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.
Claims 1 and 5 are rejected under 35 U.S.C. 112(a), 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, at the time the application was filed, had possession of the claimed invention.
With respect to claim 1: The claim recites “the entirety of the sidewalls extending generally vertically into the inner volume”.
In Applicant’s embodiment of Figs. 1-8, the lid subassembly 102 includes a lid 114 and an electronics module 108. The electronics module 108 extends into the inner volume of the cooler assembly 100. The Applicant’s specification does not address if the entirety of the sidewalls of electronics module 108 extend into the inner volume of the cooler assembly 100.
It appears in Applicant’s Fig. 4 that at least some portion of the sidewalls of module 108 are in the lid 114, and do not extend into the inner volume of the cooler assembly 100 when the lid 114 is closed.
In Applicant’s embodiment of Figs. 9-18, the cooler assembly 200 includes a lid sub assembly 202A and 202B. The supplemental volume 220 of lid sub assembly 202B extends into the inner volume of the cooler assembly 200 ([0057]). The Applicant’s specification does not address if the entirety of the sidewalls of supplemental volume 220 extend into the inner volume of the cooler assembly 200.
It appears in Applicant’s Fig. 10 that at least some portion of the sidewalls of volume 220 are in the lid subassembly 202B, and do not extend into the inner volume of the cooler assembly 200 when the lid subassembly 202B is closed.
In claim 1, the recitation “the entirety of the sidewalls extending generally vertically into the inner volume” raises the issue of new matter.
With respect to claim 5: The claim is rejected under 35 U.S.C. § 112(a) via dependency.
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.
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,947,032 (Meier) in view of US 4,581,902 (Starck) and US 10,054,354 (Kennedy).
With respect to claim 10: Meier discloses a cooler assembly (“portable picnic cooler”) comprising: an outer body (base 12 and walls 14/16/18/20) defining an inner volume (enclosure 22 and/or the interior thereof), the inner volume adapted to store a quantity of food (by being disclosed as a picnic cooler), the outer body having an outer edge (Figs. 1 and 3); at least one lid (cover 24) configured to seal the inner volume, the at least one lid having an upper outer surface (top cover surface 30); and a removable table (table 36) removably connectable to the at least one lid (via cavity 32 and open end 34) and the outer body (by putting end 38 on handle 48 or 50), the removable table having a first edge (at end 38), the first edge of the removable table having a single second connector portion (portion of end 38 that mounts to handle 48 or 50) directly connected to a single first connector portion (handle 48 or 50) on the outer edge of the outer body that extends outward from the outer edge of the outer body (Fig. 3) in a use position of the removable table (by putting end 38 on handle 48 or 50), the removable table having an upper surface and a lower surface (Figs. 2-5), the removable table connected to the at least one lid in a stowed position of the removable table (when table 36 is positioned inside cavity 32), the upper surface of the removable table spaced apart from the upper outer surface of the at least one lid (one or more of Figs. 2-3 and 5); wherein the at least one lid is movable (via hinges - see col. 2, lines 29-34) from a closed position (cover 24 closing enclosure 22) to an open position (cover 24 exposing enclosure 22) while the removable lid (table 36) is in the stowed position (cover 24 can open and close while table 36 is inside cavity 32), the removable table connected to the at least one lid directly and only in the stowed position (when table 36 is positioned inside cavity 32, table 36 is connected directly to cover 24 and nothing else) so as to permit the at least one lid to move between the closed position and the open position with the removable table attached thereto (cover 24 can open and close with table 36 connected thereto).
Meier Figs. 1 and 5 show the stowed position of the removable table (table 36) is inside the lid (inside cavity 32 of cover 24), and not connected to the upper outer surface of the lid (top cover surface 30).
Ergo, Meier does not disclose “the lower surface of the removable table connected to the upper outer surface of the at least one lid in a stowed position of the removable table” as claimed.
Starck Figs. 7-8 show a table 110 that attaches to the upper outer surface of cover 122 of chest container 112. Starck Figs. 21-25 show a table 325 that attaches to the upper outer surface of cover 310. Fig. 25 shows the lower surface of table 325 against the upper outer surface of cover 310. Due to the height of table 325 (Fig. 21), the upper surface of table 325 is spaced from the upper outer surface of cover 310 when table 325 is attached to cover 310. Starck Figs. 26-32 show another embodiment of a table 440 removably attached to the upper outer surface of a cover 410.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Meier’s cover 24 and table 36 to stow Meier’s table 36 on the top cover surface 30 of cover 24, instead of being stowed inside the cavity 32, because it is known in the cooler art to stow such members on the upper outer surface of the lid.
Further, this enables the cavity 32 in Meier’s cover 24 to be replaced with conventional insulation (see Starck Figs. 3-4 and 25 for a lid with conventional insulation), thereby increasing the insulation performance of the lid/cooler.
