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 § 102
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.
Claims 1, 2, 4, 7-10, and 21-30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stenner (US 4651920).
Stenner discloses an assembly for a mailer, comprising: a backer (19) shaped to engage in face-sharing contact against a forward interior surface of the mailer and span a length of the forward interior surface between opposing closed side edges of the mailer (see Fig. 13); and
an insert (22+23) with attachment members (50A, 50B, etc.) that, when fully assembled such that each attachment member of the insert joins portions of the insert, includes a lower folded edge (85), a first interior surface facing a second interior surface, and a pocket defined at least in part by the first interior surface and the second interior surface and shaped to receive an article (see Fig. 13), the pocket including a lower closed end defined by the lower folded edge, an upper open end defined by a first terminating edge of the first interior surface spaced apart from a second terminating edge of the second interior surface in a direction perpendicular to the lower folded edge by a clearance such that a portion of the second interior surface is visible at the clearance (see Fig. 13), and a first side defined by a first attachment member joining the first interior surface and the second interior surface (unnumbered adhesive inside 45A and 45B. see Fig. 7), where the pocket is shaped to engage in face-sharing contact against a rearward surface of the backer opposite to the forward interior surface and the insert spans a length of the rearward surface equal to the length of the forward interior surface spanned by the backer (see Fig. 13).
Regarding claim 2, Stenner discloses the backer (19) is a single layer and the insert is two layers (22+23), which meets the recitation “wherein the backer has a first thickness, and the insert has a second thickness that is different from the first thickness.”
Regarding claim 4, Stenner discloses the backer and the insert are formed together as a single unit (see Figs. 1-5).
Regarding claim 7, in light of the article not being positively recited as part of the claims, further definition of the article is not patentably defining.
Regarding claim 8, Stenner discloses the pocket is a first pocket and the lower folded edge of the insert further defines a lower closed end of a second pocket shaped to receive a second article, the terminating edge further defines an upper open end of the second pocket, and a second attachment member joins the first interior surface and the second interior surface defines a first side of the second pocket (see Figs. 7, 13).
Regarding claim 9, Stenner discloses the second pocket is arranged adjacent to the first pocket and the first attachment member defines a second side of the second pocket with no other attachment members arranged between the first attachment member and the second attachment member (see Figs. 7, 13).
Regarding claim 10, Stenner discloses the lower folded edge of the insert further defines a lower closed end of a third pocket shaped to receive a third article, the first terminating edge further defines an upper open end of the third pocket, first attachment member defines a first side of the third pocket, and the second attachment member defines a second side of the third pocket (see Figs. 7, 13).
Regarding claim 21, Stenner discloses a system, comprising: a mailer; a backer (19) shaped to engage in face-sharing contact against a forward interior surface of the mailer and span a length of the forward interior surface between opposing closed side edges of the mailer (see Fig. 13); and an insert (22+23) with attachment members (50A, 50B, etc.) that, when fully assembled such that each attachment member of the insert joins portions of the insert, includes a lower folded edge (85), a first interior surface facing a second interior surface, and a pocket defined at least in part by the first interior surface and the second interior surface and shaped to receive an article (see Fig. 13), the pocket including a lower closed end defined by the lower folded edge, an upper open end, defined by a first terminating edge of the first interior surface spaced apart from a second terminating edge of the second interior surface in a direction perpendicular to the lower folded edge by a clearance such that a portion of the second interior surface is visible at the clearance (see Fig. 13), and a first side defined by a first attachment member joining the first interior surface and the second interior surface (unnumbered adhesive inside 45A and 45B. see Fig. 7), where the pocket is shaped to engage in face-sharing contact against a rearward surface of the backer opposite to the forward interior surface and the insert spans a length of the rearward surface equal to the length of the forward interior surface spanned by the backer (see Fig. 13).
Regarding claim 22, Stenner discloses the backer and the insert are formed together as a single unit (see Figs. 1-5).
Regarding claim 23, Stenner discloses the pocket is a first pocket and the lower folded edge (85) of the insert further defines a lower closed end of a second pocket shaped to receive a second article, the first terminating edge further defines an upper open end of the second pocket, and a second attachment member joins the first interior surface and the second interior surface defines a first side of the second pocket (see Figs. 7, 13).
