DETAILED ACTION1
REJECTIONS UNDER 35 USC 103
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious2 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 9-11 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2018/0215117 to De Boer in view of U.S. 2012/0252244 to Elkins and/or https://afriendlyfox.com/ 2022/05/19/wall-mount-a-tv-into-metal-studs-with-confidence/ (hereafter AFF)
Claim 1 recites a carton for holding [a] product. De Boer relates to such a carton, specifically a cardboard box. See De Boer [0001] & Fig. 6. The box (100) shown in figure 6 has at least one panel (88, 92, 94) enclosing an interior of the carton. Claim 1 then recites a drill template disposed on a…surface of the…panel. De Boer teaches that designs of any type can be printed on any or all of the panels. See De Boer [0015]-[0016]. De Ber does not explicitly teach printing a drill template on the box, but it would have been obvious to do so in view of either or both of Elkins and AFF.
Elkins teaches that it is known to provide customers with paper drill templates (50) for use in properly drilling and then installing assorted items. See Elkins [0028] & Fig. 7. Likewise, AFF shows a picture above Step 6 of such a paper template. Thus, the prior art teaches the need to provide a printed drill template with many products. De Boer teaches that printed materials can be printed directly onto the packaging. As such, it would have been obvious to directly print the template onto the package to reduce the need for a separate printed document packaged inside with the product. As further evidence, that such a modification would have been obvious, the attached figure from AFF shows that the package for a TV wall mount is printed with a ruler, thus the prior art already shows that the idea of printing useful installation information directly on the box was a known technique.
PNG
media_image1.png
562
844
media_image1.png
Greyscale
Claim 1 then recites that the drill template include[e]s at least one alignment feature…and at least one indicator of a drilling or cutting location. Both Elkins and AFF show an alignment feature and drilling locations. See Elkins Fig. 7 and AFF picture above Step 6, reproduced below. Finally, claim 1 recites that the carton is configured to…enable an installer to place the carton against the mounting surface with an opposing outer surface of the…panel against the mounting surface align it, and drill. Again, this is the intended use of the box and templates. The box of De Boer would likewise be capable of this use after modification. A method claim specifically reciting the process of printing the template on the inside of the box, keeping the template attached to the box, and using the template such that the box will catch dust and debris might potentially be an allowable method. But it does not limit the structure of the carton itself in any meaningful way.
PNG
media_image2.png
400
804
media_image2.png
Greyscale
Claim 1 further recites that the template is on an inner surface. It would have been obvious to try to place the template on the inner surface because there are a finite number of box locations for printing the template on and it would have been obvious to try any of them.
Regarding claim 2, figure 7 of Elkins shows the indicator (54) is a marking namely an X. Figure 7 shows a plurality of indicators as well, as recited in claim 3. Claim 4 recites the alignment feature can be a vertical or horizontal alignment feature. A flat surface, such as that of the top of the paper indicator in both references, is a horizontal alignment feature. Claim 5 recites a plurality of alignment features…to a corresponding plurality of locations. The reproduced figure of the AFF template shows a large number of oval drill locations that can be verified against the mount, as shown in step 6 of AFF. Thus, each is an alignment feature as well. Elkins shows both edges, which can be alignment features and a central bore corresponding to the bore of the device being attached, which is therefore also a second alignment feature. Regarding claim 6, both references have edge[s].
Claim 9 recites that the panel is a top panel…and the drill template is disposed on an inner surface. De Boer teaches printing on any panel of the box, the choice of a the top panel is a mere design choice or obvious to try, as is the inner surface as well (both rationales). Claim 10 merely recites the same features as claim 8 and is rejected for the same reasons. Claim 11 recites that the template has a cutout location. This is interpreted as a location that either already has a hole or a location where material is designated to be removed. Either interpretation lies within the broadest reasonable interpretation. The template of AFF has empty slot regions. The equivalent template on the carton would therefore either have these slots or would have markings for them to be cutout.
Claim 13 recites adhesive on the opposing surface. This feature is taught by De Boer in two ways. First, De Boer teaches that each panel consists of two flat layers (12, 18) and a corrugated layer (10) between. See De Boer [0033] and Fig. 3. Examiner defines surface (12), which is the printed layer, as the surface with the drill template. The combination of the corrugation and opposing layer (18) is then the opposing surface because the layer (18) would be placed against a mounting surface. This opposing surface has adhesive within it between the corrugation and other layers. See De Boer [033]. As such, there is adhesive located on an internal portion of the opposing surface. Second, De Boer teaches using adhesive tape for closing the boxes, and thus the printed panel can have adhesive tape. See De Boer [0043].
Finally, claims 14-15 recite the template is the inner surface of the bottom panel. As with claims 9-10, the choice of which panel has the drill template printed on it is a mere design choice.
Claim 16 recites the same features as claim 1, these features are rejected for the same reasons. Claim 16 differs only in two respects. First, claim 16 recites a plurality of panels enclose the interior, rather than one or more. De Boer shows this. Second, claim 16 recites that the carton is configured to receive debris from the drilling. A box is inherently capable of receiving anything, including debris, into itself. Claim 17 recites a feature present in claim 13, that is rejected for the same reasons.
Claim 18 recites a combination of features recited in claims 1 and 13-15, which are rejected for the same reasons. Claim 1 also recites the box is configured i.e. capable of being used in a specific way in which the top panel is placed against a mounting wall, which attached, used as a drill template, with the box catching debris during the process. Claim 18 is not a method claim, however, any box is capable of being placed against a wall and capable of catching debris when placed there. And a drill template on the top panel is capable of this use also. But the actual process of doing so is not required. Thus, claim 18 is also taught as with claims 1 and 13-15.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2018/0215117 to De Boer in view of U.S. 2012/0252244 to Elkins and/or https://afriendlyfox.com/ 2022/05/19/wall-mount-a-tv-into-metal-studs-with-confidence/ (hereafter AFF) and further in view of CA 2,286,664 to Esser.
Claim 12 recites perforation surrounding a removable region of the drill template. De Boer does not teach having a perforated segment. But it would have been obvious to modify it to include such a feature in view of Esser. Esser teaches that it is known to perforate shipping boxes to allow removal of designated regions. It would have been obvious to perforate the region around the template to facilitate easier use and adhesion to a wall.
RESPONSE TO ARGUMENTS
Applicant's arguments filed June 8, 2026 have been fully considered but they are not persuasive. Each of applicant’s remarks is set forth, followed by examiner’s response.
Applicant first argues that Elkins and AFF only teach providing stickers, labels, or paper sheet templates and do not teach printing a drilling template on the box. This argument improperly attacks the references individually rather than as a combination. The primary reference teaches printing things directly on boxes. The secondary references show the need for printed templates. Applicant has not refuted the underlying logic of the combination that one of ordinary skill would have therefore found it obvious to print the templates of Elkins or AFF directly on the box, as taught by the primary reference.
Applicant further argues that the prior art does not teach or suggest fabricating the carton such that it is configured to…enable and installer to place the caron against the mounting surface. But this constitutes an intended use of the box. As noted in the rejection, a method claim specifically reciting the process of printing the template on the inside of the box, keeping the template attached to the box, and using the template such that the box will catch dust and debris might potentially be an allowable method. But it does not limit the structure of the carton itself in any meaningful way. The only potentially limiting structural feature is the necessity of printing the template on an inner surface to facilitate this method step. But the rejection addresses this feature as obvious because there are a finite number of places to print a template onto a box once the decision to place it there has been made.
CONCLUSION
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 extension fee 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 date of this final action.
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
Prosecution Insights