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's election of the lack of unity requirement with traverse of Group I and Species I, claims 1, 2 and 8-13 in the reply filed on 06/12/2025 is acknowledged. The traversal is on the ground(s) that “Group I and Group II are linked to form a single general inventive concept. This is because the mounting tool of claim 14 is specifically designed and described as being specially adapted for use with the claimed retention support as recited in elected claims 1-13 … in a practical way” and “the mounting tool is not a generic tool but an apparatus specially adapted for performing the process of using/mounting the claimed retention system” on pages 6-7 of the remarks are noted. They are not persuasive because Group I and Group II lack unity of invention because the two groups do not share the same or corresponding technical feature since the retention system of Group I can be manually applied by a user to secure an article or a package with an article on a base of a container without the use of a mounting tool as claimed and a mounting tool of Group II can be used as a hammer or a drywall tool. Applicant’s further traverse on the ground(s) that the Examiner must show “the following elements to properly issue a Restriction Requirement: (1) …; and (2) …” under MPEP § 808 and also MPEP § 806.05(j) on pages 7-8 of the remarks are noted. They are not persuasive because sections MPEP § 808 and also MPEP § 806.05(j) are directed to a requirement for a Restriction Requirement under a national application. However, the instant patent application is the national stage under 35 U.S.C. 371 and there are No requirement for the Examiner to provide separate classification; separate status in the art; or a different field of search in the lack of unity of invention.
Applicant further traverse the lack of unity of invention for the species in the remarks such as a common special technical feature comprises a retention support with a specific configuration of first flaps, second flaps, and fold lines designed to fold into an angular shape and be mounted via the second flaps as in claim 8 on pages 9-10 of the remarks and requested the Election Requirement should be withdrawn are noted. They are not persuasive because such retention system with the common special technical feature as claimed in the combination of claims 1 and 8 do not avoid the prior art, such as a retention system of Shimamura et al. (U.S. Patent No. 5,662,305 (see the details below)). Also, the request is denied because the species are independent and distinct from each other and because examination of each species will necessitate disparate searches which would clearly pose a burden as clearly shown by the Examiner in the Election Requirement. Applicant is not entitled to examination of multiple independent inventions in one application.
The requirement is still deemed proper and is therefore made 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.
Claims 1-2 and 8-13 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.
The claims are replete with indefinite language too numerous to mention specifically, and should be revised carefully. For example only, the phrases “configured to be mounted on an area of the internal surface of the container” and “the body to be secured is restrained inside the container” in claim 1, “that is mounted on the base of the container”, “ wherein an area of the body to be secured is in contact with”, “while other areas of the body to be secured are in contact with areas of the lateral walls of the container” in claim 2, “is mounted on the internal surface of the container” in claim 8, “attached to the internal surface of the container” in claim 9 define the retention system in reference to a body and a container which are undefined and have not been positively claimed rendering the claims vague and indefinite because it is not clear what structural limitations Applicant intends to encompass with such language. The phrases “selected between a package with the article inside and the article itself which rests on the base of the container” and “selected from among a horizontal plane parallel to the base … perpendicular to the base of the container” in claim 1, and “selected between a first interior position emerging towards the interior space … the retention support” in claim 9, and “selected from among an acute angle, an obtuse angle, and a 90° angle” in claim 10 are alternative and indefinite and an improper Markush group. In claim 2, the phrase “the system” should be changed to --the retention system--. In claim 2, the phrase “at least one retention support” is a double recitation of claim 1. In claims 8 and 9, the phrase “the laminar retention support” (two places) lacks proper antecedent basis. The phrases “the assembly” in claim 9 and “the flaps” in claim 13 lack proper antecedent basis. In claim 13, the term “them” is unclear and indefinite and must be replaced with the structural limitations as claimed.
The applicant is required to make corrections to the claims wherever appropriate in order to clarify same. If applicant continues to prosecute the application, revision of the specification and claims to present the application in proper form is required. While an application can be amended to make it clearly understandable, no subject matter can be added that was not disclosed in the application as originally filed.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 8-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Shimamura et al. (5,662,305; hereinafter Shimamura). To the extent that the Examiner can determine the scope of the claims, Shimamura discloses a retention system (1) which is inherently capable for articles packed in a container for the transport, the retention system comprising at least one retention support (1) which is inherently capable to be mounted on an area of an internal surface of the container wherein the retention support is in contact with at least part of a body to be secured and the body is selected from a group consisting of a package with an article inside and an article itself which rests on the base of the container. The retention support of Shimamura is inherently capable to secure the body inside the container on a plane selected from the group consisting of a horizontal plane parallel to the base of the container, a vertical plane perpendicular to the base of the container, and two perpendicular planes with the horizontal plane parallel to the base of the container and the vertical plane perpendicular to the base of the container.
