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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/29/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 47, 49 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant provides new claims 47, 49 are provides new matter “47. (NEW) A protector device according to claim 1, wherein the inner circular recess and the outer annular or ring-shaped recess are set into the underside of the base to an approximately same depth…49. (NEW) A protector device according to claim 36, wherein the inner recess and the annular or ring-shaped recess are each set into the underside of the base to an approximately same depth.” Applicant fails to provide the above new matter in Applicant’s original specification and Applicant must remove the above to overcome the rejection.
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 44-45 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.
In claim 44, Applicant now provides “one or more vertically extending aperture” of which Applicant has failed to make clear Applicant’s intent in the above. Claim 45 is/are rejected as being dependent on the above rejected claim(s).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 8, 16-17, 20, 34-39, 41-44, 46-47, 49 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mittelberger (US D198952 S) in view McCleerey (US 6302291 B1)
Mittelberger discloses:
1. A protector device (figs 1-3) for alternatively holding a plurality of beverage bottles and a plurality of beverage cans together as a compact group, the protector device configured to register and stack directly with a compact group of beverage bottles or alternatively a compact group of beverage cans held in an underlying one of said protector devices (capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes), the protector device formed as a unitary component from a material (as in figs 1-3) comprising: a plurality of receptacles (elements that are capable of receiving and containing different containers, as in figs 1-3 adjacent circular shape), each of which is configured to receive and hold a alternatively a bottle or can (capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes), each receptacle forming or defining a generally cylindrical cavity for receiving and accommodating a body of the respective bottle or can (as in fig 1-3 capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes) and each receptacle having a base for supporting a bottom part of the bottle or can (lower end of device such as in fig 3 capable of performing the above intended use, as for example with another hypothetical container with a corresponding shape as in fig 3)
wherein each of the receptacles includes a band or sleeve of the material configured to extend around a circumference of the respective bottle or can (as shown in fig 3 for example where sleeve capable of performing the above intended use, as shown but not required in figs 1-3) to isolate the container at least partially from an impact or shock (material of device capable of performing the above intended use, such as protecting contents), the plurality of receptacles being connected with one another in an array to hold the bottles or cans together in a compact group (as shown by 3x2 array as in figs 1-3);
With respect to polymer, the prior art may be or may not be a polymer. The Office notes that It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material to be a polymer in order to provide a very well known material provided for its benefits in cost, strength, durability, etc. Further, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
The prior art discloses the above. With respect to wherein an underside of the base of each receptacle includes inner circular recess that is set into the base and configured to receive and nest with a top of a bottle held in another said protector device arranged in vertical alignment below the base in a stacked configuration, and an outer an annular or ring- shaped recess set into the base that surrounds the inner circular recess and is configured to receive and nest with an upstanding rim of a can held in another said protector device arranged in vertical alignment below the base in a stack configuration, McCleerey discloses similar art (figs 1-14) and also discloses an underside of the base of each receptacle includes inner circular recess that is set into the base (figs 2 such as adjacent either 24 or 52) and configured to receive and nest with a top of a bottle held in another said protector device arranged in vertical alignment below the base in a stacked configuration (capable of performing the above intended use), and an outer an annular or ring- shaped recess set into the base that surrounds the inner circular recess (adjacent either 50 or 52, but not 52 as both recesses) and is configured to receive and nest with an upstanding rim of a can held in another said protector device arranged in vertical alignment below the base in a stack configuration (capable of performing the above intended use). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Mittelberger in view McCleerey (by including the above recesses within the existing base) in order to receive and stabilize of variety of types and sizes of containers, so that the device can accommodate a variety of applications without the need of additional modifications. The Office notes that McCleerey also discloses polymers (claims 18, 19).
The Combined Reference discloses:
8. A protector device according to any one of claim 1, wherein the plurality of receptacles are interconnected with one another in a rectangular array (Mittelberger figs 1, 2).
16. A protector device according to any one of claim 1, wherein the material that is adapted to isolate the respective bottle or can from an impact or shock has a hardness in a range of 20 to 100 on the Shore 00 scale or in a range of 0-60 on the shore A scale. The Office notes that it is well within the skill of one of ordinary skill in the art to modify the material to provide a desired level of protection such as the above range. Further, it would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. Even further, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
17. A protector device according to claim 1, wherein the protector device is moulded or 3D-printed as an integral or unitary component from the resilient polymer material. Claim is are being treated as product-by-process limitations (such as with respect to moulded or 3d printed) and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Even further, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
20. A protector device according to claim 8, wherein the plurality of receptacles of the protector device are configured in one of: a 3 x 2 array for receiving and holding six cans or six bottles; or in a 2 x 2 array for receiving and holding four cans or four bottles (Mittelberger figs 1, 2 3x2). Though not required, the Office still merely notes that it is well within the skill of one of ordinary skill in the art to provide other arrays such as 3x2 or 2v2 in order to hold more contents and to hold a specific number of contents such as six or four; further the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
34. A set of protector devices for containers, wherein each protector device of the set is the protector device according to claim 1. It is well within the skill of one of ordinary skill in the art to provide multiple of the same item. Further, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the device because it has been held that the duplication of parts on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
35. A protector device according to claim 1, wherein the polymer material has a material thickness in a range of about 3 mm to about 8 mm (the Office has already provided material above in claim 1, with respect to the above range, it would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233.
