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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on Jan. 23, 2026 has been entered.
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.
Claim(s) 10, 21-25, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bloch et al. (US 5780150) (“Bloch”), in view of Green (US 2009/0123736 A1).
With respect to claim 10, Bloch teaches a corrugated box (abstr.), comprising water-activated adhesive tape (abstr., col. 3, lines 45-59), comprising a repulpable material layer - element 10 (col. 3, lines 45-47), a synthetic resin film adjacently affixed to the repulpable material layer – element 12, and a water activated adhesive adjacently affixed to the synthetic resin film (col. 3, lines 45-53, col. 4, lines 27-29, Fig. 1). Bloch discloses non-limiting examples of the synthetic resin film (col. 3, lines 48-51), but is silent with respect to the synthetic resin film being a water-soluble material layer.
Green discloses a packaging material comprising a layer of a repulpable material and a water-soluble material layer adjacently affixed to the repulpable material layer as a reinforcement material, wherein an adhesive used on the water-soluble material layer is a water-soluble adhesive or water-based adhesive (abstr., 0012, 0022, 0039, 0049). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the adhesive tape of Bloch a water-soluble material layer adjacently affixed to the repulpable material layer, as element 12 of Bloch, as water-soluble material layer such as a layer of polyvinyl alcohol is known in the art of packaging materials. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 21, Bloch and Green teach the box of claim 10. Bloch discloses the repulpable material layer is a cellulosic sheet (abstr., col. 3, lines 45-47).
As to claim 22, Bloch and Green teach the box of claim 10. Bloch discloses the repulpable material layer is kraft paper sheet (col. 3, lines 45-47, 62-64).
With respect to claim 23, Bloch and Green teach the box of claim 10. Green discloses water-soluble material layer comprises a film of polyvinyl alcohol (0022, 0039, 0047).
Regarding claim 24, Bloch and Green teach the box of claim 23. Green discloses a plasticized film comprising polyvinyl alcohol (0047).
As to claim 25, Bloch and Green teach the box of claim 10. Bloch discloses the water-activated adhesive layer comprises starch (col. 4, lines 27-29).
With respect to claim 33, Bloch and Green teach the box of claim 10. As discussed above with respect to claim 10, in Bloch, water-activated adhesive tape (abstr., col. 3, lines 45-59) comprises a repulpable material layer - element 10 (col. 3, lines 45-47), a synthetic resin film adjacently affixed to the repulpable material layer – element 12, and a water activated adhesive adjacently affixed to the synthetic resin film (col. 3, lines 45-53, col. 4, lines 27-29, Fig. 1). Green discloses a layer of a repulpable material and a water-soluble material layer, wherein a top major surface of the water-soluble material is adjacently affixed to a bottom major surface of the repulpable material layer as a reinforcement material (abstr., 0012, 0022, 0039, 0049). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the box disclosed by Bloch and Green, the water-activated adhesive layer of Bloch is contacted with a bottom major surface of the water-soluble material layer, that is with the layer of polyvinyl alcohol.
Claim(s) 26-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bloch, in view of Green, and further in view of Workman (US 4143006).
With respect to claim 26, Bloch and Green teach the box of claim 10, but are silent with respect to a reinforcing structure as recited in claim 26. Workman discloses that it is known in the art of adhesive tapes comprising paper as a carrier to include a reinforcing structure comprising a yarn comprising glass fiber (col. 1, lines 11-17, 55-60). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the box of Bloch and Green, in the adhesive tape, a reinforcing structure, the reinforcing structure comprising a yarn including glass fibers for reinforcement.
Regarding claim 27, Bloch, Green and Workman teach the box of claim 26. Workman discloses the reinforcing structure comprises glass fiber (abstr., col. 1, lines 11-17, 55-60).
Regarding claim 28, Bloch and Green teach the box of claim 10. Workman discloses that it is known in the art of adhesive tapes comprising paper as a carrier to include a reinforcing structure comprising a yarn comprising glass fiber (col. 1, lines 11-17, 55-60). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the box of Bloch and Green, in the adhesive tape, a reinforcing structure between the repulpable material layer and the water-soluble material layer the reinforcing structure comprising a yarn including glass fibers for reinforcement.
Claim(s) 29 and 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bloch et al. (US 5780150) (“Bloch”), in view of Green (US 2009/0123736 A1).
