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 .
Applicant is reminded that the papers in the subject application electronic file, such as the specification in the electronic file, are the official papers in the subject patent application. Therefore, to avoid confusion and perhaps unnecessarily extending prosecution, applicant should refer to the official papers in the electronic file (such as to the specification in the electronic file) should applicant make any arguments in the future in which the applicant cites to support in the subject application disclosure.
In a similar vein, the applicant is also reminded that the Summary in the subject application is intended to be a summary of the claimed invention, and as such, descriptions therein often have the same scope as the scope of the claims, and therefore, they often lack the detail necessary, including specific references to the drawings, for a proper understanding of the invention. Not only that but the application Detailed Description is supposed to be where the claimed invention is described in the requisite detail. Therefore, the applicant is requested to make any arguments on the merits referencing the subject application disclosure by referring to the relevant parts of the Detailed Description in order to avoid confusion, difficulty examining the subject application and perhaps an unnecessary extension of the prosecution in the subject application.
The elected invention is Group I drawn to a blank, and the elected species is the species of Group 1 drawn to the blank of Figs 1-5. Claims 1-9 and 12-15 were examined last time as being directed to the elected invention and species.
New claims 16-22 are hereby withdrawn from further consideration (in addition to the previously withdrawn claims) pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/14/25.
New claim 16 recites in the last line thereof that “some or all of said auxiliary cut lines run in a curved manner” (with emphasis on the text in bold). Applicant cites specification paragraph [0026] of the published application as providing the requisite support for the new claim limitation. The applicant does not identify the published application, however, it is believed to be US2024/0010407. The problem is that the description in [0026] is vague and appears to describe the feature as belonging to an embodiment other than elected Figs 1-5. Not only that, but a review of [0045] in the Detailed Description (that appears to provide the relevant detail) expressly teaches that auxiliary cut lines 28 are rectilinear and auxiliary cut lines 30 run in a curved manner, and that therefore, at least in the Figs 1-5 species, all of the auxiliary cut lines do not run in a curved manner. Not only that, but specification [0055] that describes non-elected species 2 in detail, appears to describe that embodiment as having all of the cut lines run in a curved manner. For any one of these reasons, or all of them together, claim 16 is not directed to elected species Group 1 and is therefore withdrawn from further consideration.
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 23-24 are finally 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. Subject matter in the claims that was not described in the specification in such a way as to show possession of the claimed invention by the applicant is (with emphasis on any bold text):
“the outer fixation sections do not run between the cover sections” (See new claim 23 line 20. The applicant does not cite the original support for the new and negative claim limitation, and the examiner cannot find it anywhere in the original disclosure.);
“said bend line is configured to be rectilinear and continuous” (see claim 23 line 22. The examiner notes that unexamined claim 21 has the same recitation. The applicant cites “paragraph [0020] of the published application” as providing the requisite support for the new claim limitation. The applicant does not identify the published application, however, it is believed to be US2024/0010407. Paragraph [0020] of the document has been reviewed. The description thereof has been found not to comply with the requirements of the Statute for a description in full, clear, concise and exact terms as it relates to the claim limitation in question. For example only, the description is vague. In another example only, the description is confusing. In yet another example, there are no drawings to properly show what the text is describing. Therefore, the relevant description in [0020] like “The bend line is configured to be linear and continuous....” and “A continuously linear bend line can easily be produced....”, was not described in the specification in such a way as to show possession of the claimed invention by the applicant).
“the abutment sections do not extend into a region outside of the blank that adjoins free edges of the cover sections, wherein the region is at least partially confined by an imagined elongation of the bend lines” (see new claim 24. The applicant does not cite the original support for the new and negative claim limitation, other than “at least Fig. 1 and paragraph [0020] of the published application” and the examiner cannot find the requisite support for most of the claim in these citations or anywhere else in the original disclosure.).
The rejections are also ones for New Matter.
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 23-24 are finally 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 claims are indefinite because the features therein that were indicated above as not being properly described in the instant application specification cannot be properly interpreted.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 23-24 is/are finally rejected under 35 U.S.C. 103 as being unpatentable over Blin (11,440,716) in view of Edqvist et al. (5,230,425). The claims are only compared with the prior art to the extent the claim limitations are understood. With the exception of the indefinite claim limitations (some discussed below), the features of claims 23-24 appear to be the same as those examined in other claims previously. Therefore, the previous rejection is applied herein in its entirety by reference. Note the commentary in the last Office action with regard to the prior rejections.
Lines 17a, 17b, 19a and 19b of Blin are considered to be rectinlinear and continuous in the sense that they are straight and uninterrupted (as they traverse from one end of the blank to the other) respectively.
Claims 1-3, 5-7 and 12 are allowed.
Applicant's arguments filed 7/20/26 have been fully considered but they are not persuasive.
First, note all of the commentary above.
Second, with additional reference to the issue in in paragraph 6B above and to its indefiniteness, applicant argues without citation to any part of the Blin text that Fig 1 of blin shows lines 17a and 19a as partially interrupted lines and not as continuous lines. OK, so just looking at Fig 1 of Blin, and nothing else, what does the applicant mean? Does applicant mean that the fold lines are not continuous because they are perforated or shown by dashed lines? Even if this is the applicant’s meaning, how can the applicant be sure that lines 17a and 17b are perforated. Perhaps Blin simply chose to illustrate the Blin continuous bend lines with dash marks as shown in Fig 1. Even more importantly, however, it is not clear exactly what applicant’s “rectilinear and continuous” characterization means as applied to applicants line, because the feature is not well described in the only part of the specification cited by applicant as support for the claim change, paragraph [0020]. Exactly what does rectilinear and continuous mean as that term is applied to applicant’s bend line, as taught in [0020]? How can one be sure given the vague and confusing description in [0020] coupled with the lack of any drawings whatsoever to show what is being described? Does the also described “continuously rectilinear” mean the same thing or not? Why can Blin’s line not be described as being continuous in the sense that it runs from beginning to end without interruptions. The distinction sought to be drawn by the applicant has simply not been made.
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 JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736
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