DETAILED ACTION
This Office Action acknowledges the applicant’s amendment filed 20 August 2025. Claims 1-15, 19 and 20 are pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office 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 .
Drawings
The drawings were received on 20 August 2025. These drawings are unacceptable.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the reference sign(s) mentioned in the description. In the non-final office action, mailed 4 June 2025, examiner objected to the drawings for “Legends: Suitable descriptive legends may be used subject to approval by the Office, or may be required by the examiner where necessary for understanding of the drawing. They should contain as few words as possible” [MPEP 608.02(V)(o)]. Examiner stated that the words describing the reference characters should be removed, not the reference characters themselves. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 102
Claims 1-6, 8, 11-15, 19 and 20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Boyatt (US 10,694,876).
Regarding claim 1, Boyatt teaches a configurable food delivery system (figures 13-16: The embodiment used in the rejection below is based on figures 13-16. Whenever another figure outside of figures 13-16 is used, it is for the purposes of describing the parts not labeled in figures 13-16 but are still part of the embodiment), comprising: a foldable carrying case (figure 2 and 13, reference 2) configured to carry a first insert tray and a second insert tray (figure 13, reference 40: Although the prior art discloses the inserts, it appears the claims do not positively recite the inserts in the claims. Therefore, claims limitations directed towards the unclaimed inserts will be treated as further defining an unclaimed aspect of the invention or treated as intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function), wherein the first insert tray and the second insert tray are configured such that the first insert tray and the second insert tray are stackable (figure 13: The tray inserts 40 are capable of being stacked), and wherein the stacked first insert tray and second insert tray fit into the foldable carrying case when the foldable carrying case is in a closed position (figure 4 and 14).
Regarding claim 2, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the foldable carrying case is configured such that both the first insert tray and the second insert tray can be supported by the foldable carrying case when the foldable carrying case is in an open position and the first insert tray and second insert tray are not stacked (figure 14).
Regarding claim 3, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the first insert tray includes a plurality of container receptacles (figure 14, reference 42: Furthermore, this limitation further defines an unclaimed insert, thus is treated as intended use).
Regarding claim 4, Boyatt teaches all of the claim limitations of claim 3, as shown above. Furthermore, Boyatt teaches a container (figure 15: the cups are containers) configured to fit within one of the plurality of container receptacles of the first insert tray (figure 1: Furthermore, this limitation further defines an unclaimed insert, thus is treated as intended use).
Regarding claim 5, Boyatt teaches all of the claim limitations of claim 4, as shown above. Furthermore, Boyatt teaches the container is capable of being configured to maintain an interior temperature below an ambient temperature (figure 15: the container would inherently maintain a below ambient temperature for at least a short time based solely on the material the container. Furthermore, this limitation is an intended use recitation).
Regarding claim 6, Boyatt teaches all of the claim limitations of claim 4, as shown above. Furthermore, Boyatt teaches the container is capable of being configured to maintain an interior temperature equal to or above an ambient temperature (figure 15: the container would inherently maintain a temperature at or above an ambient temperature for at least a short time based solely on the material the container. Furthermore, this limitation is an intended use recitation).
Regarding claim 8, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the foldable carrying case is configurable to fold into a three dimensional shape resembling a hull of a boat (figure 4).
Regarding claim 11, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the first insert tray and the second insert tray are constructed, at least in part, of a food grade plastic material (column 3, lines 40-44: This limitations further defines an unclaimed insert and is therefore treated as intended use).
Regarding claim 12, Boyatt teaches all of the claim limitations of claim 3, as shown above. Furthermore, Boyatt teaches at least one of the plurality of container receptacles include an easy top removal cavity (figure 14: This limitations further defines an unclaimed insert and is therefore treated as intended use).
Regarding claim 13, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the first insert tray includes a receptacle configured to hold a bottle or a dipping cup (figure 14, reference 42: This limitations further defines an unclaimed insert and is therefore treated as intended use).
Regarding claim 14, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the foldable carrying case is capable of being configured to carry at least forty pounds (figure 14: This limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function).
Regarding claim 15, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches a handle operable to lift the foldable carrying case (figure 1, 8 and 13, reference 4).