With respect to claim 29, Bloch teaches a corrugated box (abstr.), comprising water-activated adhesive tape (abstr., col. 3, lines 45-59), comprising a repulpable material layer - element 10 (col. 3, lines 45-47), a synthetic resin film adjacently affixed to the repulpable material layer – element 12, and a water activated adhesive adjacently affixed to the synthetic resin film (col. 3, lines 45-53, col. 4, lines 27-29, Fig. 1). Bloch discloses non-limiting examples of the synthetic resin film (col. 3, lines 48-51), but is silent with respect to the synthetic resin film being a water-soluble material layer.
Green discloses a packaging material comprising a layer of a repulpable material and a water-soluble material layer adjacently affixed to the repulpable material layer as a reinforcement material, wherein an adhesive used on the water-soluble material layer is a water-soluble adhesive or water-based adhesive (abstr., 0012, 0022, 0039, 0049). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the adhesive tape of Bloch a water-soluble material layer as element 12 of Bloch, adjacently affixed to the repulpable material layer, as water-soluble material layer such as a layer of polyvinyl alcohol is known in the art of packaging materials. It has been held to select a known material based on its suitability for its intended use to be an obvious design choice. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
The recitation “a blown, calendered, or cast polyvinyl alcohol (PVOH) film” defines the product by how the product is made, thus, claim 29 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps (MPEP 2113). In the instant case the recited steps imply a structure of claim 29. The references teach the structure.
With respect to claim 34, Bloch and Green teach the box of claim 29. As discussed above with respect to claim 10, in Bloch water-activated adhesive tape (abstr., col. 3, lines 45-59) comprises a repulpable material layer - element 10 (col. 3, lines 45-47), a synthetic resin film adjacently affixed to the repulpable material layer – element 12, and a water activated adhesive adjacently affixed to the synthetic resin film (col. 3, lines 45-53, col. 4, lines 27-29, Fig. 1). Green discloses a layer of a repulpable material and a water-soluble material layer, wherein a top major surface of the water-soluble material is adjacently affixed to a bottom major surface of the repulpable material layer as a reinforcement material (abstr., 0012, 0022, 0039, 0049). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention that in the box disclosed by Bloch and Green, the water-activated adhesive layer of Bloch is contacted with a bottom major surface of the water-soluble material layer, that is with the layer of polyvinyl alcohol.
Claim(s) 30-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bloch, in view of Green, and further in view of Workman (US 4143006).
With respect to claim 30, Bloch and Green teach the box of claim 29, but are silent with respect to a reinforcing structure as recited in claim 26. Workman discloses that it is known in the art of adhesive tapes comprising paper as a carrier to include a reinforcing structure comprising a yarn comprising glass fiber (col. 1, lines 11-17, 55-60). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the box of Bloch and Green, in the adhesive tape, a reinforcing structure, the reinforcing structure comprising a yarn including glass fibers for reinforcement.
Regarding claim 31, Bloch, Green and Workman teach the box of claim 30. Workman discloses the reinforcing structure comprises glass fiber (abstr., col. 1, lines 11-17, 55-60).
Regarding claim 32, Bloch and Green teach the box of claim 30. Workman discloses that it is known in the art of adhesive tapes comprising paper as a carrier to include a reinforcing structure comprising a yarn comprising glass fiber (col. 1, lines 11-17, 55-60). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the box of Bloch and Green, in the adhesive tape, a reinforcing structure between the repulpable material layer and the water-soluble material layer, the reinforcing structure comprising a yarn including glass fibers for reinforcement.
Response to Arguments
Applicant’s arguments filed on Jan 23, 2026 have been fully considered.
In view of the recent amendment, 35 USC 112(b) rejection of claim 28 has been withdrawn.
Regarding a missing IDS of Oct. 8, 2025, wherein four foreign documents have been filed on Oct. 8, 2025 see below.
The Applicant argued that Bloch was improperly combined with Green as Bloch teaches away from using a water-soluble material onto which a water-activated adhesive is adjacently affixed. The Applicant argued that the film of Bloch is water-impermeable by design as the adhesive remains in a moistened state in order to be applied for a relatively long “open-time.” The Applicant argued that Bloch teaches that when the adhesive is coated onto a water-absorbent material, the tape will rapidly dry out. The Examiner notes Bloch does not disclose what specifically is “a relatively long ‘open-time’”. The Applicant relied on discussion of prior art in Bloch arguing that water from the water-activated adhesive would be quickly absorbed by the water-soluble material layer instead of by the water-activated adhesive rendering the adhesive useless in only few seconds and unsatisfactory for its intended purpose.