As to claim 2, the at least one retention support of Shimamura is inherently capable to be mounted on the base of the container with an area of the body to be secured is in contact with the retention support while the other areas of the body to be secured are in contact with areas of the lateral walls of the container and the retention system retrains the body to be secured in the horizontal plane parallel to the base of the container (a container and a body are not positively recited in the claims).
As to claim 8, Shimamura further discloses the retention support comprises a foldable laminar body (1) comprises at least two first flaps (4a, 4b) attached by means of a first fold line (5), and two second flaps (6) which are attached to the first flaps by means of second fold lines (7). In a folded position of the retention support, the first two flaps are arranged in two planes with an angular offset while the second flaps are arranged in the same plane with an angular offset with respect to the first flap (Fig. 2 or 3A) with the retention support is mounted on the internal surface of the container by means of its two second flaps.
As to claim 9, the two second flaps of the retention support of Shimamura are inherently to be attached to the internal surface of the container by means of an adhesive material (9; column 3, lines 24-41) that impregnates one of the faces of the second flaps and the attachment with the adhesive material stably maintains the retention support, and the second flaps are inherently capable to be oriented according to a position selected from a group consisting of a first interior position emerging towards the interior space of the retention support and a second exterior position emerging towards the exterior of the retention support.
As to claim 10, the retention system of Shimamura comprises the first two flaps of the retention support form an angle selected from a group consisting of an acute angle, an obtuse angle, and a 90° angle.
Claim(s) 1-2, 8 and 10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jeffers (3,655,112). To the extent that the Examiner can determine the scope of the claims, Jeffers discloses a retention system (A) which is inherently capable for articles packed in a container for the transport (column 1, lines 3-6 & 25-27), the retention system comprising at least one retention support (A; Figs. 1-2) which is inherently capable to be mounted on an area of an internal surface of the container wherein the retention support is in contact with at least part of a body to be secured and the body is selected from a group consisting of a package with an article inside and an article itself which rests on the base of the container. The retention support of Jeffers is inherently capable to secure the body inside the container on a plane selected from the group consisting of a horizontal plane parallel to the base of the container, a vertical plane perpendicular to the base of the container, and two perpendicular planes with the horizontal plane parallel to the base of the container and the vertical plane perpendicular to the base of the container.
As to claim 2, the at least one retention support of Jeffers is inherently capable to be mounted on the base of the container with an area of the body to be secured is in contact with the retention support while the other areas of the body to be secured are in contact with areas of the lateral walls of the container and the retention system retrains the body to be secured in the horizontal plane parallel to the base of the container (a container and a body are not positively recited in the claims).
As to claim 8, Jeffers further discloses the retention support comprises a foldable laminar body (A) comprises at least two first flaps (10, 11, 31, 32) attached by means of a first fold line (12), and two second flaps (13, 14, 21, 22) which are attached to the first flaps by means of second fold lines (15). In a folded position of the retention support, the first two flaps are arranged in two planes with an angular offset while the second flaps are arranged in the same plane with an angular offset with respect to the first flap (Fig. 1 or 2 or 6) with the retention support is mounted on the internal surface of the container by means of its two second flaps.
As to claim 10, the retention system of Jeffers comprises the first two flaps of the retention support form an angle selected from a group consisting of an acute angle, an obtuse angle, and a 90° angle.
Claim(s) 1-2, 8 and 10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Konopko (4,372,446). To the extent that the Examiner can determine the scope of the claims, Konopko discloses a retention system (10; Figs. 2 & 8-9) which is inherently capable for articles packed in a container for the transport, the retention system comprising at least one retention support (10) which is inherently capable to be mounted on an area of an internal surface of the container wherein the retention support is in contact with at least part of a body to be secured and the body is selected from a group consisting of a package with an article inside and an article itself which rests on the base of the container. The retention support of Konopko is inherently capable to secure the body inside the container on a plane selected from the group consisting of a horizontal plane parallel to the base of the container, a vertical plane perpendicular to the base of the container, and two perpendicular planes with the horizontal plane parallel to the base of the container and the vertical plane perpendicular to the base of the container.
As to claim 2, the at least one retention support of Konopko is inherently capable to be mounted on the base of the container with an area of the body to be secured is in contact with the retention support while the other areas of the body to be secured are in contact with areas of the lateral walls of the container and the retention system retrains the body to be secured in the horizontal plane parallel to the base of the container (a container and a body are not positively recited in the claims).
As to claim 8, Konopko further discloses the retention support comprises a foldable laminar body (10) comprises at least two first flaps (20, 22) attached by means of a first fold line (24), and two second flaps (32, 34) which are attached to the first flaps by means of second fold lines (28, 30). In a folded position of the retention support, the first two flaps are arranged in two planes with an angular offset while the second flaps are arranged in the same plane with an angular offset with respect to the first flap with the retention support is mounted on the internal surface of the container by means of its two second flaps.
As to claim 10, the retention system of Konopko comprises the first two flaps of the retention support form an angle selected from a group consisting of an acute angle, an obtuse angle, and a 90° angle.
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.