Regarding claim 19, Boyatt teaches a configurable food delivery system (figures 13-16: The embodiment used in the rejection below is based on figures 13-16. Whenever another figure outside of figures 13-16 is used, it is for the purposes of describing the parts not labeled in figures 13-16 but are still part of the embodiment), comprising: a first insert tray (figure 13, left reference 40); a second insert tray (figure 13, right reference 40); and a first means for carrying a first insert tray and a second insert tray when the first insert tray is stacked on the second insert tray (figure 4); and a second means for supporting the first insert tray and the second insert tray when the first insert tray and the second insert tray are not stacked (figure 14), wherein the first insert tray and the second insert tray include container receptacles (figure 14, reference 42).
Regarding claim 20, Boyatt teaches all of the claim limitations of claim 19, as shown above. Furthermore, Boyatt teaches the first means is a foldable carrying case in a closed position (figure 4), and wherein the second means is the foldable carrying case in an open position (figure 14).
Claim Rejections - 35 USC § 103
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Boyatt (US 10,694,876), as applied to claim 1 above, and further in view of Cai et al. (US 7,631,800).
Regarding claim 7, Boyatt teaches all of the claim limitations of claim 1, as shown above. Furthermore, Boyatt teaches the foldable carrying case is capable of being configured to fold flat (figure 4: the carry case, when folded can relatively fold flat) and wherein the first insert tray and the second insert tray are capable of being configured to nest into each other when all container receptacles are empty (figure 14, reference 40: This limitations further defines an unclaimed insert and is therefore treated as intended use).
Boyatt does not explicitly teach the foldable carrying case is configured to fold flat. However, Cai does teach the foldable carrying case is configured to fold flat (figure 5).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the carry case of Boyatt to be configured to fold flat, as disclosed by Cai, because being configured to fold flat allows for easy shipping, transportation and storage of the case when not in use. Furthermore, the ability to fold flat is based on the material the carrying case is made from. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 10, Boyatt teaches all of the claim limitations of claim 1, as shown above.
Boyatt does not explicitly teach the foldable carrying case is constructed of, at least in part, a cardboard material or cardstock material. However, Cai does the foldable carrying case is constructed of, at least in part, a cardboard material or cardstock material (column 3, lines 42-44).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the carry case of Boyatt to be constructed of, at least in part, a cardboard material or cardstock material, as disclosed by Cai, because being constructed of, at least in part, a cardboard material or cardstock material allows for quickly and cheaply manufacturing of the carrying case. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Boyatt (US 10,694,876), as applied to claim 1 above, and further in view of Hsu (US D659,023).
Regarding claim 9, Boyatt teaches all of the claim limitations of claim 1, as shown above.
Boyatt does not explicitly teach a chopstick holder configured to attach one or more chopsticks to the foldable carrying case. However, Hsu does teach a chopstick holder configured to attach one or more chopsticks to the foldable carrying case (figure 1 and 7 and page 1-2 under description of figure 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the carry case of Boyatt to include a chopstick holder configured to attach one or more chopsticks to the foldable carrying case, as disclosed by Cai, because including a chopstick holder allows for holding utensils for eating.
Response to Arguments
Applicant's arguments filed 20 August 2025 have been fully considered but they are not persuasive.
With respect to the art rejections, 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, 70 USPQ2D 1827, 1834 (Fed. Cir. 2004).
