DETAILED ACTION
The Office acknowledges receipt of the Applicant’s response and amendment of 1 July 2026.
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 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beck (US Patent 3,349,153) in view of Fortney (US Patent 4,637,811).
Regarding claim 1, Beck discloses a method for forming at least one cup (col. 2 lines 17-19 – “The die 1 has a cavity 1a which determines the shape of the finished article, and the drawing ram 3 suitably engages in it.”; Figs 1 and 2 show a cylindrical shaped cavity which would result in a cup shape) into a packaging material (F) by means of a forming device (fig. 1), wherein the method comprises the steps of:
positioning (fig. 1; col. 2 lines 18-23) the packaging material (F) between a die (1) and a hold-down device (2) of the forming device, wherein the die and the hold-down device are unheated (Beck does not provide for any heating device or heating step for die 1 or hold-down device 2);
closing (col. 2 lines 18-27 – “The ends of the channels connect with concentric grooves in the faces 1b and 2a of the clamping jaws pressing on the foil”; col. 2 lines 33-35; fig. 1 – shows them apart before clamping) the forming device by a relative movement between the die and the hold-down device;
forming an aerostatic bearing (col. 1 lines 43-56 – “it is most advantageous to supply compressed air to both clamping jaws”; col. 2 lines 30-38, 65-69) between the packaging material and the hold-down device and/or between the packaging material and the die; and
forming the packaging material (col. 2 lines 1-3, 14-18) into at least one recess (1a) of the die by means of a punch (3) of the forming device.
Beck fails to disclose wherein the packaging material comprises a fibre-based packing material.
However, Fortney teaches a similar a method (Both Beck and Fortney utilize deep-draw forming; Beck – col. 1 lines 29-56; Fortney – col. 4 lines 24-27) for forming at least one cup (14; or 100) into a packaging material (12) by means of a forming device (figs. 1, 4-7), wherein the packaging material comprises a fibre-based packaging material (Abstract; col. 4 lines 30-33), and the method comprises the steps of: positioning (fig. 4) the packaging material (12) between a die (22) and a hold-down device (50; col. 5 lines 8-12) of the forming device, wherein the die and the hold-down device are unheated (Fortney does not provide for any heating device or heating step for die 22 or hold-down device 50).
Given the teachings of Fortney (col. 1 lines 23-26; col. 3 lines 24-27), it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the method of Beck to make use of the fibre-based packaging material of Fortney. Beck and Fortney both disclose methods of forming at least one cup by using a deep drawing method to form the device. Neither Beck, nor Fortney disclose heating elements or steps for their respective dies and hold-down devices. Making the modification would provide the advantages of improved printability and greater consumer acceptance of the containers made of such material.
The Office deems Beck as modified by Fortney to disclose the claimed combination. Wherein the Applicant may argue that the absence of heating either the die or hold-down device (i.e. “wherein the die and the hold-down device are unheated”) is not specifically cited, the Office further notes that it would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to have the die and the hold-down device be unheated, since it has been held that omission of an element and its function in a combination where the remaining elements perform the same function as before involves only routine skill in the art (In re Karlson, 136 USPQ 184).
Neither Beck nor Fortney provide for any heating device or heating step for their respective die or hold-down device. Also, the Applicant notes in their specification that, in field of the prior art of deep-drawing, the die and hold-down device are “frequently heated” (paragraph 0004), but this does not mean that they are always heated. Additionally, the Applicant notes in their specification (paragraph 0004) that heating is used to “reduce the friction between the packaging material and the tools and to counteract creasing in the packaging material”. Fortney (col. 6 line 68 – col. 7 line 4) teaches that “the excess paper in the material-receiving cavity acts to lessen strain on the drawin paper material during container formation, thereby reducing the incidence of rupture or tearing of the blank of paperboard material”. Fortney demonstrates that a reduction in rupture or tearing forces on the material is achieved by having excess paper. This means that it is achieving a similar result (i.e. reducing friction) to what would otherwise be achieved by heating according to the Applicant. As such, Fortney would not need to heat the die or hold-down device to achieve a desired reduction in forces (i.e. friction) on the fibre-based material.