Mittelberger discloses:
36. A protector device (figs 1-3) alternatively holding a plurality of beverage cans and a plurality of beverage bottles together as a compact group, the protector device configured to register and stack directly with a compact group of beverage cans or alternatively a compact group of beverage bottles held in an underlying said protector device (capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes), the protector device being formed as a unitary component (as in figs 1-3) from a material and comprising: a plurality of receptacles (elements that are capable of receiving and containing different containers, as in figs 1-3 adjacent circular shape), each receptacle configured to receive and hold alternatively a can or a bottle (capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes), each receptacle forming or defining a generally cylindrical cavity for receiving and accommodating a body of the can or the bottle (as in fig 1-3 capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes) and each receptacle having a base for supporting a bottom part of the can of the bottle (lower end of device such as in fig 1-3 capable of performing the above intended use, as for example with another hypothetical container with a corresponding shape as in figs 1-3); wherein each of the receptacles includes a sleeve of the material configured to extend around a circumference of the can or bottlw (as shown in fig 1-3 for example where sleeve capable of performing the above intended use) to isolate the can or the bottle at least partially from an impact or shock (material of device capable of performing the above intended use, such as protecting contents), the plurality of receptacles being connected with one another in an array to hold the cans or bottles together in a compact group (as shown by 3x2 array as in figs 1-3).
With respect to polymer, the prior art may be or may not be a polymer. The Office notes that It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material to be a polymer in order to provide a very well known material provided for its benefits in cost, strength, durability, etc. Further, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
The prior art discloses the above. With respect to wherein an underside of the base of each receptacle includes an inner recess in the base configured to receive and nest with a top of a bottle held in another said protector device arranged vertically aligned below the base in a stacked configuration, and an annular or ring-shaped recess that surrounds the inner recess, wherein the annular or ring-shaped recess is configured to receive and nest with an upstanding rim of another can held in another said protector device arranged vertically aligned below the base in a stacked configuration, McCleerey discloses similar art (figs 1-14) and also discloses an underside of the base of each receptacle includes an inner recess in the base (figs 2 such as adjacent either 24 or 52) configured to receive and nest with a top of a bottle held in another said protector device arranged vertically aligned below the base in a stacked configuration (capable of performing the above intended use), and an annular or ring-shaped recess that surrounds the inner recess(adjacent either 50 or 52, but not 52 as both recesses), wherein the annular or ring-shaped recess is configured to receive and nest with an upstanding rim of another can held in another said protector device arranged vertically aligned below the base in a stacked configuration (capable of performing the above intended use). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Mittelberger in view McCleerey (by including the above recesses within the existing base) in order to receive and stabilize of variety of types and sizes of containers, so that the device can accommodate a variety of applications without the need of additional modifications. The Office notes that McCleerey also discloses polymers (claims 18, 19).
Mittelberger discloses:
38. A protector device according to claim 36, comprising six receptacles interconnected with one another in a unitary 3 x 2 rectangular array for receiving and holding six cans or bottles (Mittelberger figs 1, 2 3x2). Though not required, the Office still merely notes that it is well within the skill of one of ordinary skill in the art to provide other arrays such as 3x2 or 2v2 in order to hold more contents and to hold a specific number of contents such as six or four; further the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
39. A protector device according to claim 36, comprising four receptacles interconnected with one another in a unitary 2 x 2 array for receiving and holding four cans or bottles (the Office notes that prior art discloses a 3x2 array as in claim 38; it is well within the skill of one of ordinary skill in the art to provide other arrays such as 2v2 in order to hold more contents and to hold a specific number of contents such as six or four; further the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device).
41. A protector device according to claim 36, wherein the polymer material has a material thickness of at least one millimetre (it would have been obvious to one of ordinary skill in the art at the time of the invention to the above size, because it has been held that discovering an optimum value of a result effective variable involves was an obvious extension of the prior teachings. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).).
42. A protector device according to claim 36, wherein the protector device is moulded from the polymer material. Claim is are being treated as product-by-process limitations (such as with respect to moulded or 3d printed) and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above). Even further, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
Mittelberger discloses:
43. A stackable protector device (figs 1-3 capable of performing the above intended use) adapted for alternatively holding a plurality of beverage cans or a plurality of beverage bottles together as a compact group during transport in a car refrigerator or cool box, the protector device configured to register and stack directly with a compact group of beverage cans or alternatively a compact group of beverage bottles held in an underlying said protector device (capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes), the protector device formed as a unitary component from a material (as in figs 1-3) and comprising: six receptacles connected with one another in a rectangular array (such as with 3x2), each receptacle configured to receive and hold a can or bottle, each receptacle comprising a sleeve of the material that forms or defines a generally cylindrical cavity for receiving and accommodating a body of the can or bottle (capable of performing the above intended use; the Office notes that the device is capable of holding a variety of types of containers of different sizes and different shapes), the sleeve of the material being configured to extend around a circumference of the respective can or bottle to isolate the can or bottle at least partially from an impact or shock (as in figs 1-3 capable of performing the above intended use), and each receptacle having a base for supporting a bottom part of the can (bottom of device in figs 1-3).