The Examiner notes Green discloses that when PVOH is applied in a sheet form, any known technique for adhering the sheet may be used, including use of a water-based adhesive, a water-soluble adhesive or their combination (0039). Thus, Green provides for use of a water-soluble adhesive and water-based-adhesive next to a PVOH sheet without concern of water being absorbed by the PVOH sheet. Thus, since Bloch does not specify how long is the “open-time” it is the Examiner’s position that the biaxially-oriented material of Bloch can be substituted with polyvinyl alcohol.
The Applicant also argued that in Green PVOH functions as a reinforcement layer next to a repulpable material layer. The Applicant discussed par. [0045] of the instant specification wherein it is specified that the term “affixed” as used in independent claims 10 and 29, “excludes the use of a partial, continuous, or intermittent adhesive layer or of any adhesive material between the repulpable material layer 110 and the water-soluble material layer 120.” The Examiner notes par. [0045] of the specification states “Unless specifically indicated, “affixed” when used in context of the repulpable material layer 110 and water-soluble material layer 120, excludes the use of partial, continuous, or intermittent adhesive layer or of any adhesive material between the repulpable material layer 110 and the water-soluble material layer 120.”
The Applicant argued that a person of ordinary skill in the art would understand that the water-activated adhesive material is not sandwiched between the repulpable material layer and the water-soluble material layer as in Green, but the adhesive layer is instead adjacently affixed to the water-soluble material layer as an exposed layer. The Examiner notes in the rejection it was not suggested that the water-activated adhesive is sandwiched between the repulpable material layer and the water-soluble material layer. In the rejection it was suggested that the synthetic resin film of Bloch is formed of water-soluble material layer such as polyvinyl alcohol, as discussed above. The water-activated adhesive would then be adjacently affixed to the polyvinyl alcohol layer.
The Applicant further argued that Green does not reasonably suggest or disclose use of an adhesive. The Examiner notes Green is a secondary reference that was cited for the teaching of packaging material comprising a layer of a repulpable material and a water-soluble material layer adjacently affixed to the repulpable material layer as discussed above.
The Applicant mentioned again “the express teachings of Bloch that a water-activated adhesive on a water-absorbent backing layer is rendered “useless: in just a ‘few seconds’.” (p. 9 of the Remarks). The Examiner notes that part of Bloch discusses application of a water-activated adhesive to a water-absorbent paper (col. 2, lines 25-35). Green discloses a layer of PVOH in a sheet form, not an absorbent paper (0039).
The Examiner appreciates the discussion regarding a water-activated adhesive v. water-based or water-soluble adhesive. The Examiner notes she is aware of the differences. The Examiner notes in the rejection it is the water-activated adhesive of Bloch that is affixed to the water-soluble material layer of Green, as discussed above at par. 6.
The Applicant argued that Green requires PVOH as the reinforcement layer, while claims 26 and 30 each recite a reinforcing structure, thus, the PVOH layer should be read as a separate element from the reinforcing structure. The Examiner notes in the rejection of claim 30, the PVOH layer is considered as a separate element from the reinforcing structure, while Workman provides a reinforcing structure as discussed above.
The Applicant further argued that independent claim 29 recites a “cast polyvinyl alcohol (PVOH) film adjacently affixed to the repulpable material layer, wherein the PVOH film is machine direction oriented or biaxially oriented”, while claim 12 of Green recites the PVOH being applied to the repulpable substrate as a liquid that dries into a film.” (p. 10 of the Remarks). The Applicant argued Green suggests only increasing the thickness of the polyvinyl alcohol layer to increase tear resistance. The Examiner notes PVOH may be applied to the repulpable substrate as a liquid or in a solid form such as a sheet (0039).
The Applicant discussed new claims 33 and 34. The Applicant argued that Green teaches or reasonably discloses use of water-soluble or water-based adhesive between a repulpable layer and a water-soluble material layer. The Examiner notes in the rejection the secondary reference Green was cited for the teaching of a water-soluble material layer adjacently affixed to a bottom surface of the repulpable material layer. The resin film of Bloch was substituted with a layer of PVOH as discussed above
Information Disclosure Statement
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
The Examiner notes there are four foreign patent documents filed on Oct. 8, 2025 in the application file, however, no IDS document listing these foreign patent documents is present in the application file. An IDS of Oct. 8, 2025 is listed in an Electronic Filing System Acknowledgement Receipt, but the document itself is missing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNA PLESZCZYNSKA whose telephone number is (571)270-1617. The examiner can normally be reached M-F ~ 11:30-8.
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/Joanna Pleszczynska/
Primary Examiner, Art Unit 1783