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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/29/2026 has been entered.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 2023/0174274 to Brown II et al (Brown).
Regarding claim 1, Brown discloses a tray system (Fig 4) comprising an open container base (100) having at least one raised edge (420) and adapted to hold items, at least one divider (115) adapted to facilitate dividing of the open container base into different areas for holding items (€0030), each said divider comprising at least one defined portion (1105) that is adapted to facilitate bending of the divider by a user to cause desired breakage of the divider at a respective said defined portion into a desired length or lengths or desired width or widths since it has the structure as recited (€0053).
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US Patent No. 5,553,710 to Takama.
Regarding claim 1, Takama discloses a tray system (Fig 1) comprising an open container base (1) having at least one raised edge (12) and adapted to hold items, at least one divider (2) adapted to facilitate dividing of the open container base into different areas for holding items (Fig 1), each said divider comprising at least one defined portion (21) that is adapted to facilitate bending of the divider by a user to cause desired breakage of the divider at a respective said defined portion into a desired length or lengths or desired width or widths since it has the structure as recited (Fig 1).
Regarding claim 2, Takama further discloses said divider comprising multiple defined portions (21) adapted to facilitate breakage (Fig 1).
Regarding claim 3, Takama further disclosed defined portions (21) substantially spaced apart along a length of the divider (2) (Fig 1-2).
Regarding claims 4-7, Takama further discloses the define portion (21) capable of being formed by the process as recited since it has the structure as recited. Note that product by process limitations are given little patentable weight.
Regarding claim 8, Takama further discloses defined portion (21) is a perforation (dovetail groove) in the divider.
Claim(s) 1, 9-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US Patent No. 5,150,809 to Leigh.
Regarding claim 1, Leigh discloses a tray system (Fig 1) comprising an open container base (20) having at least one raised edge (top edge of sidewalls 22-25) and adapted to hold items, at least one divider (38) adapted to facilitate dividing of the open container base into different areas for holding items (Fig 2), each said divider comprising at least one defined portion (52) that is adapted to facilitate bending of the divider by a user to cause desired breakage of the divider at a respective said defined portion into a desired length or lengths or desired width or widths since it has the structure as recited (Fig 2).
Regarding claim 9, Leigh further discloses at least one connector (57) adapted to connect a divider to a raised edge of to another divider.
Regarding claim 10, Leigh further discloses the connector (57) defining a slot (between 60, 61) adapted to receive a distal edge of another connector since it has the structure as recited.
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0246471 to Hrovat in view of Leigh and US Patent No. 4,598,965 to Bricaud et al. (Bricaud).
Regarding claim 11, Hrovat discloses a tray system (Fig 1) comprising an open container base (10) having at least one raised edge (37) and adapted to hold items, at least one connector (26) adapted to facilitate dividing of the open container base into different areas for holding items, each connector (26) comprising a clip portion (38) that is associated with a distal slot portion (46), said clip portion (38) adapted to attach the connector to a respective said raised edge (37) of the open container base or to a divider (24), the distal slot portion (46) adapted to receive a divider (15) (Fig 6, col 2, ll. 45-50). Hrovat further discloses the clip portion comprising at least one prong (38) adapted to engage raised edge of the container base since it has the structure as recited (Fig 2). Hrovat does not teach a second prong operationally opposing the first prong to facilitate positioning of the clip portion over the edge of the container base. However, Leigh discloses a tray system (Fig 1) comprising at least one divider (38) with at least one connector (57) adapted to connect a divider to a raised edge of to another divider, the connector having first and second prongs (60, 61) operationally opposing to facilitate positioning of the clip portion over edge of the base (Fig 5), the prongs adapted to flex and be resilient (col. 4, ll. 50-55). One of ordinary skill in the art would have found it obvious to incorporate a second prong to Hrovat and have the legs be resilient as suggested by Leigh in order to facilitate attachment of the divider. The modified Hrovat does not teach each prong having a rounded distal portion. Bricaud discloses a connector clip (Fig 2-4) and in particular discloses the clip having prongs with a rounded distal portion (15) for facilitating engagement of the clip. One of ordinary skill in the art would have found it obvious to have the prongs of the modified Hrovat be rounded as suggested by Bricaud in order to provide hooks to engage a wall. The modification would have resulted in the Hrovat connector being undesirably removed since it has the structure as recited.
Claim(s) 11, 24-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No. 6,871,921 to Ernst in view of Leigh.
Regarding claim 11, Ernst discloses a tray system (Fig 1) comprising an open container base (1) having at least one raised edge and adapted to hold items, at least one connector (25) adapted to facilitate dividing of the open container base into different areas for holding items, each connector (25) comprising a clip portion (31) that is associated with a distal slot portion (24), said clip portion (31) adapted to attach the connector to a respective said raised edge of the open container base or to a divider (15), the distal slot portion adapted to receive a divider (15) (Fig 6, col 2, ll. 45-50). Ernst further discloses the clip portion comprising at least one prong (32) adapted to engage raised edge of the container base since it has the structure as recited.
