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 .
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 1-5, 7-8, 10, 12-13 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. Regarding claim 1, there is no support for a downwardly projecting lip, lip is downwardly projecting when the packaging apparatus is fully assembled and thus it constitutes new matter. It is noted that the original disclosure discloses a lip but does not describe the direction of the lip.
Claim Rejections - 35 USC § 112
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.
Claims 1-5, 7-8, 10, 12-13 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, due to the lack of written description of a downwardly projecting lip, it is unclear what a downwardly projecting lip projects from. It is not clear where the starting reference of the lip is such that it projects downward. It is further unclear what the packaging apparatus fully assembled is since applicant does not define what this state of being fully assembled. In addition, it is unclear if the at least one protrusion forming a leg is part of the mould forming the top and bottom or whether the top and bottom comprises the at least one protrusion as recited. In particular, it is unclear whether this protrusion is part of the intermediate product of the mould or whether this protrusion is part of the final product of the top and bottom.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 7-8, 12-13 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 2011/0174657 to Barnett.
Regarding claim 1, Barnett discloses a packaging apparatus (Fig 1) comprising a top (20) configured for receipt of a payload therein and including a downwardly projecting lip (A, Fig 3 below) around a perimeter of top, wherein the lip is downwardly projecting when the packaging apparatus is fully assembled (Fig 1), a bottom (15) configured for receipt of the payload therein and formed as counterpart to top, a locking mechanism (19a, 19b) to lock the top (20) to the bottom (15), wherein the top (20) and bottom (15) can be formed from the same mould including at least one protrusion (25) forming a leg externally of the packaging apparatus (Fig 1) and simultaneously a void for storage internally of the packaging apparatus (Figs 2-3).
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Regarding claim 2, Barnett further discloses bottom (15) nestable within the top (20) since it has the structure as recited (€0016).
Regarding claim 3, Barnett further discloses wherein lip (A, Fig 3 above) is disposed around the perimeter of a lower edge of the top (20), facing the bottom (15) when packaging apparatus is fully assembled (Fig 1).
Regarding claim 4, Barnett further discloses lip (A, Fig 3 above) covers the top (20) and the bottom (15) meet (Fig 1).
Regarding claims 7-8, Barnett further discloses the apparatus capable of functioning with the payload as recited since it has the structure as recited.
Regarding claim 12, Barnett further discloses bottom (15) is provided with a ledge (A, Fig 4 below) disposed on upper edge of the bottom (15) which contacts the top (20) at junction between top and bottom (Fig 4).
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Regarding claim 13, Barnett further discloses top (20) and bottom (15) are formed with at least one compartment for placement of a payload (each of interior of Figs 2 and 3 define a compartment).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barnett in view of US 2009/0065514 to Vovan.
Regarding claim 5, Barnett teaches the apparatus of claim 4 but does not teach lip make the apparatus waterproof and/or airtight by sealing the junction between top and bottom. However, Vovan discloses a packaging apparatus (Fig 1) and in particular discloses lip (30) with sealing material (42) to make waterproof/airtight by sealing top and bottom. One of ordinary skill in the art would have found it obvious to incorporate sealing material to Barnett lip as suggested by Vovan in order to seal the container.
Response to Arguments
Applicant's arguments filed 6/26/2026 have been fully considered but they are not persuasive. Initially, it is noted that applicant does not argue the rejection of the dependent claims. Applicant argues that the disclosure has support for a downwardly projecting lip because the specification discloses the lip facing the bottom when the packaging apparatus is fully assembled. However, a lip facing the bottom is not equivalent to the claimed recitation of a downwardly projecting lip because a lip facing the bottom does not necessarily mean that the lip projects downward. The applicant argues that a downward projection of a lip is inherent in the disclosed structure where the lip is on lower edge of the top and covers the junction between the top and bottom. This is not persuasive a lip does not have to be a “downward projection” since a lip being horizontal would achieve the same function.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “top is placed on the bottom”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that the claims are clear in that the at least one protrusion are structural features of the final product. This is not persuasive because the claims also recite the top and bottom formed from the same mould and the claims as presently presented do not clarify whether the protrusion is from the mould or from the final product.
Applicant further argues that the columns of Barnett are internal structural element to define recesses for jars and do not function as legs externally of the packaging apparatus. This is not persuasive because so long as prior art has the structure as recited, then it can also perform the function as recited. In particular, the columns can function as legs when the packaging apparatus is placed on a horizontal surface.
In response to applicant's argument that the columns of Barnett are internal structural elements to define recesses for jars and do not function as legs externally of the packaging apparatus, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As long as prior art has the structure as recited, then it can also perform the function as recited. In particular, the columns can function as legs when the packaging apparatus is placed on a horizontal surface.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., top and bottom are identical but for the lip which is not included in the bottom) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
THIS ACTION IS MADE FINAL. 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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT POON/Examiner, Art Unit 3735