Claim(s) 9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimamura or Jeffers or Konopko in view of Johnson (3,200,547) and/or Swannell (2006/0280891) and/or Gingras-Taylor (5,749,512).
As to claim 9, the two second flaps of the retention support of Shimamura are capable to be attached to the internal surface of the container by means of an adhesive material (9; column 3, lines 24-41) that impregnates one of the faces of the second flaps and the attachment with the adhesive material stably maintains the retention support, and the second flaps are capable to be oriented according to a position selected from a group consisting of a first interior position emerging towards the interior space of the retention support and a second exterior position emerging towards the exterior of the retention support. With respect to the retention system of Jeffers or Konopko, each of Jeffers and Konopko discloses the retention support as above having most of the limitations of the claim except for the two second flaps of the retention support are attached to the internal surface of the container by means of an adhesive material that impregnates one of the faces of the second flaps as claimed. Johnson teaches a laminar structure comprising at least one corner protector (10; 11) including a body (12) having an adhesive material (19) that impregnates one of the faces of the body. Swannell teaches a corner protector (16) comprising a first leg (26) and a second leg (28), and an adhesive material (46) impregnates on either an inner surface (38; Fig. 2) or outer surface (36; Fig. 6) of the first leg or the second leg for attaching to an inside corner or an outside corner of the container. Gingras-Taylor teaches a corner reinforcement (Figs. 1-5) comprising at least one corner support including a foldable body having at least two first flaps (20, 22) attached by means of a first fold line (28), and two second flaps (24, 26) which are attached to the first flaps by means of second fold lines (28a, 28b), and an adhesive material (30) impregnates one of the faces of the first and second flaps (Figs. 3-4). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Johnson and/or Swannell and/or Gingras-Taylor to modify the retention system of Jeffers or Konopko so the retention system is constructed with the two second flaps of the retention support comprise an adhesive material that impregnates one of the faces of the second flaps to allow the retention support to be attached to the internal surface of the container to prevent the retention support from moving during shipping and/or handling and to provide an additional strength and rigidity to the container.
As to claim 11, each of the retention system of Shimamura or Jeffers or Konopko as above comprises all the limitation of the claim except for at least one of the first two flaps of the retention support is attached to the internal surface of the container by means of an adhesive material that impregnates one of the two faces of the first flaps. Swannell teaches the corner protector comprising the adhesive material (46) disposed on the corner protector for allowing the corner protector to be attached to the internal surface of the container (64; Fig. 5). Gingras-Taylor further teaches an adhesive material (30) impregnates one of the faces of the first flaps and the second flaps (Figs. 3-4). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Swannell and/or Gingras-Taylor to modify the retention system of Shimamura or Jeffers or Konopko so the retention support is constructed with at least one of the first two flaps of the retention support is attached to the internal surface of the container by means of an adhesive material that impregnates one of the two faces of the first flaps for allowing the retention system restrains the article to be secured at different position and because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimamura or Jeffers or Konopko in view of Kovaleski et al. (2,943,732; hereinafter Kovaleski) and/or Blatt (4,122,949). Each of the retention support of Shimamura or Jeffers or Konopko comprises the foldable laminar body with two second flaps (see above) except for the foldable body comprises a prismatic-shaped prismatic body as claimed. Kovaleski teaches a container (10) comprising a foldable laminar body (14) having a prismatic-shaped prismatic body (14a; 14g; 14c) and at least two flaps (17). Blatt teaches a container (10) comprising a foldable laminar body (11) having a prismatic-shaped prismatic body (28) and at least two flaps (31). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Kovaleski and/or Blatt to modify the retention system of Shimamura or Jeffers or Konopko so the retention support is constructed with the foldable body comprises a prismatic-shaped prismatic body and the two second flaps for allowing the retention system restrains the article with different shapes to provide more convenience for a user.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shimamura or Jeffers or Konopko in view of Wiley et al. (4,598,825; hereinafter Wiley) and/or Plotkin et al. (5,526,597; hereinafter Plotkin). The retention system of Shimamura or Jeffers or Konopko as above having most of the limitations of the claim except for the retention support comprises cantilevered flaps attached to the first flaps by means of fold lines and the flaps are folded inwards as claimed. Wiley teaches a corner protector (27) comprising a retention support having a cantilevered flap (23) attached to a panel (22) for securing an article (31). Plotkin teaches a frame (14) comprising cantilevered flaps (54) for retaining an article (12) within the frame. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Wiley and/or Plotkin to modify the retention system of Shimamura or Jeffers or Konopko so the retention support is constructed with cantilevered flaps attached to the first flaps by means of fold lines and the flaps are folded inward and are configured so that the body to be secured contacts the cantilevered flaps when the body is restrained inside the container for better protecting the body with various sizes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN K BUI whose telephone number is (571)272-4552. The examiner can normally be reached Generally M-F, 7-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached on 571-270-5531 or orlando.aviles-bosques@uspto.gov. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUAN K BUI/
Primary Examiner, Art Unit 3736