Claim 1:
Applicant argues that Boyatt is not a food deliver system and states “Boyatt describes a tray to "carry multiple drinks or beverages" (Col. 1, lines 15-16); Nowhere does Boyatt teach or suggest the system is pre-loaded with food for off-site delivery; Boyatt is intended to receive third-party items like "cups or bottles" after it has already been unfolded at the consumption site”. Examiner respectfully disagrees. Applicant pointed to column 1, lines 15-16 but didn’t mention the last few words of the section. The prior art states “This invention relates to a folding, convertible tray for carrying multiple drinks or beverages or other items”. Furthermore, column 1, lines 51-57 explicitly states “The carry tray can thus be used to carry drinks on both sides. Alternatively, a hole template can be removed from one side, thereby allowing the carry tray to be used to carry drinks on one side, and other items (e.g., food, snacks, and the like) on the other side. Both hole templates also may be removed and carry tray used for food, snacks, and the like on both sides”. Lastly, 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., Nowhere does Boyatt teach or suggest the system is pre-loaded with food for off-site delivery) 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 further states “Applicant’s system is pre-packaged, sealed, and configured for transport; Sushi Boat’s system is filled at the point of sale (e.g., restaurant), sealed, and transported in its closed, compact state; Upon delivery, the system is opened and served, whether for individual, group, or corporate catering use”. Again, 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., pre-packaged, sealed, and configured for transport) 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 further states “Boyatt does not disclose a sealed or secure delivery configuration; It lacks latching, insulation, or containment structures necessary to transport raw fish or perishable food; Its folding structure is incapable of carrying items in a closed state; it must be expanded and opened to be useful—thus precluding practical delivery”. Again, 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., a sealed or secure delivery configuration; It lacks latching, insulation, or containment structures necessary to transport raw fish or perishable food; Its folding structure is incapable of carrying items in a closed state; it must be expanded and opened to be useful—thus precluding practical delivery) 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 further states “Boyatt is a flat-pack drink carrier; It lacks the multi-level, multi-container, modular architecture of Applicant’s invention”. Again, 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., It lacks the multi-level, multi-container, modular architecture of Applicant’s invention) 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).
Claim 2:
Applicant further argues “Boyatt does not teach that the insert trays are supported in an unstacked configuration inside the case. Applicant’s system supports trays in both stacked and side-by-side positions via custom molded configurations”. As an initial matter and as stated in the rejection above, the first and second insert trays are not positively recited and therefore, the prior art only needs to be capable of performing the recited function. In this case, the claim states “the foldable carrying case is configured such that both the first insert tray and the second insert tray can be supported by the foldable carrying case when the foldable carrying case is in an open position and the first insert tray and second insert tray are not stacked”. As seen in figure 14 and stated above in the rejection of claim 2, the carrying case is configured to support the insert trays 40 when the case is in an open configuration with the trays not stacked, as required by the claim.
Claims 3-6, 11-13:
Claim 3:
Applicant argues “Boyatt’s cavities are for holding cups; Applicant's receptacles are sealed containers holding solid food, sauces, and condiments, and designed to be eaten from directly”. Again, 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. Applicant's receptacles are sealed containers holding solid food, sauces, and condiments, and designed to be eaten from directly) 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). Claim 3 simply states “the first insert tray includes a plurality of container receptacles”. Boyatt discloses this (figure 14, reference 42).
Claims 5 and 6:
Applicant argues “Applicant's system uses food-safe materials and optionally includes chilling inserts (e.g., gel packs or dry ice compartments); Boyatt has no means of thermal control. Examiner’s inherency argument is unsupported”. Claim 5 states “the container is configured to maintain an interior temperature below an ambient temperature” while claim 6 states “the container is configured to maintain an interior temperature equal to or above an ambient temperature”. Any container placed within the container receptacle will be made of a material that has some insulative properties which would limit heat transfer. This would be an inherent feature of any container. 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. gel packs or dry ice compartments) 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).
Claim 11:
Applicant argues “Boyatt does not disclose food-grade materials; it does not store or contact food directly; Applicant’s trays are explicitly designed for food contact, including raw fish”. Claim 11 states “the first insert tray and the second insert tray are constructed, at least in part, of a food grade plastic material”. As stated in the rejection above, the inserts are not positively recited in the claims and therefore claims limitations directed towards the unclaimed inserts will be treated as further defining an unclaimed aspect of the invention or treated as intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function. Furthermore, 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. Applicant’s trays are explicitly designed for food contact, including raw fish) 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).
Claim 13:
Applicant states “Boyatt only references general beverage cups. No disclosure of fitted compartments for bottles or sealed jars as required by Applicant’s system”. Claim 13 states “the first insert tray includes a receptacle configured to hold a bottle or a dipping cup”. Boyatt discloses a receptacle (figure 14, reference 42). Again, since the insert is not positively recited, the prior art only needs to be capable of performing the recited function. The receptacle 42 can hold containers, shown in figure 15. These containers are capable of holding a dip for dipping. Furthermore, 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. No disclosure of fitted compartments for bottles or sealed jars) 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).