Regarding claim 24, Stenner discloses the second pocket is arranged adjacent to the first pocket, and the second attachment member defines a second side of the first pocket (see Figs. 7, 13).
Regarding claim 25, Stenner discloses the lower folded edge of the insert further defines a lower closed end of a third pocket shaped to receive a third article, the first terminating edge further defines an upper open end of the third pocket, the first attachment member defines a first side of the third pocket, and the second attachment member defines a second side of the third pocket (see Figs. 7 and 13).
Regarding claim 26, Stenner discloses a method for an assembly for a mailer, comprising:
engaging a backer in face-sharing contact against a forward interior surface of the mailer to span a length of the forward interior surface between opposing closed side edges of the mailer (col. 7, ll. 64-65);
assembling an insert with attachment members such that each attachment member of the insert joins portions of the insert (col. 7, ll. 64 – col. 8, ll. 5), the assembling including:
defining a lower closed end of a pocket shaped to receive an article via a lower folded edge (85) of the insert (22+23);
defining an upper open end of the pocket via a first terminating edge of a first interior surface of the insert, the first interior surface facing a second interior surface of the insert, and the first terminating edge spaced apart from a second terminating edge formed by the second interior surface in a direction perpendicular to the lower folded edge by a clearance such that a portion of the second interior surface is visible at the clearance (see Figs. 1-5);
defining a first side of the pocket via a first attachment member joining the first interior surface and the second interior surface; and engaging the pocket in face-sharing contact against a rearward surface of the backer opposite to the forward interior surface such that the insert spans a length of the rearward surface equal to the length of the forward interior surface spanned by the backer (see Fig. 13).
Regarding claim 28, Stenner discloses the pocket is a first pocket, the article is a first article, the lower folded edge (10) of the insert further defines a lower closed end of a second pocket shaped to receive a second article, the first terminating edge further defines an upper open end of the second pocket, and a second attachment member defines a first side of the second pocket (see Figs. 1, 13).
Regarding claim 29, Stenner discloses the lower folded edge of the insert further defines a lower closed end of a third pocket shaped to receive a third article, the first terminating edge further defines an upper open end of the third pocket, the first attachment member defines a first side of the third pocket, and the second attachment member defines a second side of the third pocket (see Figs. 1, 13).
Regarding claim 30, in light of the article not being positively recited as part of the claims, further definition of the article is not patentably defining.
Claim Rejections - 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, 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) 3 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stenner (US 4651920) as applied to claim 1 above, and further in view of Hodess et al. (US 2005/0072694, hereinafter ‘Hodess’).
Regarding claim 3, Stenner discloses all limitations of the claim(s) as detailed above except does not expressly disclose the rigidity of the backer being more rigid than a rigidity of the insert as claimed.
However, Hodess teaches a similar device wherein aprotective jacket (12) is made of light-weight but rigid and reinforced material such as cardboard or plastic and inner pocket (15) is made of high-density polyethylene fiber by DuPont under the brand name Tyvek™ (paragraph [0019]), which meets the recitation “a rigidity of the backer is more rigid than a rigidity of the insert.”
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a more rigid material for the backer than the insert as taught by Hodess, 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.
Regarding claim 11, Stenner discloses all limitations of the claim(s) as detailed above except does not expressly disclose the spacer as claimed.
However, Hodess teaches a similar device having a spacer (12) shaped to engage in face-sharing contact with a rearward surface of the insert opposite the pocket.
All of the component parts are known in Hodess and Stenner. The only difference is the combination of all the known elements into a single device by adding the space taught by Hodess to the mailer assembly taught by Stenner.
Thus, it would have been obvious to one having ordinary skill in the art to add the spacer taught by Hodess to the mailer assembly taught by Stenner, since the spacer in no way affects the other functions of the mailer assembly and the spacer can be used in combination with a mailer assembly to achieve the predictable results of provide additional protection to the contents of the mailer.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Stenner (US 4651920).
Regarding claims 5 and 6, Stenner discloses all limitations of the claim(s) as detailed above except does not expressly disclose the specific dimensions as claimed.
However, it is noted that the general knowledge of those having ordinary skill in the art since prior to the invention included manufacturing mailing assemblies of the claimed dimensions as standard practice.
It would have been an obvious matter of design choice to make the Stenner mailer the claimed dimensions, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
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
May 27, 2026
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