This meets “the lower surface of the removable table connected to the upper outer surface of the at least one lid in a stowed position of the removable table, the upper surface of the removable table spaced apart from the upper outer surface of the at least one lid” as claimed.
Meier does not disclose “the first edge of the removable table having two separate second connector portions partially recessed into the removable table and directly connected to two separate first connector portions on the outer edge of the outer body that extend from the outer edge of the outer body” as claimed.
Instead, Meier discloses a single second connector portion (portion of end 38 that mounts to handle 48 or 50) that directly connects to a single first connector portion (handle 48 or 50).
Kennedy col. 5, lines 37-55 and Figs. 4-7 disclose attachment plates 42 mounted in recesses in a base 12B. The plates 42 receive studs (not shown) at the back end of the support arms 19A. This shows it is known in the art to use studs and plates 42 to detachably mount a component to a cooler.
See Meier Figs. 1-3. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Meier’s table 36 and container 10 to be joined using Kennedy’s plates 42 and studs, respectively, as an obvious variation of how to mount the table 36 on the outside of the cooler.
The reversal of the essential working parts of an invention involves only routine skill in the art. Ergo, having the plates 42 and studs (not shown) reversed is obvious, even though Kennedy has the plates 42 on the cooler and the studs on the component attached to the cooler. Meier having the handles 48, 50 extending outward from the container 10 makes obvious having the studs (not shown) extending outward from container 10.
Detachably mounting Meier’s table 36 to a side of container 10 using two sets of Kennedy’s plates 42 and studs provides greater stability than positioning the end 38 of table 36 on Meier’s handle 48 or 50.
This meets and/or makes obvious “the first edge of the removable table having two separate second connector portions (plates 42) partially recessed into the removable table and directly connected to two separate first connector portions (studs) on the outer edge of the outer body that extend from the outer edge of the outer body” as claimed.
Allowable Subject Matter
Claims 1 and 5 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) set forth in this Office action.
Response to Arguments
The latest claim amendments overcome the rejections under 35 U.S.C. § 112(a) made in the previous Office action, but also necessitate the new rejections under 35 U.S.C. § 112(a) made in this Office action.
It appears that the Applicant may be introducing limitations based on what the prior art allegedly does not have. E.G., the Applicant alleges at page 2 of the remarks that prior art reference Leba does not disclose the new limitations of claim 1. The Applicant is reminded that the Applicant must have had possession of the claimed invention at the time the application was filed, and cannot simply claim what the prior art does not have.
Applicant's arguments filed regarding the rejection of claim 10 under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
At page 4 of the remarks, the Applicant lists rationales (A)-(G) from MPEP § 2143. From directly below rationales (A)-(G) in MPEP § 2143:
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Any rationale employed must provide a link between the factual findings and the legal conclusion of obviousness.
It is important for Office personnel to recognize that when they do choose to formulate an obviousness rejection using one of the rationales suggested by the Supreme Court in KSR and discussed herein, they are to adhere to the guidance provided regarding the necessary factual findings. It remains Office policy that appropriate factual findings are required in order to apply the enumerated rationales properly.
This means that rationales (A)-(G) are non-limiting examples, and other rationales may be used.
The Applicant argues that the proposed modification of Meier would render Meier unsatisfactory for its intended purpose. The Applicant alleges that the functionality of handles 48, 50 would be lost, and that carrying the container 10 via the handles 48, 58 is an intended purpose.
The Examiner submits that in the proposed modification, the handles 48 and 50 are not removed; they remain on the container 10. Ergo, it is not persuasive to argue that one could not carry the container 10 with the handles 48 and 50 in the proposed modification.
The Applicant argues that removing handle 58 from the table 36 renders Meier unsatisfactory for its intended purpose.
The Examiner submits that in the proposed modification, the handle 58 is not removed; it remains on the table 36. Ergo, it is not persuasive to argue that one could not lift the table 36 via handle 58 in the proposed modification.
It appears that the Applicant characterizes any modification of Meier to make it unsatisfactory for its intended purpose. If Meier explains how the invention works, and the modification in the rejection changes anything about how Meier works, then it renders it unsatisfactory for its intended purpose.
This does not align with the disclosure of Meier, which is to have a combination of a table and a cooler that are transportable together (not as separate items) and can be quickly and easily attached and detached (Meier col. 1). The modifications retain these abilities, and do not render Meier unsatisfactory for its intended purpose.
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 ROERSMA whose telephone number is (571)270-3185. The examiner can normally be reached M-F 8:00-4:00.
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, Daniel Troy can be reached at 571-270-3742. 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.
/ANDREW ROERSMA/ Primary Examiner, Art Unit 3637