Claim 8:
Applicant states “Boyatt is a flat tray. Applicant’s Sushi Boat system is designed and styled to resemble the hull of a boat, for both functional and aesthetic purposes. The structure enhances stackability, thermal retention, and brand identity—features wholly absent from Boyatt”. Claim 8 states “the foldable carrying case is configurable to fold into a three dimensional shape resembling a hull of a boat”. Figure 4 shows the system of Boyatt folding into a three dimensional shape resembling a hull of a boat. 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. The structure enhances stackability, thermal retention, and brand identity—features wholly absent from Boyatt) 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 “Boyatt cannot deliver. Applicant’s system exists to deliver. Ask the following: Can Boyatt be pre-packed at a restaurant? Can it be sealed, stacked, chilled, and tossed into a delivery driver’s trunk? Can it survive a 14-mile DoorDash ride and arrive intact? The Answer is No. Applicant’s system was designed for this exact scenario and has been tested and used in this manner by corporate, individual, and third-party delivery drivers. It performs the primary and novel function of delivery, not point-of-sale carry”. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. None of these arguments relate to the claimed subject matter.
Applicant argues “Boyatt is a single-use, static template. Applicant’s system is a modular, multi-user, multi-container, and multi- configuration system: Trays with varying counts (2-20 containers); Cold/hot meal support; Single vs. multi-person delivery use; Corporate catering support; Custom decks for reusable component drops; This scalability and modularity is neither taught nor suggested in Boyatt”. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references. Furthermore, arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.
Applicant states “Boyatt has no sealing features or leftover storage capability; Applicant’s containers are airtight, refrigerator-safe, and FDA- compliant for raw fish; Sushi Boat’s design ensures sanitary, portable, and resealable food service—features necessary for sushi, absent in Boyatt”. 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. Boyatt has no sealing features or leftover storage capability; Applicant’s containers are airtight, refrigerator-safe, and FDA- compliant for raw fish; Sushi Boat’s design ensures sanitary, portable, and resealable food service—features necessary for sushi) 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 states “Boyatt discloses no load-bearing testing or claims. Sushi Boat can carry 40+ pounds of sealed food in a stable, stackable configuration”. 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. Boyatt discloses no load-bearing testing or claims. Sushi Boat can carry 40+ pounds of sealed food in a stable, stackable configuration) 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).
V. The applicant states “The Examiner repeatedly dismisses structural and functional limitations as “intended use.” Applicant respectfully reminds the Office that: Structural configurations that support intended function (e.g., stacking, thermal retention, sealing) must be considered; See: In re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997) — “The intended use of an apparatus is not alone enough to distinguish over the prior art, but the structural aspects required to perform that use are relevant to patentability.” Applicant’s claimed system has novel structural features required to perform delivery that Boyatt lacks”. As stated in the rejection above, the first and second insert tray are not positively recited in the claims. Therefore, claims limitations directed towards the unclaimed inserts will be treated as further defining an unclaimed aspect of the invention or treated as intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function. As shown throughout the rejection, Boyatt disclosed many of the claim limitations directed towards the unclaimed inserts. When Boyatt, didn’t explicitly disclose a limitation directed towards the unclaimed inserts, examiner showed that Boyatt was capable of performing the claimed and unclaimed subject matter.
Starting on page 12 of the applicants’ remarks, applicant rehashes most of the same points as above on a claim by claim basis. Examiner will do the same below:
Claim 1: Applicant states “Boyatt fails to anticipate claim 1. The claimed invention is directed to a configurable food delivery system that is (1) loaded with food at a point of preparation, (2) includes sealed and stackable trays, and (3) fits within a foldable carrying case in its closed configuration for the purpose of delivery. Boyatt merely teaches a collapsible drink-carrying tray intended for on-site consumption. It does not disclose sealed insert trays, does not teach that trays can be stacked and placed into a closed case for transport, and lacks any configuration for delivery functionality. Boyatt's system must be open to function, precluding transport in its compact or closed state. Furthermore, the Examiner's assertion that the trays are "capable" of being stacked and inserted into a closed case lacks evidentiary support. Capability must be clearly disclosed or enabled in the prior art to support anticipation, and here it is not”. 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., loaded with food at a point of preparation, (2) includes sealed and stackable trays, and (3) fits within a foldable carrying case in its closed configuration for the purpose of delivery) 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). Furthermore, the claim states “a foldable carrying case configured to carry a first insert tray and a second insert tray”. The first and second insert tray are not positively recited. Therefore, claim limitations directed towards the unclaimed inserts will be treated as further defining an unclaimed aspect of the invention or treated as intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function. Lastly, the trays are capable of being stackable since they can be placed on one another.
