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 .
Claims 1-3, 6-15, 21-25 stand.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3, 6-15, 21-25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1, 11, 22, Applicant now provided the new matter to “completely covering”. Applicant fails to provide in Applicant’s original specification the limitation “completely covering” (for example, Applicant has only provided limited perspective in Applicant’s figures and further Applicant discloses features 36 which provide air circulation, e.g., to ensure that cold air can circulate to improve temperature uniformity) and therefore Applicant’s claims now contain impermissible new matter. Claims 2-3, 6-10, 12-15, 21, 23-25 is/are rejected as being dependent on the above rejected claim(s). In order to overcome the above rejections, Applicant must remove the new matter.
In claims 1, 11, 22, Applicant now provides “wherein the first sheet is flat and the second sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that grooves of the second sheet are provided by recesses on a side of the second sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the sheet closer to the filler material…wherein the outer sheet is flat and the inner sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that the plurality of grooves of the inner sheet are provided by recesses on a side of the inner sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the inner closer to the filler material…with the first sheet and the second sheet completely covering the length and width of the starch piece, wherein the first sheet is flat and the second sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that grooves of the second sheet are provided by recesses on a side of the second sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the sheet closer to the filler material.” Applicant has provided the presence of grooves on the surface and therefore Applicant has provided that the area is not uniform. Applicant has not provided that the thickness is uniform in combination with the recesses in Applicant’s original specification. Applicant has also failed to provide projections in Applicant’s original specification. Application has also failed to provide filler matter in Applicant’s original specification. Claims 2-3, 6-10, 12-15, 21, 23-25 is/are rejected as being dependent on the above rejected claim(s). In order to overcome the above rejections, Applicant must remove the new matter.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
In claims 1, 11, 22, Applicant now provides “wherein the first sheet is flat and the second sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that grooves of the second sheet are provided by recesses on a side of the second sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the sheet closer to the filler material…wherein the outer sheet is flat and the inner sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that the plurality of grooves of the inner sheet are provided by recesses on a side of the inner sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the inner closer to the filler material…with the first sheet and the second sheet completely covering the length and width of the starch piece, wherein the first sheet is flat and the second sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that grooves of the second sheet are provided by recesses on a side of the second sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the sheet closer to the filler material.” Applicant has provided the presence of grooves on the surface and therefore Applicant has provided that the area is not uniform. Applicant has not provided that the thickness is uniform in combination with the recesses in Applicant’s original specification. Applicant has also failed to provide projections in Applicant’s original specification. Application has also failed to provide filler matter in Applicant’s original specification.
In addition to the above, Applicant fails to make clear as what Applicant intends “its” to refer to in claim 1.
Claim 1 recites the limitation "the filler matter". There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the sheet". There is insufficient antecedent basis for this limitation in the claim (as multiple sheets have been provided).
In addition to the above, Applicant fails to make clear as what Applicant intends “its” to refer to in claim 11.
Claim 11 recites the limitation "the filler matter". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the inner". There is insufficient antecedent basis for this limitation in the claim.
In addition to the above, Applicant fails to make clear as what Applicant intends “its” to refer to in claim 22.
Claim 22 recites the limitation "the filler matter". There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the inner". There is insufficient antecedent basis for this limitation in the claim.
Claim 22 recites the limitation "the starch piece". There is insufficient antecedent basis for this limitation in the claim.
Claims 2-3, 6-10, 12-15, 21, 23-25 is/are rejected as being dependent on the above rejected claim(s) 1, 11, 22.
In addition to the above, Applicant provides grooves in claims 10 and 15. However, Applicant already provided the above feature in the claims that the above claims depend from and therefore Applicant has failed to make Applicant’s intent clear.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 6, 8-10, 11-15, 22-25, is/are rejected under 35 U.S.C. 103 as being unpatentable over Vogel (20180215525) in view of Ozasa (US 20050202229 A1) and Heimann (US 3335653 A)
The Office notes the above 112 rejections: Vogel discloses:
1. A compostable or recyclable wall (walls such as 300, 308s, 304s, that contain 350 and air) for forming a container (capable of performing the above intended use), the wall comprising:
a filler material/piece (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84); a solid first sheet and a solid second sheet (300 and 308s/304s), wherein the first sheet and the second sheet sandwhich the piece to form a generally planar body having a length of at least 2 feet, a width of at least 2 feet, a thickness that is less than the length and width (paragraphs 40, 42-44, 64 with respect the above dimensions), with the first sheet and the second sheet.
