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 1-2, 6-11, 13, 15, and 51-60 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. For example, the added new limitations filed on 09/30/2026 referring to the “insulated layer” as “both adjacent to and coupled to the outer surface of the plurality of side panels of the inner corrugated portion”, while the originally filed specification is only referring to the “insulated layer coupled to the inner corrugated portion” no support for the “insulated layer” as being “adjacent to” the panels!
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 1-2, 6-11, 13, 15, and 51-60 are 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.
The latest filed amendments to claim 1 referring to the “insulated layer” as “both adjacent to and coupled to the outer surface of the plurality of side panels of the inner corrugated portion”, is vague and indefinite as it is not clear how the layer would be “coupled” and “adjacent” to the “outer surface of the inner corrugated portion at the same time.
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.
Claim(s) 1-2,6-11,13,15 and 51-60 the best understood is/are rejected under 35 U.S.C. 103 as being unpatentable over Spurrell et al. (U.S. Pub. No. 2007/0000983) in view of Solli et al. (U.S. Pub. No. 2020/0148453) and further in view of Mintzes (U.S. Pat. No. 2,532,778).
Regarding claim 1: Spurrell discloses a method for assembling an insulated box assembly, the method comprising:
positioning an inner corrugated portion (Fig. 2; via 108) and an insulated layer (via 104/106) between a plurality of side portions of an outer corrugated portion (via outer side portions 102), each side portion defining a handle, see for example (Figs. 1-2; inherently the final made container 100 is lifted by hand; any given portion of the side panels or bottom panel could be “defined” as a handle to carry and handle the container), the inner corrugated portion comprising a plurality of side panels hingedly coupled together (via the shown different panels or sides of 108) an defining a top end and a bottom end of the inner corrugated portion (Figs. 2 & 7; via the top and bottom ends of 104/106), the insulated layer extending around the plurality of side panels (via 104/106 rounds around the panels of 108), the insulated layer coupled to the inner corrugated portion (via 104/106 coupled to the inner corrugated portion 108), the insulated layer positioned between the inner corrugated portion and the outer corrugated portion (via 104/106 “entirely” positioned between the inner 108 & outer 102 layers; and paragraph 0042, “The insulating member may be corrugated…and any type of corrugated medium”), the insulated layer comprising at least one insulation batt (via “expanded polystyrene is the material of choice to use as thermal insulation” and/or “insulating members made from n encapsulated cellulose-based substrate may provide adequate insulation”), comprising an adhesive thermoplastic binder adhered to a cellulose fiber, see for example (paragraph 0043; “the container blanks will be encapsulated with a polymeric film…and sealing, adhering,… any bag opening or open sides of the wrapping” & paragraph 0067; “the hot melt adhesive used in the encapsulated blanks”); the plurality of side panels defining a top end and a bottom end of the inner corrugated portion (Fig. 8; via the top/bottom portions of final formed 102), a bottom panel being positioned at the bottom end below the insulated layer (Figs. 2 & 8; inherently the bottom folded panels positioned under and below insulation 104/106), the plurality of side panels and the bottom panel at least partially defining a cavity (Fig. 8; via forming inner container space), the cavity being insulated by the insulated layer (via surrounding of 104/106 around the inner of the formed container 102), an opening to the cavity being defined at the top end (Fig. 8; via top formed opening), and enclosing the cavity with a top (Figs. 8-9; via closing the 102 with the top flaps 136/138).
Spurrell may not suggest the positioning of the insulated layer to be coupled to the inner corrugated portion between the top end and the bottom end of the inner corrugated portion nor “the insulated layer to be both adjacent to and coupled to the outer surface of the plurality of side panels of the inner corrugated portion”. However, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Spurrell’s insulated layer to be positioned between the inner corrugated portion between the top and bottom ends and/or the insulated layer to be both adjacent to and coupled to the outer surface of the plurality of side panels of the inner corrugated portion, since it has been held that rearranging parts and/or elements of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Further, it is noted that positioning an insulated materials between top and bottom ends of a corrugated inner portion is old and well known in the art, see for example the following documents:
-U.S. Pat. No. 11,066,228; Figs. 1 & 7-13; via 130 between the top/bottom ends of inner portion 120.
-U.S. Pub. No. 2020/0148410; Figs. 4, 7, & 9; via 310 between to/bottom ends of inner portion 520.
-U.S. Pub. No. 2018/0327171; Figs. 3-5.
-U.S. Pat. No. 5,441,170; Figs. 3 & 6.
Spurrell does not disclose an insulated layer defining an open top end, an open bottom end, and extending around the plurality of side panels. However, Sollie discloses similar method with a use of insulated layer with an open top end, an open bottom end, and extending around plurality of side panels, see for example (Figs. 1 and 6-8; via climate control and insulating liners 600 with shown cavity 650 around box 110).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have substituted Spurrell’s insulated layer by another layer with an open top end, an open bottom end, and extending around plurality of side panels, as a matter of design choice and suggested by Sollie, in order to gain more control of the inner temperature (paragraph 0006-0009).
Further, Spurrell in view of Sollie do not suggest the step of having a flexible handle loop to be extending beyond an end portion of the side portion. However, Minitzes discloses similar method comprising the step of having a flexible handle loop extending beyond an end portion of the side portion of the layer, see for example (Figs. 1-2; via handle loop 35 extending beyond end portion of the sides 11/12).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Spurrell in view of Sollie’s method by having a step of positioning a handle loop to the side portions, as suggested by Minitzes, in order to come up with a simple and convenient to carry bags (column 1, lines 4-10).
