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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to an insert for a portable case.
II. Claims 9-13, drawn to a method of forming a portable case.
III. Claims 14-20, drawn to a method of forming an insert for a portable case.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the process can make a case with an all foam single material interior, without the multiple layers of the insert of Group I.
Inventions III and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product can be made without the third liquid material required by Group III.
Inventions II and III are related as combination and subcombination. Inventions in this relationship are distinct if it can be shown that (1) the combination as claimed does not require the particulars of the subcombination as claimed for patentability, and (2) that the subcombination has utility by itself or in other combinations (MPEP § 806.05(c)). In the instant case, the combination as claimed does not require the particulars of the subcombination as claimed because the method of Group II does not require injecting a third liquid material as in Group III. The subcombination has separate utility such as making an insert for a shelf that does not become part of a portable case. Additionally, making the insert following the method of Group III does not require injecting the liquid memory foam into the cavity of a case body.
The examiner has required restriction between combination and subcombination inventions. Where applicant elects a subcombination, and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Inventions I-III require different fields of search, including different classification areas and different search queries. See MPEP 808.02(C).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Stephen Sequin on September 24, 2025 a provisional election was made without traverse to prosecute the invention of Group III, claims 14-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-13 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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) 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stott (US 6,355,193).
Regarding claim 14, Stott discloses a method of forming an insert for a portable case (panel, abstract; what the panel is used for thereafter is an intended use) comprising: providing a containment member that establishes a cavity (molds 500, col. 9 ll. 52 to col. 10 ll. 39, Figs. 6-9; mold 600, col. 10 ll. 58 to col. 11 ll. 15, Fig. 11), wherein the cavity includes a plurality of recesses (macro-indentations 516 and macro-protrusions 520, col. 8 ll. 32-44, Figs. 6-9, 11); injecting a quantity of a first liquid material into one of the recesses (slurry for concrete with color or pigment for indentations, col. 4 ll. 53-60; col. 8 ll. 49-51, Fig. 2b); injecting a quantity of a second liquid material into another one of the recesses (slurry for concrete with different color or pigment for protrusions, col. 4 ll. 53-60; col. 8 ll. 49-51, Fig. 2b, Fig. 10b);
injecting a quantity of a third liquid material into the cavity subsequent to the steps of injecting the quantity of the first and second liquid materials (elastomer layer 46 sprayed, col. 5 ll. 41-51, col. 9 ll. 31-34, Fig. 2b, 10c);
injecting a quantity of liquid memory foam into the cavity subsequent to the step of injecting the quantity of the third liquid material (foam is injected, col. 10 ll. 8-18, Figs. 2b, 10d;
curing the quantity of the first and second liquid materials to establish respective first and second surfaces feature of the insert (col. 4 ll. 43-60, Fig. 2a; col. 9 ll. 27-30, col. 10. Ll. 62-66), the first and second surface features arranged to establish a graphic (col. 4 ll. 43-60, Fig. 2a);
curing the quantity of the third liquid material (col. 9 ll. 34-41); and curing the quantity of the liquid memory foam (foam introduced, expands, and eventually sets, col. 10 ll. 27-50).
Regarding claim 15, Stott discloses wherein: the quantity of the first liquid material is associated with a first color; and the quantity of the second liquid material is associated with a second color that differs from the first color (slurry for concrete with different colors or pigments for indentations and protrusions, col. 4 ll. 53-60; col. 8 ll. 49-51, Fig. 2b, Fig. 10b).
Regarding Claim 16, Stott discloses removing the insert from the cavity of the containment member subsequent to the step of curing the quantity of the liquid memory foam (col. 10 ll. 5-7; this is after the foam has expanded and stiffened, col. 9. Ll. 62-66); and positioning the insert in a case body of the portable case subsequent to the removing step (Parent claim 14 and the elected group recites a method of making an insert for a portable case. Subsequent steps regarding the produced insert, such as positioning the insert in a case body, constitute an intended use of the insert that has been made. It is enough for col. 10 ll. 5-7 of Stott to have taught that the panel has been removed, and therefore could be placed into a case body [such as whatever packaging is used to transport the produced article to a customer]).
Regarding claim 17, Stott discloses wherein: the case body includes a first case portion and a second case portion coupled to the first case portion at a hinge joint, the first case portion and the second case portion are moveable between an open position and a closed position to enclose a cavity of the case body dimensioned to at least partially receive an article; and the positioning step includes situating the insert in the cavity of the case body (Parent claim 14 and the elected group recites a method of making an insert for a portable case. Subsequent steps regarding the produced insert, such as details regarding the case body the insert goes into, constitute an intended use of the insert that has been made. It is enough for col. 10 ll. 5-7 of Stott to have taught that the panel has been removed, and therefore could be placed into such a case body).
Regarding claim 18, Stott discloses wherein: wherein the article is a firearm (Parent claim 14 and the elected group recites a method of making an insert for a portable case. Subsequent steps regarding the produced insert, such as details regarding the case body the insert goes into, or what goes into the case, constitute an intended use of the insert that has been made. It is enough for col. 10 ll. 5-7 of Stott to have taught that the panel has been removed, and therefore could be placed into such a case body and a firearm could be placed in such a case.).
Regarding claim 19, Stott discloses establishing geometry along a face of the containment member, the geometry substantially corresponding to a negative of the graphic (Figs. 10a-d show mold shape being a negative of the resulting structure of the surface of the produced panel, see Fig. 2a for an example of the product).
Regarding claim 20, Stott discloses wherein the containment member is a portable case (mold 500 or mold 6 can be used as a portable case, Figs. 6-9 or 11).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Stott (US 2002/0106504) teaches subject matter similar to Stott (US 6,355,193), cited above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J CHIDIAC whose telephone number is (571)272-6131. The examiner can normally be reached 8:30 AM - 6:00 PM.
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, Sam Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS J CHIDIAC/ Examiner, Art Unit 1744
/XIAO S ZHAO/ Supervisory Patent Examiner, Art Unit 1744