Claim 2: The applicant states “Claim 2 further limits claim 1 by requiring that the foldable carrying case be configured to support both insert trays in an open configuration when the trays are not stacked. Boyatt fails to disclose any such configuration. Its folding tray must be open for use, but it does not disclose a support mechanism or physical structure capable of supporting unstacked trays. Moreover, Boyatt does not disclose two separate trays being supported simultaneously in a deployed position. Applicant's invention, by contrast, is engineered to accommodate multiple configurations, including side-by-side tray placement”. Examiner respectfully disagrees. Figures 13 and 14 explicitly show this.
Claim 3: Applicant states “Claim 3 requires that the first insert tray includes a plurality of container receptacles. While Boyatt references cavities that might hold beverage cups, it does not disclose structural container receptacles suitable for solid food. Applicant's receptacles are designed to hold sealed food containers of varying sizes and materials. Boyatt's cavities are part of a folding tray designed for short- term drink transport, not modular food trays. Furthermore, the Examiner's assertion that this limitation "defines an unclaimed insert" and is thus "intended use" is improper. The structural nature of the receptacles is a tangible feature, and the claim does recite the insert trays as part of the overall system. Therefore, this limitation must be considered”. Again, as stated above, the inserts are not positively recited. Further defining an unclaimed aspect of the invention still results in an unclaimed featured. Regardless, the prior art still discloses the features claimed [the first insert tray includes a plurality of container receptacles], as shown above. Furthermore, 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., it does not disclose structural container receptacles suitable for solid food. Applicant's receptacles are designed to hold sealed food containers of varying sizes and materials) 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).
Claim 4: Applicant states “Claim 4, now properly dependent on claim 3, requires a container configured to fit within one of the receptacles. Boyatt's device does not include any sealed or self-contained food containers configured for use with its beverage tray. Its structure is incapable of receiving or retaining the kinds of modular, sealed food containers used in Applicant's system. Applicant's containers are configured for pre-loading, temperature retention, and sealing-none of which are present or suggested in Boyatt”. Boyatt discloses this feature, as explained in the rejection above. Furthermore, 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., Boyatt's device does not include any sealed or self-contained food containers configured for use with its beverage tray) 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).
Claim 5 and 6: Applicant states “Claims 5 and 6 add limitations regarding the thermal properties of the container-either maintaining an internal temperature below or above ambient temperature. Boyatt is silent regarding any materials or structure capable of such thermal functionality. The Examiner's conclusion that such functionality is "inherent" in all containers is incorrect and unsupported. Applicant's system is designed to use insulated and/or chilled inserts (e.g., ice packs) to actively manage internal food temperature during delivery, which is critical for items like raw fish. This structural functionality is not inherent in Boyatt's drink tray and is not disclosed”. Examiner respectfully disagrees. Claim 5 states “the container is configured to maintain an interior temperature below an ambient temperature” while claim 6 states “the container is configured to maintain an interior temperature equal to or above an ambient temperature”. Any container placed within the container receptacle will be made of a material that has some insulative properties which would limit heat transfer. This would be an inherent feature of any container. 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. insulated and/or chilled inserts (e.g., ice packs)) 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).
Claim 8: The applicant states “Claim 8 recites that the foldable case is configurable to fold into a three- dimensional shape resembling the hull of a boat. Boyatt's tray has no such configuration. The claimed visual and structural resemblance to a boat is purposeful and contributes to both the aesthetics and functional stacking design of Applicant's system. No reference in Boyatt suggests any boat-shaped configuration. The rejection relies on an impermissible subjective interpretation”. The prior art clearly shows this in figure 4.
