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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 29, 2026 has been entered.
Election/Restrictions
Newly submitted claims 18-23 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 18 through 23 have been changed from a product to a system claim, a device claim, and applicants cannot file an RCE to obtain continued examination on the basis of claims that are independent and distinct from the claims previously claimed and examined as a matter of right (i.e., applicant cannot switch inventions). See 37 CFR 1.145. Any newly submitted claims that are directed to an invention that is independent and distinct from the invention previously claimed will be withdrawn from consideration and not entered. See subsection VI. below. An RCE is not the filing of a new application. Thus, the Office will not convert an RCE to a new application such as an application filed under 37 CFR 1.53(b) or a continued prosecution application (CPA) under 37 CFR 1.53(d).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 17 is 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.
In claim 17 the word “rough” renders the claim vague and indefinite since said word is a relative term and there is no basis in the specification to evaluate what would be considered to be rough and thus the metes and bounds of patent protection desired cannot be ascertained.
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.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Soto et al., (hereafter Soto), US Patent Application Publication No. 2020/0140165 A1 in view of Andersson et al., (hereinafter Andersson), US Patent Application Publication No. 2017/0370049 A1 .
With regard to claims 1, 3, 5 and 10-11, Soto discloses; see claims and figures 1A-1F, a single-walled disposable cooler (100) comprising: a body made from a pulp-based material or fiber-based material; abstract and ¶-[0006], and including a base (210 in Figure 1B) and a plurality of support walls (220) coupled to the base (210E), at least one of the plurality of support walls (220) including a substantially planar surface, the plurality of support walls (¶-0029) and the base (210) defining an interior cavity of the body (230), and the plurality of support walls (220) extend upwardly from the base (210) to form an opening at an upper terminus of the body in fluid communication with the interior cavity; and a lid (300) made from the fiber-based material and corresponding with the body, the lid (300) shaped to cover the opening of the body and abuts to the internal part of the body and can include one or more cup-holders; see ¶-[0029]-[0034]. Soto does not teach the convex and concave profiled as claimed in claim 1; however, Andersson shows the making of molded product comprising walls including a concave and convex profile and concave profile through the wall(s) height; see figures 3, ¶-[0101]-[0105] and claim 1, therefore making the cooler of the primary reference as suggested by Andersson would have been obvious to one of ordinary skill in the art, since he/she would have reasonable expectation of success if the cooler is made with the convex/concave profile as suggested by Andersson. Note that it has been held that “[C]hanges of size, shape, without functional significance are not patentable.” Research Corp. V. Nasco Industries, Inc., 501 F2d 358: 182 USPQ 449 (CA 7) cert. Denied 184 USPQ 193; 43 USLW 3359 (1974).
Regarding to claims 2, Soto teaches a lid that fits inside of the cooler to fit to then inside of the body walls in a friction manner; see figures 1A-1F and ¶-[0038].
With regard to claim 4, Soto teaches that the ledge is substantially parallel to the base and covers substantially; see figures and ¶-[0007].
Regarding to claim 6, Soto teaches that the lid can include handles disposed in the central region; see ¶-[0007].
With regard to claim 7-9, Soto teaches that the lid is substantially flushes to the body of the cooler and that includes handle on the upper section of the lid; see ¶-[0007]-[0011].
Regarding to claim 12, Soto discloses that the lid can be formed with pulp or non-pulp material; see claim 16 and ¶-[0034].
With regard to claim 13-16, Soto discloses that the cooler can be made using the same material and additives as claimed; see ¶-[0034]-[0036].
Regarding to claim 17 roughness and concave are relative terms and therefore, the walls of the walls of the references would be considered to inherently have the same properties. Moreover, it would have been obvious to one of ordinary skill in the art to make the walls with relative roughness/smoothness of the sides, inside/outside, of a cooler to be different, since it is more important to have a relative smoother inside than the outside, to protect the product and/or just for aesthetic.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicants have not clearly indicated the structural significance of the claimed profile and therefore, the claims have been rejected as shown above. Note that the secondary reference was only used for the making of walls having concave and convex profile through the height and not to incorporate the structure into the primary reference, It has been held that "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art."); In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review."); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) ("Combining the teachings of references does not involve an ability to combine their specific structures.").
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the art of “Single Walled Disposable Coolers.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE A FORTUNA whose telephone number is (571)272-1188. The examiner can normally be reached MONDAY- FRIDAY 11:30 PM- 9:00 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, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE A FORTUNA/Primary Examiner, Art Unit 1748
JAF
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