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 .
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) 1 and 3-5, is/are rejected under 35 U.S.C. 103 as being unpatentable over Spivack et al. (US 2015/0246751, hereinafter ‘Spivack’).
Spivack discloses an insulated shopping bag device comprising: a body having an exterior surface (see Fig. 7) and an opening (see Fig. 7); a snap fastener positioned on the exterior surface of the body (322); a strap (312), and a silver foil liner (para 0021, 0024); and wherein the snap fastener is capable of attaching the insulated shopping bag device to a second insulated shopping bag device (functional recitation) except does not expressly disclose the indicia as claimed.
It has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of information does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability.
The Examiner asserts that the Spivack assembly is the same structure claimed by applicant and the sole difference is in the content of printed material. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g., indicia for intended contents of the bag) and the substrate (e.g., assembly), which is required for patentability.
Accordingly, there being no functional relationship of the printed material to the substrate, as noted above, there is no reason to give patentable weight to the content of the printed matter, which by itself is non-statutory subject matter. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made provide the Spivack assembly indicia for intended contents of the bag.
Spivack as modified above further discloses a rigid bottom insert (para 0063); the strap is comprised of a handheld strap (312).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Spivack et al. (US 2015/0246751, hereinafter ‘Spivack’) as applied to claims 1 and 11 above, and further in view of Kieling et al. (US 8209995, hereinafter ‘Kieling’).
Witt as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the polyester material as claimed.
However, Kieling teaches constructing the body of an insulated shopping bag out of polyester material (col. 3, ll. 53).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the Witt as modified above bag out of polyester material as taught by Kieling, since 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 6, 7, 11, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 5490396) in view of Spivack et al. (US 2015/0246751, hereinafter ‘Spivack’).
Morris discloses an insulated shopping bag device comprising: a body having an opening (see Fig. 2); a lid attached to the body (2); a zipper lid fastener configured to secure the lid to the body (9); and a strap (17); except does not expressly disclose the magnetic fastener or indicia as claimed.
However, Spivack teaches a similar device being provided with a magnetic body fastener positioned on an exterior surface of the body (para 0082) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to add the magnetic fastener taught by Spivack to the bag taught by Morris, in order to allow the bag to be rolled or folded and stored closed as taught by Spivack (para 0082).
It has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of information does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability.
The Examiner asserts that the Morris as modified above assembly is the same structure claimed by applicant and the sole difference is in the content of printed material. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g., indicia for intended contents of the bag) and the substrate (e.g., assembly), which is required for patentability.
Accordingly, there being no functional relationship of the printed material to the substrate, as noted above, there is no reason to give patentable weight to the content of the printed matter, which by itself is non-statutory subject matter. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made provide the Morris as modified above assembly indicia for intended contents of the bag.
Morris as modified above further discloses the strap is a shoulder strap (intended use limitation).
Regarding claim 11, Morris discloses an insulated shopping bag device comprising: a body having an opening (Fig. 2); a lid (2); an insulating interior lining (19, 3, 4); a zipper lid fastener (9); and a strap (17); except does not expressly disclose the hook and loop fastener or indicia as claimed.
However, Spivack teaches a similar device being provided with a hook and loop positioned on an exterior surface of the body (para 0082) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to add the hook and loop fastener taught by Spivack to the bag taught by Morris, in order to allow the bag to be rolled or folded and stored closed as taught by Spivack (para 0082).
It has been held that when the claimed printed matter is not functionally related to the substrate it will not distinguish the invention from the prior art in terms of patentability. In re Gulack, 217 USPQ 401, (CAFC 1983). The fact that the content of the printed matter placed on the substrate may render the device more convenient by providing an individual with a specific type of information does not alter the functional relationship. Mere support by the substrate for the printed matter is not the kind of functional relationship necessary for patentability.
The Examiner asserts that the Morris as modified above assembly is the same structure claimed by applicant and the sole difference is in the content of printed material. Thus, there is no novel and unobvious functional relationship between the printed matter (e.g., indicia for intended contents of the bag) and the substrate (e.g., assembly), which is required for patentability.
Accordingly, there being no functional relationship of the printed material to the substrate, as noted above, there is no reason to give patentable weight to the content of the printed matter, which by itself is non-statutory subject matter. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was made provide the Morris as modified above assembly indicia for intended contents of the bag.
Morris as modified above further discloses the insulated interior lining is comprised of a gel (col. 2, ll. 21-39).
Regarding claim 19, Morris as modified above further discloses all limitations of the claim(s) as detailed above except does not expressly disclose the silver foil lining material.
However, Spivack itself teaches using the claimed foil material (para 0021, 0024).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use foil material as taught by Spivack, since 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Morris as modified above further discloses the insulated interior lining is positioned on the lid and positioned on an interior space of the body (Fig. 2).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 5490396) in view of Spivack et al. (US 2015/0246751, hereinafter ‘Spivack’) as applied to claim 6 above, and further in view of Harris et al. (US 6336577, hereinafter ‘Harris’).
Morris as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the adjustable strap as claimed.
However, Harris teaches providing an insulated carrying bag with straps, the strap is comprised of an adjustable length strap (80); the adjustable length strap is adjustable via a sliding buckle fastener (82).
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to add the adjustment buckle taught by Harris to the bag strap taught by Morris as modified above, in order to allow the strap length to be readily adjusted by the user as taught by Harris (col. 3, ll. 11-12).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morris (US 5490396) in view of Spivack et al. (US 2015/0246751, hereinafter ‘Spivack’) as applied to claim 11 above, and further in view of Yang (US 2021/0309444).
Morris as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the PEVA material as claimed.
However, Yang teaches constructing the an insulated shopping bag out of PEVA material (para 0047).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the Morris as modified above bag out of PEVA material as taught by Yang, since 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Response to Arguments
Applicant’s arguments with respect to all claim(s) 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.
Conclusion
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 PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
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/PETER N HELVEY/ Primary Examiner, Art Unit 3734
July 27, 2025