With respect to the sheets formed primarily of compressed plant fiber pulp, the Office notes that Vogel discloses that the sheets are made of fiber (paragraph 64). Vogel does not appear to state that the sheets are molded plant fiber. Vogel does disclose that other portions disclose the above material (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84). It is well within the skill of one of ordinary skill in the art to use one suggested material within the device for another element, such as the above material for the sheets, such as for the purpose of providing a known material that is capable of being reused, recycled and composted as for example to promote the protection of the environment while still providing known materials that protect the contents of the device. Further, though not required, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to the piece, the Office notes that Vogel discloses related materials (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84) but does not appear to disclose starch. Ozasa discloses similar art and also discloses starch (such as but not limited to abstract that describes the internal core piece as various types of starches, and paragraph 342, 142). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Vogel in view of Ozasa (by providing the above material) in order to provide known materials with desirable thermal properties as well as environmental and economic benefits. Though not required, the Office merely notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to wherein the first sheet is flat and the second sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that grooves of the second sheet are provided by recesses on a side of the second sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the sheet closer to the filler material, the Office notes the significant 112 rejection above. Nevertheless, Heimann discloses the above feature (such as adjacent 42, as in fig 2). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Heimann (by providing grooves on the interior surface/sheet) in order to provide air flow to further protect the contents.
With respect to being “completely covering”, the Office notes that the above 112 rejections. Furthermore, the Office notes that Applicant has failed to provide any criticality related to “completely covering” and to the contrary Applicant has provided openings on the sheets in order to provide air circulation, e.g., to ensure that cold air can circulate to improve temperature uniformity. Nevertheless, Ozasa also discloses that the concept of space within a wall in completely enclosed/covered, inasmuch as Applicant discloses the above (such as described in paragraph 91 at least, which provide that the device can be either partially covered or completely covered). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Ozasa (by extending the existing walls to enclose the interior) in order to capture the intended contents within the walls such as air or starch or fiber so that it does not escape. In addition to the above, the Office notes that the above would also enhance the purpose of thermal insulation.
The claims are being treated as product-by-process limitations (such as with respect to “compacted” and “molded”) and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Nevertheless, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide compacted for example in order to provide a material that is more dense in order to enhance the purpose of the material, such as for the protection of contents and/or insulation benefits.
Vogel further discloses:
2. The wall of claim 1, further comprising a moisture barrier in or on the wall (paragraph 65).
3. The wall of claim 2, wherein the moisture barrier comprises a coating on the wall (paragraph 65).
6. The wall of claim 1, wherein the first sheet has a substantially planar main portion and a rim that extends at an angle relative to the main portion (310, 306 of which are at an angle such as 90 degree angle as in fig 7b).
8. The wall of claim 6, wherein the rim extends at a right angle relative to the main portion (310, 306 of which are at an angle such as 90 degree angle as in fig 7b).
9. The wall of claim 6, wherein the main portion is flat (310, 306 of which are at an angle such as 90 degree angle and flat as in fig 7b).
11. A compostable or recycleable bulk shipper (figs 1-12), the shipper comprising: a plurality of walls that are compostable or recycleable (walls such as 300, 308s, 304s, that contain 350 and air) including four side walls, a ceiling and a floor (as in fig 3), each of the plurality of walls including a solid inner sheet and a filler material/piece (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84); a solid outer sheet (300 and 308s/304s), wherein the inner sheet and the outer sheet sandwich the piece to form a generally planar body having a length of at least 2 feet, a width of at least 2 feet, a thickness that is less than the length and width (paragraphs 40, 42-44, 64 with respect the above dimensions), and wherein the side walls, floor and ceiling are secured to form the bulk shipper as a generally rectangular right prism(as in fig 3) having an interior volume of at least 8 cubic feet (paragraphs 40, 42-44, 64 with respect the above dimensions).
With respect to the sheets formed primarily of compressed plant fiber pulp, the Office notes that Vogel discloses that the sheets are made of fiber (paragraph 64). Vogel does not appear to state that the sheets are molded plant fiber. Vogel does disclose that other portions disclose the above material (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84). It is well within the skill of one of ordinary skill in the art to use one suggested material within the device for another element, such as the above material for the sheets, such as for the purpose of providing a known material that is capable of being reused, recycled and composted as for example to promote the protection of the environment while still providing known materials that protect the contents of the device. Further, though not required, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to the piece, the Office notes that Vogel discloses related materials (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84) but does not appear to disclose starch. Ozasa discloses similar art and also discloses starch (such as but not limited to abstract that describes the internal core piece as various types of starches, and paragraph 342, 142). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Vogel in view of Ozasa (by providing the above material) in order to provide known materials with desirable thermal properties as well as environmental and economic benefits. Though not required, the Office merely notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to wherein the outer sheet is flat and the inner sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that the plurality of grooves of the inner sheet are provided by recesses on a side of the inner sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the inner closer to the filler material, the Office notes the significant 112 rejection above. Nevertheless, Heimann discloses the above feature (such as adjacent 42, as in fig 2). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Heimann (by providing grooves on the interior surface/sheet) in order to provide air flow to further protect the contents.
