0052; Figures 15A – 15H), the annular outer frustoconical brim portion includes a distal concave lip portion around an outer periphery of the product (Paragraph 0052; Figures 15A – 15H) as in claim 7. However, Swoboda et al. fail to disclose the at least one crosslinker is present in an amount ranging from 0.5% to 8% by weight based on a dry weight of the starch content in the oval paperboard product, the at least one crosslinker is present in an amount ranging from 0.5 to 6% based on the weight of the paperboard product, the product is a 9.2" x 12" oval plate, and wherein the plate has a thickness ranging from 18 points to 24 points, the frustoconical sidewall extends upward and outward from the bottom region at an angle of 22.0±0.5 degrees from a vertical line parallel to a central axis of the product, the annular inner brim portion slopes downward and outward from the radially outer extent of the frustoconical sidewall at an angle that is 4.0 ± 0.5 degrees from a horizontal line parallel to the bottom region, and the annular outer frustoconical brim portion slopes downward more steeply than the downward slope of the annular inner brim portion, extending from the radially outer extent of annular inner brim portion at an angle that is 40.0±0.5 degrees from the vertical line parallel to the central axis of the product, the racetrack oval paperboard product has a straight sidewall length ranging from 2.7 ± 0.3 inches, and the substantially planar bottom region has a thickness of 0.018 ±0.0005 inch, the frustoconical sidewall has a thickness of 0.018±0.0005 inch, the annular inner brim portion has a thickness of 0.024 ± 0.0005 inch, and the annular outer frustoconical brim portion has a thickness of 0.026 ±0.0005 inch.
With regard to the limitation of “the at least one crosslinker is present in an amount ranging from 0.5% to 8% by weight based on a dry weight of the starch content in the oval paperboard product, the at least one crosslinker is present in an amount ranging from 0.5 to 6% based on the weight of the paperboard product”, Swoboda et al. fail to disclose the amount of crosslinking agent based on the dry weight of the starch. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to vary the amounts/ratio of the starch and crosslinking agent based on the specific materials used, i.e. result effective variable. The addition of more starch and crosslinking agent allows for increased rigidity (Paragraph 0074).
With regard to the limitations “the product is a 9.2" x 12" oval plate, and wherein the plate has a thickness ranging from 18 points to 24 points, the frustoconical sidewall extends upward and outward from the bottom region at an angle of 22.0±0.5 degrees from a vertical line parallel to a central axis of the product, the annular inner brim portion slopes downward and outward from the radially outer extent of the frustoconical sidewall at an angle that is 4.0 ± 0.5 degrees from a horizontal line parallel to the bottom region, and the annular outer frustoconical brim portion slopes downward more steeply than the downward slope of the annular inner brim portion, extending from the radially outer extent of annular inner brim portion at an angle that is 40.0±0.5 degrees from the vertical line parallel to the central axis of the product, the racetrack oval paperboard product has a straight sidewall length ranging from 2.7 ± 0.3 inches, and the substantially planar bottom region has a thickness of 0.018 ±0.0005 inch, the frustoconical sidewall has a thickness of 0.018±0.0005 inch, the annular inner brim portion has a thickness of 0.024 ± 0.0005 inch, and the annular outer frustoconical brim portion has a thickness of 0.026 ±0.0005 inch”, Swoboda et al. clearly discloses that the paperboard product may have varying diameters (Paragraphs 0040 and 0079), curvature of the annular brim/flange (Paragraph 0079; Figures 15A-15H), and the angles of the sidewall between the bottom surface and the flange (Paragraph 0079; Figures 15A-15H). Therefore, it would have been an obvious matter of design choice to change the size of the oval paperboard product, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. MPEP 2144.04.
Conclusion
The prior art made of record on the PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Sandstrom discloses a starch paperboard product.
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/Patricia L. Nordmeyer/
Primary Examiner
Art Unit 1788
/pln/Primary Examiner, Art Unit 1788 August 26, 2026
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