Regarding claim 2: Spurrell discloses that wherein enclosing the cavity with a top comprises: positioning the top between the plurality of side portions; and covering the opening with the top (via flaps 136/138 positioned and closed between the side panels of the container 102).
Regarding claim 6: Spurrell discloses that wherein enclosing the cavity with a top comprises positioning the top between the plurality of side panels (via flaps 136/138 positioned and closed between the side panels of the container 102).
Regarding claim 7: Spurrell discloses that the outer corrugated portion extends around the bottom panel and at least one side panel of the plurality of side panels (Fig. 2-4; via corrugated side panels of 102 surrounding the bottom panel 108).
Regarding claim 8: Spurrell discloses that: a portion of the outer corrugated portion is hingedly connected to the plurality of side portions; and the bottom panel is position between the plurality of side portions and above the portion (Fig. 2-4; via corrugated and hingedly side panels of 102 surrounding the bottom panel 108).
Regarding claim 9: Spurrell discloses that the bottom panel is positioned in facing contact with the portion (via bottom 108 in respect to completely formed 102).
Regarding claim 10: Spurrell discloses that the plurality of side panels comprises a first side panel, a second side panel, a third side panel, and a fourth side panel; and the insulated layer extends around the first side panel, the second side panel, the third side panel, and the fourth side panel, see for example (Figs.2-3; via side panels 110, 112, 114, 116).
Regarding claim 11: Spurrell further comprising: folding the second side panel about a first fold line to position the second side panel substantially perpendicular to the first side panel; folding the third side panel about a second fold line to position the third side panel substantially perpendicular to the second side panel; and folding the fourth side panel about a third fold line to position the fourth side panel substantially perpendicular to the third side panel, (Figs. 2-3; via the shown fold lines between the panels).
Regarding claim 13: Spurrell discloses that the inner corrugated layer comprises cardboard (via corrugated cardboard of 108).
Regarding claim 15: Spurrell discloses that the at least one insulation batt is adhesively coupled to the inner corrugated portion (inherently adhesive will be applied to secure the insulting materials to the panels; “hot melt adhesive used in the encapsulated blanks affects quality” and/or “a process utilizing adhesives to bond the polymeric films to each other and optionally to the cellulose-based substrate”).
Regarding claims 51-55 (the best understood): Spurrell discloses the claimed “insulation batt”, “cellulose fibers”, “thermoplastic binder”, “glass transition”, etc., see for example (Figs. 2 & 10; paragraph 0002, 0067, 0040).
Regarding claim 56: Spurrell discloses that the plurality of side portion of the outer corrugated portion comprises a first side portion and a second side portion, see for example (Figs. 2 & 7; via the shown sides panels/flaps of the container); and
The first side portion defines a first handle and the second side portion defines a second handle, see for example (Figs. 1 & 7; inherently the shown final made container is lifted by hand; any given portion of the side panels or bottom panel could be “defined” as a first and second handle portions to carry and handle the container).
Regarding claim 57: Spurrell does not show the first and second handle extend upwardly beyond the top end of the inner corrugated portion. However, the Office takes an official notice that a use of handles in a given corrugated container to be extended upwardly and beyond the top end of the box is something very old and well known in the art.
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Spurrell’s method for assembling a box by placing handles extended upwardly and beyond the top end portion of the box, in order to make the process of carrying and moving the box around easier.
Regarding claim 58: Mintzes discloses that each handle loop comprises twisted paper rope (Figs. 1-2; via the shown straps 35).
Regarding claim 59: Mintzes further discloses that each handle loop is connected to the corresponding end portion by a base strip (Fig. 1; via 35/36; further “Flexible and pliable straps 35 are attached to the upper edge portions of the side walls 11, 12 by stitching 36 or otherwise as desired”).
Regarding claim 60: Mintzes may not suggest a step of laminating each handle loop. However, the Office takes an official notice that laminating web’s portions or handles of bags is a very old teaching and known in the art. Further, the filed application is referring to such step by the filed original specification that “handles 178a,b can be laminated”, not very positive step.
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have modified Spurrell in view of Solli and further in view of Mintzes’s method for assembling a box with handle, to have those handles laminated, as an engineering design choice to be made, in order to make the process of carrying and moving the box around easily and safe.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 6-11, 13, 15, and 51-60 have been considered but are moot because the new ground of rejection modified to address the latest filed amendments and added new claims.
In respect to applicant’s latest amendment and argument that the applied arts of record do not suggest the amended claims referring to the claimed “the insulated layer to be both adjacent to and coupled to the outer surface of the plurality of side panels of the inner corrugated portion”; the Office as set forth above believes that such claimed specific arrangements of the “insulated layer” to be adjacent to and coupled to the side panels would only be a matter of a design choice to be made and/or re-arrangement of parts. Since the applied art suggests the claimed elements, only missing the claimed specific arrangements, it would only be a matter of rearrangement of parts to come up with the claimed limitations.
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 SAMEH TAWFIK whose telephone number is (571)272-4470. The examiner can normally be reached Mon-Fri. 8:00 AM - 4:00 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, Shelle Self can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMEH TAWFIK/Primary Examiner, Art Unit 3731