The Office deems that given the teachings of Beck and Fortney, the combination of these two references would result in an invention that would perform the claimed method including forming at least one cup into a packaging material by means of a forming device wherein the packaging material comprises a fibre-based packaging material, and wherein the die and the hold-down device are unheated. The presence of heating the die and/or hold-down device is not taught by this combination, nor is it required for the combination to performed the desired method. The absence of such a step is desired because it simplifies design and makes it less costly to manufacture or operate.
Regarding claim 2, Beck discloses wherein the aerostatic bearing produces a holding force on the packaging material (col. 1 lines 33-57; col. 2 lines 29-38; According to paragraph 0087 of the Applicant’s specification, the holding force is a result of the aerostatic bearing being activated while the forming device and die are closed. As such, Beck is deemed to produce this same holding force as the aerostatic bearing is activated while the forming device and die are closed), wherein the method further comprises:
determining a frictional force based on a geometry of the at least one cup (col. 1 lines 43-52), which frictional force is required to minimize creasing (col. 1 lines 21-36; col. 2 lines 60-72) around the at least one cup;
determining the holding force based on the determined frictional force (col. 1 lines 43-52; col. 2 lines 65-68); and
forming the aerostatic bearing based on the determined holding force (col. 1 lines 43-52; col. 2 lines 65-68).
Regarding claim 3, Beck discloses wherein forming the aerostatic bearing comprises:
generating a first fluid cushion (via #4 in #1) between a first bearing surface (1b) of the die and the packaging material and thereby forming a first aerostatic bearing (col. 1 lines 51-56; col. 2 lines 27-37); and/or
generating a second fluid cushion (via #4 in #2) between a second bearing surface (2a) of the hold-down device and the packaging material and thereby forming a second aerostatic bearing (col. 1 lines 51-56; col. 2 lines 27-37).
Regarding claim 4, Beck discloses wherein generating the first fluid cushion comprises supplying a fluid (via #4 in #1; col. 1 lines 51-56; col. 2 lines 27-37) between the die (1) and the packaging material (F) via the first bearing surface (1b).
Regarding claim 5, Beck discloses wherein generating the second fluid cushion comprises supplying a fluid (via #4 in #2; col. 1 lines 51-56; col. 2 lines 27-37) between the hold-down device (2) and the packaging material (F) via the second bearing surface (2a).
Regarding claim 6, Beck discloses wherein the first bearing surface (1b) of the die (1) and/or the second bearing surface (2a) of the hold-down device (2) each have/has a plurality of segments (segments defined by multiple channels of #4; e.g. 4a, 4b, 4c, 4d; fig. 2) and forming the aerostatic bearing comprises:
discharging a fluid at a first pressure in a first segment of the respective plurality of segments (col. 2 lines 38-50); and
discharging a fluid at a second pressure in a second segment of the respective plurality of segments (col. 2 lines 38-50), wherein the first and second pressures differ (col. 2 lines 38-50 – “Since there are relatively few air channels in the outermost zone, the total cross-section of the first exposed air ducts 4a is relatively small so that relatively little compressed air escapes. The next air channels to be exposed by the sliding film F are the air channels 4b located on shorter radii, and so on…”; Fig 2 also shows varying amounts of channels in the circles. The varying size of the circles and holes will result in different pressures at different segments).
Regarding claim 7, Beck discloses wherein forming the aerostatic bearing comprises generating at least one fluid flow, which, starting from the die (1) and/or the hold-down device (2), is directed onto the packaging material (F) and at least partially along the packaging material in the direction of the at least one recess (1a) of the die (col. 2 lines 27-37, The fluid flow creates a slide toward the recess; Also col. 2 lines 55-60; Air ducts 8 are angled on the film F towards the direction of the recess 1a as seen in fig. 1).
Response to Arguments
Applicant's arguments filed 1 July 2026 have been fully considered but they are not persuasive.
The Applicant’s arguments rely on amendments to the claims which are deemed to be addressed with a new ground of rejection detailed above.
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 ANDREW M TECCO whose telephone number is (571)270-3694. The examiner can normally be reached M-F 11a-7p.
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/ANDREW M TECCO/ Primary Examiner, Art Unit 3731
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