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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11807440; claims 1-14 of U.S. Patent No. 11247827; and claims 1-15 of U.S. Patent No. 12258195. Although the claims at issue are not identical, they are not patentably distinct from each other because each claim a compostable packaging wrap consisting of an organic compostable material formed into a strip of material including at least 50% starch and a polymer softener such that said strip being no more than 2.5 inches in thickness can be rolled into a 1 inch radius.
Claim Rejections - 35 USC § 103
4. 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 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.
5. 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.
6. Claims 1-12 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andersen et al. (US 5830548 A; hereinafter Andersen) in view of Morley (US 5733403 A).
Regarding claims 1-4, 7-11, and 15, Andersen teaches articles of manufacture and methods for manufacturing laminate structures including inorganically filled sheets consisting of a strip (see Figures 14-16) provided by a single foamed layer (Col 65 lines 20-25) that is formed of a compostable material that includes at least 85% starch (Col 29 lines 1-20; and Col 100 lines 15-35) and a compostable softener (Examiner notes that polyvinyl alcohol is a softener) such that, the strip is sufficiently flexible that the strip can be rolled. Andersen ‘548 lacks teaching of requisite strip and roll dimensions; and perforations.
Morley teaches a product packaging material that is sufficiently flexible to be wound into a roll (22; see Fig. 2) having a depth of the strip is between 1/8 inches and 2.5 inches; a radius of the rolled strip is between 1 inch and 20 inches; and wherein a density of the strip is within at least one of a first range that is 0.25-4.0 g/cm3, a second range that is 0.6-1.0 g/cm3, a third range that is 0.8-2.0 g/cm3, and a fourth range that is 1.0-3.5 g/cm3 (Morley; Col 5 lines 25-41). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to produce the web of Andersen ‘548 in a roll around a mandrel, as taught by Morley, as an efficient means to create the packaging material (Morley; Col 3 lines 35-45). Further, Examiner notes that it would have been obvious to change various dimensions of the wrap to accommodate various container specifications since such modifications would have involved a mere change in the size and/or shape of a component. A change in size and/or shape is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). In re Dailey, 357 F.2d 669,149 USPQ 47 (CCPA 1966).
Regarding claims 5-6, Andersen, as modified above, teaches a wrap wherein the compostable material includes a water-retardant material (Andersen; Col 13 lines 50-62).
Regarding claim 12, Andersen, as modified above, teaches a wrap wherein 10-25 vol% of the strip is pores or voids (Andersen; Col 30 lines 5-20).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Andersen in view of Morley as applied to claim 1 above, and further in view of Andersen et al. (US 5665439 A; hereinafter Andersen ‘439).
Regarding claims 13-14, Andersen, as modified above, discloses the claimed invention except for perforations extending through the layer. Andersen ‘439 teaches articles of manufacture fashioned from hydraulically settable sheets comprising a plurality of sections, wherein a boundary between two adjacent sections of the plurality of sections is perforated (178; Col 43 lines 11-23). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to perforate the web at locations meant to be potentially folded, as taught by Andersen ‘439.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R DEMEREE whose telephone number is (571)270-1982. The examiner can normally be reached 9:00 am - 5:00 pm, Monday through Friday.
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 J 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.
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/CHRISTOPHER R DEMEREE/Primary Examiner, Art Unit 3734
