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 .
This action is Non-Final.
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 1-12 and 14 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.
Claim 1 recites the limitation "a single sheet of material that is foldable" in line 2 of the claim This limitation is confusing and indefinite because the preamble includes a box however a box is not being claimed only a single sheet of material that is foldable, (i.e. a blank that can be folded into a box), With this in mind the Examiner interprets the claim as such.
Claims 2-12 directly or indirectly depend from claim 1.
Claim 14 Claim 1 recites the limitation "a single sheet of material that is foldable" in line 2 of the claim This limitation is confusing and indefinite because the preamble includes a box however a box is not being claimed only a single sheet of material that is foldable, (i.e. a blank that can be folded into a box), With this in mind the Examiner interprets the claim a single sheet capable of being folded.
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) 1-6, 8-12 and 14, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Delause et al. (US 2011/0000957) which in figures 3A-3D discloses the following invention as claimed:
In re claim 1: a storage box 2, comprising: a single sheet of material (Fig.2) that, is foldable to define the storage box 2, wherein, in an assembled configuration, the sheet comprises: a bottom 20; side walls 21/22/23/24; and a flap 28 hinged to one of the side walls 21/22/23/24, the flap 27/28/29/30 comprising a stacking tab 32 that is movable between a use position (fig.3C) in which the stacking tab 32 protrudes through a mounting slot 35 of the storage box 2 and a hidden position (fig.3A wherein the stacking tab does not protrude though the slot and remains positioned below 20) in which the stacking tab 32 does not protrude from the storage box 2, in the use position, the flap 28 extends substantially parallel with the one of the side walls 24 (see figure 3D of Delause et al.).
In re claim 2: an upper part 1 in the use position (fig. 3D rotated).
In re claim 3: the flap 28 is a first flap 28 hinged to a first side wall 21 of the side walls 21/22/23/24, the stacking tab 32 is a first stacking tab 32, and the side walls 21/22/23/24 include a second side wall 23 opposite to the first side wall 21, the storage box 2 further comprising: a second flap 29 hinged to the second side wall 23, the second flap 29 comprising a second stacking tab 32 (see figures 2 and 3C of Delause et al.).
In re claim 4: the first and second stacking tabs 32 are mounted on a middle portion (the portion between the edge and the fold line) of the first and second flaps 28/29, respectively (see figures 2 and 3C of Delause et al.).
In re claim 5: the first and second stacking tabs 32 are mounted on one end of the first and second flaps, respectively (see figures 2 and 3C of Delause et al.).
In re claim 6: the flap 28 comprises a projection (folding projections of 42) that, in the hidden position, can be housed in the mounting slot 40 (see figure 6).
In re claim 8: the flap 28 is hinged to the one of the side walls 21/22/23/24 along a folding line, the folding line being inclined, perpendicular, or parallel with respect to the bottom 20 (see figures 2 and 3C of Delause et al.).
In re claim 9: stacking slots 35 (capable of housing) to house stacking tabs 32 of another storage box 2 or any slot in the storage box (see figures 2 and 3C of Delause et al.). The structure can accommodate another identical box 2 if inverted directly over fig.3.
In re claim 10: the single sheet of material comprises a corrugated material defining a plurality of channels parallel to each other (see [0031] of Delause et al.).
In re claim 11: the channels of the corrugated material are arranged vertically or inclined on the side walls in the use position, depending on the use position (see [0031] of Delause et al.).
In re claim 12: the stacking tab 32 extends substantially vertically in the use position (see figure 3C of Delause et al.).
In re claim 14: a storage box 2, comprising: a single sheet of material (fig.2) that is foldable to define the storage box 2, wherein, in an assembled configuration, the sheet comprises: a bottom 20; side walls 21/22/23/24; and a flap 28 hinged to one of the side walls 21/22/23/24, the flap 28 comprising a stacking tab 32 that is movable between a use position in which the stacking tab 32 protrudes through a mounting slot 35 of the storage box 2 and a hidden position in which the stacking tab 32 does not protrude from the storage box 2; and stacking slots (other 35) to house stacking tabs 32 of another storage box 2 (see figure 3D of Delause et al.).
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
In response to applicant's argument that the prior art fails to disclose the claimed invention, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The Applicant is arguing that Delause et al. in an assembled configuration fails to meet the intended use. The single sheet includes many assembled configurations, the Applicant is arguing that in the assembled configuration as shown in fig.3A the prior at fails to teach a hidden tab. The Examiner agrees, none of the figures specifically show the hidden tab. What is disclosed in fig.3A is a tab that is capable of lying flat with respect to panel 20 and in fig.3D the flap is capable of being folded to lay flat on panel 20, with this in mind the flap’s structure in combination with the surface 20 would allow for the flap to be positioned below panel 20 and the tab hidden from view when looking at the container with the cavity facing down and therefore, the prior art of Delause et al. as discussed above, includes all the claimed structure capable of performing all the claimed intended use. In regards to the “in use position”, once the prior art black is folded it is in the in use position. The claimed in use position is not defined by any specific structure.
In accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004).
The Examiner believes that there are structural differences between the prior at and the disclosed invention, However, in the Examiner’s opinion the claimed invention does not positively claim the structural difference that would read over the applied prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO A GRANO whose telephone number is (571)270-3927. The examiner can normally be reached M-F 7:00-3:30 EST.
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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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/ERNESTO A GRANO/ Primary Examiner, Art Unit 3735
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