With respect to polymer, the prior art may be or may not be a polymer. The Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material to be a polymer in order to provide a very well known material provided for its benefits in cost, strength, durability, etc. Further, the Office notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
The prior art discloses the above. With respect to wherein an underside of the base of each receptacle includes an inner circular recess configured to receive and nest with a top of a bottle held in another said stackable protector device arranged vertically aligned below the base in a stacked configuration, and an annular or ring-shaped recess that surrounds the inner circular recess, wherein the annular or ring- shaped recess is configured to receive and nest with an upstanding rim a can held in another said stackable protector device arranged vertically aligned below the base in a stacked configuration, McCleerey discloses similar art (figs 1-14) and also discloses an underside of the base of each receptacle includes an inner circular recess (figs 2 such as adjacent either 24 or 52) configured to receive and nest with a top of a bottle held in another said stackable protector device arranged vertically aligned below the base in a stacked configuration (capable of performing the above intended use), and an annular or ring-shaped recess that surrounds the inner circular recess (adjacent either 50 or 52, but not 52 as both recesses), wherein the annular or ring- shaped recess is configured to receive and nest with an upstanding rim a can held in another said stackable protector device arranged vertically aligned below the base in a stacked configuration (capable of performing the above intended use). ). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Mittelberger in view McCleerey (by including the above recesses within the existing base) in order to receive and stabilize of variety of types and sizes of containers, so that the device can accommodate a variety of applications without the need of additional modifications. The Office notes that McCleerey also discloses polymers (claims 18, 19).
The Combined Reference discloses:
46. (NEW) A protector device according to claim 1, wherein the inner circular recess is located centrally in the underside of the base, and wherein the outer annular or ring-shaped recess is concentric with the inner circular recess (fig 4 of McCleerey for example where the recesses have a common center or axis).
47. (NEW) A protector device according to claim 1, wherein the inner circular recess and the outer annular or ring-shaped recess are set into the underside of the base to an approximately same depth (fig 4 of McCleerey for example where the depths are “approximately” the same; the Office notes the 112 rejection above as well).
49. (NEW) A protector device according to claim 36, wherein the inner recess and the annular or ring-shaped recess are each set into the underside of the base to an approximately same depth (fig 4 of McCleerey for example where the depths are “approximately” the same; the Office notes the 112 rejection above as well).
Claim(s) 4, 37, 48, 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1, 36 above, and further in view of Ha (KR 20160090189 A).
The Combined Reference discloses the claimed invention above with the exception of the following which is disclosed by Ha: wherein each receptacle comprises one or more aperture that exposes part of a side of the respective bottle or can received and held by the receptacle, the aperture preferably being elongate and extending generally vertically along a side of the respective container received and held by the receptacle (Ha adjacent 40 capable of performing the above intended use). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Ha (by providing the above apertures to the sides) in order to for example providing venting and protection for the intended contents therein.
Claim(s) 9, 10, 40, 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1, 36, 44 above, and further in view of Ralph (US 20130068635 A1).
The Combined Reference discloses the claimed invention above with the exception of the following which is disclosed by Ralph: wherein each receptacle includes one or more inwardly directed projection(s) for engaging or contacting a side of a container inserted into the respective receptacle and wherein each receptacle includes a plurality of the inwardly directed projections spaced apart around a circumference of the receptacle for engaging or contacting a side of a container inserted into the respective receptacle, wherein each of the inwardly directed projections is formed as an elongate fin or rib or bead (elements adajcent 36 capable of performing the above intended use). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Ralph (by providing the above elements to the receptacles) in order to provide the capability of attaching to containers of various sizes.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1 above, and further in view of Apps (US 20110056861 A1).
the Combined Reference discloses the claimed invention above with the exception of the following which is disclosed by Apps: wherein at least one gripping element is provided to facilitate carrying of the protector device when it accommodates containers, the at least one gripping element preferably formed as a recess or hole for insertion of a finger of a user during lifting or carrying (adjacent 20 in fig 1). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Apps (by providing a hole between receptacles) in order to help the user carry the device and serve to stabilize the intended contents.
Response to Arguments
Applicant's arguments with respect to the claims have been considered, but are moot because in view of the amendment the search has been updated, new prior art has been identified and a new rejection has been made.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D PERREAULT whose telephone number is (571)270-5427. The examiner can normally be reached Monday - Friday 7:00am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D PERREAULT/Primary Examiner, Art Unit 3735
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