Claim 11: Applicant states “Claim 11 requires that the trays are constructed, at least in part, of food-grade plastic material. Boyatt does not teach or suggest any food-grade materials. Its tray is not intended for direct food contact, and its use with pre-sealed beverages or bottles does not implicate any food safety requirements. Applicant's trays are explicitly designed for contact with food and must meet FDA safety standards”. Claim 11 states “the first insert tray and the second insert tray are constructed, at least in part, of a food grade plastic material”. As stated in the rejection above, the inserts are not positively recited in the claims and therefore claims limitations directed towards the unclaimed inserts will be treated as further defining an unclaimed aspect of the invention or treated as intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function. Furthermore, 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. Its tray is not intended for direct food contact, and its use with pre-sealed beverages or bottles does not implicate any food safety requirements. Applicant's trays are explicitly designed for contact with food and must meet FDA safety standards) 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).
Claim 12: Applicant states “Claim 12 requires that at least one receptacle include an "easy top removal cavity." Boyatt does not disclose any such cavity, nor does it disclose sealed containers where such a feature would be meaningful. Applicant's container system allows for practical removal of sealed lids-critical for convenient food consumption. This limitation is not an "intended use" but a structural configuration entirely missing in the prior art”. As stated in the rejection above, the inserts are not positively recited in the claims and therefore claims limitations directed towards the unclaimed inserts will be treated as further defining an unclaimed aspect of the invention or treated as intended use. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function.
Claim 13: Applicant states “Claim 13 requires a receptacle configured to hold a bottle or dipping cup. While Boyatt may accommodate beverage cups, it does not disclose structurally distinct receptacles designed for sealed bottles or jars. Applicant's system includes receptacles specifically molded to retain upright condiment bottles and jars of various diameters during transit”. Boyatt discloses a receptacle (figure 14, reference 42). Again, since the insert is not positively recited, the prior art only needs to be capable of performing the recited function. The receptacle 42 can hold containers, shown in figure 15. These containers are capable of holding a dip for dipping. Furthermore, 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. it does not disclose structurally distinct receptacles designed for sealed bottles or jars. Applicant's system includes receptacles specifically molded to retain upright condiment bottles and jars of various diameters during transit) 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).
Claim 14: Applicant states “Claim 14 requires that the carrying case be capable of transporting at least forty pounds. Boyatt includes no such weight-bearing capability. Its structure is inherently flimsy and collapsible, and was never intended to carry substantial loads. Applicant's system is tested to support heavy food orders and is structurally reinforced for such purposes”. As stated in the rejection above, this limitation has been treated as an intended use recitation. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the limitation has not been positively claimed, the system of Boyatt is capable of performing the recited function.
Claim 15: Applicant states “Claim 15 is dependent from other rejected claims but includes limitations distinct from those already discussed. If the parent claims are found allowable, Applicant respectfully requests independent consideration of claim 15 as well”. Since the prior art discloses the claim limitations of claim 15 and 1, the claim remains rejected.
Claims 19 and 20: Applicant states “Claims 19 and 20 incorporate additional features of tray configuration and sealing. These features are absent from Boyatt. There is no indication in Boyatt that its beverage tray includes sealing or is configured to change between delivery and service modes. Applicant's invention does precisely that: it can be transported in a sealed configuration and opened at the point of delivery”. Examiner respectfully disagrees. 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., There is no indication in Boyatt that its beverage tray includes sealing or is configured to change between delivery and service modes. Applicant's invention does precisely that: it can be transported in a sealed configuration and opened at the point of delivery) 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). Neither claims 19 or 20 have limitations directed towards “sealing” or “changing between delivery and service modes”. However, the claim limitations, as presented, are disclose by the prior art, as shown above.
On page 16, the applicant discusses a combination of Shen (US 10,434,660) and Boyatt under a 103 rejection. Examiner is unclear what the applicant is discussing in this section since US Patent 10,434,660 (Meyer et al.) is directed towards a surgical robotic arm admittance control and was never previously cited. Regardless, since the claimed subject matter is disclosed by the prior art of record, the claims remain rejected.
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.
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/JAVIER A PAGAN/Primary Examiner, Art Unit 3735