With respect to being “completely covering”, the Office notes that the above 112 rejections. Furthermore, the Office notes that Applicant has failed to provide any criticality related to “completely covering” and to the contrary Applicant has provided openings on the sheets in order to provide air circulation, e.g., to ensure that cold air can circulate to improve temperature uniformity. Nevertheless, Ozasa also discloses that the concept of space within a wall in completely enclosed/covered, inasmuch as Applicant discloses the above (such as described in paragraph 91 at least, which provide that the device can be either partially covered or completely covered). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Ozasa (by extending the existing walls to enclose the interior) in order to capture the intended contents within the walls such as air or starch or fiber so that it does not escape. In addition to the above, the Office notes that the above would also enhance the purpose of thermal insulation.
The claims are being treated as product-by-process limitations (such as with respect to “compacted” and “molded”) and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Nevertheless, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to provide compacted for example in order to provide a material that is more dense in order to enhance the purpose of the material, such as for the protection of contents and/or insulation benefits.
Vogel further discloses:
12. The bulk shipper of claim 11, wherein the floor is strengthened with corrugated walls (paragraph 64 along with elements 202 and paragraph 120).
13. The bulk shipper of claim 11, wherein the side walls, floor and ceiling are secured to each other by interlocked complementary shapes (as in figs 4, 5).
14. The bulk shipper of claim 11, wherein the side walls, floor and ceiling are secured to each other using an adhesive (paragraph 66).
21. (New) The bulk shipper of claim 11, further comprising a pallet supporting the plurality of walls (fig 1 adjacent 50).
Heimann discloses:
10: at least one groove (already provided above in claim 1; see 112 rejection above).
15: grooved (already provided above in claim 1; see 112 rejection above).
The Office notes the above 112 rejections. Nevertheless, Vogel discloses:
22. (New) A compostable or recyclable wall for forming a container (walls such as 300, 308s, 304s, that contain 350 and air, figs 1-12 capable of performing the above intended use), the wall comprising: a solid first sheet and a solid second sheet (300 and 308s/304s), and a filler material piece (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84) sandwiched between and filling the space between the first sheet and the second sheet to form a generally planar body having a length of at least 2 feet, a width of at least 2 feet, a thickness that is less than the length and width with the first sheet and the second sheet completely covering the length and width of the starch piece (paragraphs 40, 42-44, 64 with respect the above dimensions),
With respect to the sheets formed primarily of compressed and molded plant fiber pulp, the Office notes that Vogel discloses that the sheets are made of fiber (paragraph 64). Vogel does not appear to state that the sheets are molded plant fiber. Vogel does disclose that other portions disclose the above material (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84). It is well within the skill of one of ordinary skill in the art to use one suggested material within the device for another element, such as the above material for the sheets, such as for the purpose of providing a known material that is capable of being reused, recycled and composted as for example to promote the protection of the environment while still providing known materials that protect the contents of the device. Further, though not required, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to the material/piece, the Office notes that Vogel discloses related materials (such as cellulose, hemp, jute, cotton, or a combination thereof in paragraph 84) but does not appear to disclose starch paper pulp. Ozasa discloses similar art and also discloses starch (such as but not limited to abstract that describes the internal core piece as various types of starches, and paragraph 342, 142). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Vogel in view of Ozasa (by providing the above material) in order to provide known materials with desirable thermal properties as well as environmental and economic benefits. Though not required, the Office merely notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to wherein the first sheet is flat and the second sheet is molded to define a plurality of grooves for air circulation with each of the first sheet and the second sheet having a uniform thickness across its area such that grooves of the second sheet are provided by recesses on a side of the second sheet farther from the filler material and corresponding projections inwardly toward the filler matter on a side of the sheet closer to the filler material, the Office notes the significant 112 rejection above. Nevertheless, Heimann discloses the above feature (such as adjacent 42, as in fig 2). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Heimann (by providing grooves on the interior surface/sheet) in order to provide air flow to further protect the contents.
Vogel discloses:
23. (New) The wall of claim 22, further comprising a moisture barrier in or on the compostable or recyclable wall (paragraph 65)..
24. (New) The wall of claim 23, wherein the moisture barrier comprises a coating on the compostable or recyclable wall (paragraph 65).
25. (New) The wall of claim 22, wherein an adhesive joins the first sheet and the second sheet along adjacent edges (paragraph 66).
Claims 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference and further in view of Globeride (JP2014189307).
The Combined Reference discloses the claimed invention above with the exception of the following which is disclosed by Globeride: oblique angle relative to the main portion (angled portion such as adjacent 27, 26 in fig 2); at least one groove/at least one wall is grooved (groove within device such as adjacent 27 in fig 2 and also fig 5). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Globeride (by providing the above shapes between elements such as within main portions and/or rims) in order to provide more secure attachment that helps prevent escape and potential damage of the contents.
Response to Arguments
Applicant's arguments with respect to the claims have been considered but are moot because in view of the amendment the search has been updated and a new rejection has been made.
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 D PERREAULT whose telephone number is (571)270-5427. The examiner can normally be reached Monday - Friday 7:00am-5:30pm.
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/ANDREW D PERREAULT/Primary Examiner, Art Unit 3735