Ernst further discloses the at least one prong adapted to flex to facilitate positioning of the clip portion over the raised edge of the open container base or divider (col. 3, ll. 1-5). Ernst further discloses the at least one prong resilient to adjust to variations of thickness (col. 3, ll. 1-5). Ernst further discloses the prong comprising a rounded distal portion (32, Fig 9) adapted to facilitate positioning of the clip portion over a raised edge. Ernst further discloses the rounded distal portion further adapted to resist against the connector being undesirably removed from the raised edge since it has the structure as recited. Ernst does not teach a second prong operationally opposing the first prong to facilitate positioning of the clip portion over the edge of the container base. However, Leigh discloses a tray system (Fig 1) comprising at least one divider (38) with at least one connector (57) adapted to connect a divider to a raised edge of to another divider, the connector having first and second prongs (60, 61) operationally opposing to facilitate positioning of the clip portion over edge of the base (Fig 5), the prongs adapted to flex and be resilient such that they are adapted to adjust to variations of thickness (Leigh, col. 4, ll. 50-55). One of ordinary skill in the art would have found it obvious to incorporate a second prong to Ernst and have the legs be resilient as suggested by Leigh in order to facilitate attachment of the divider.
Regarding claim 24, Ernst further discloses distal slot portion (24) comprising a first side (26), second side (26) opposite first side such that a slot (24) is formed between the first and second side, a proximal edge (30) connecting first and second sides (26), a top edge (28) that connects first and second sides (26), top edge (28) adapted to rest on top of a divider (15).
Regarding claim 25, Ernst further discloses clip portion (31) adjacent proximal edge (30) (Fig 6).
Regarding claim 26, Ernst further discloses clip portion (31) positioned adjacent intersection of proximal edge (30) and top edge (28) (Fig 6).
Regarding claims 27, Ernst further discloses first and second flange (left and right portions of 30 flanking the slot) extending away from proximal edge and first and second sides, the flanges extending below the clip portion (31) (Fig 6).
Regarding claim 28, Ernst further discloses the flanges (left and right portions of 30 flanking the slot) adapted to facilitate attachment of the connector to a raised edge (9) since it has the structure as recited.
Regarding claim 29, Ernst further discloses clip portion (31) and distal slot portion (24) are respectively configured such a respective raised edge of open container base adapted to be substantially perpendicular to a divider (15) to be received by distal slot portion (24) (Fig 6).
Claim(s) 19-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ernst in view of Leigh and US 2008/0115449 to Kodi.
Regarding claim 19, the modified Ernst teaches the tray system of claim 17 but does not teach third and fourth prongs. However, Leigh further discloses a third prong (61) to facilitate clipping and Kodi discloses a clip (4, Fig 2) having four prongs (10) to facilitate clipping of an item with the fourth prong operationally opposing the third prong. Taken as a whole, one of ordinary skill in the art would have found it obvious to duplicate additional prongs to the modified Ernst such that there were a third and fourth prong operationally opposing each other as suggested by Kodi in order to facilitate clipping of an item in between the prongs since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 20, the modified Ernst teaches the tray system of claim 19 and further teaches all prongs resilient and flexible to adjust to variations in thickness (Leigh, col. 4, ll. 50-55).
Regarding claim 21, the modified Ernst further teaches first and second prong spaced apart and substantially parallel to third and fourth prong (Kodi, Fig 2).
Regarding claim 22, the modified Ernst further teaches first and second prong positioned adjacent first side of distal slot portion and third and fourth prong positioned adjacent second side of the distal slot portion opposite the first side (Kodi, Fig 2).
Regarding claim 23, the modified Ernst further teaches first and second prong forming a first set, third and fourth prong forming a second set and first and second set forming a proximal slot that can receive distal edge of another connector since it has the structure as recited. In particular, Kodi shows the four prongs (10, Fig 2) spaced apart with openings that can form a proximal slot as recited.
Response to Arguments
Applicant's arguments filed 5/29/2026 have been fully considered but they are not persuasive. Applicant argues that none of the prior art teach a divider with a defined portion adapted to facilitate bending of the divider by a user to cause desired breakage. This is not persuasive because so long as prior art has the structure as recited, then it can also perform the function as recited.
In response to applicant's argument that the prior art does not explicitly teach the defined portion to facilitate bending, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the defined portion of applicant’s invention is to facilitate breakage, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that there is no motivation to modify Takama or Leigh to meet the claim limitations; however, no modification was made in the rejection since Takama already discloses all the claimed limitations.
Applicant argues that Ernst does not teach multiple prongs that are resilient. However, Leigh discloses clips with multiple resilient prongs and one of ordinary skill in the art would have found it obvious to incorporate multiple resilient prongs to Ernst as suggested by Leigh to facilitate connection and fit. Applicant argues that Ernst does not teach rounded distal portions on the prongs. This is not persuasive because the end portion of the Ernst prong is already rounded and are adapted to resist removal because they fit into a groove (9).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that changing Ernst single prong to a double prong would change the principle of operation, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant's argument that Kodi is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kodi is directed to a specific type of clip connector and Ernst and Leigh are directed to case with dividers that use clip connectors for attachment.
Conclusion
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/ROBERT POON/Examiner, Art Unit 3735
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