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 § 112
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 1-20 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.
Claim 1 lines 14-15 recite, “…an interior space defined by internal facing sides of the side walls, the intermediate sleeve an open top and an open bottom;…” Examiner finds the wording of the amendment to be generally confusing, therefore, the metes and bounds of the limitation are not readily understood.
Claims 2-20 fail to cure the deficiencies.
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) 1-2, 4-6, 10-15, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grogan (US 6325281 B1).
Regarding claims 1-2, 4-6, 10-15, and 18-20, Grogan discloses a thermally insulating shipping system comprising an outer container (20) having a top, a bottom, and sides, the outer container having a plurality of bottom panels foldable to form the bottom of the outer container, a plurality of side panels forming the sides and surrounding an interior of the outer container, the interior being accessible from the top of the outer container, and a plurality of top panels (26) foldable to close the top of the outer container; a bottom insulation pad (31), the size and shape of the bottom insulation pad corresponding to the size and shape of the bottom of the interior of the outer container (Col 2 lines 44-51); an intermediate sleeve (33) sized and configured to be inserted within the interior of the outer container, the intermediate sleeve having side walls surrounding an interior space defined by internal facing sides of the side walls, a side insulation pad (40) sized and configured to be inserted into the interior space of the intermediate sleeve and along and in contact with the internal facing sides of the side walls of the intermediate sleeve; an inner tray (50) having a closed bottom, and sides, and an open top, each of the sides of the inner tray having exterior facing surfaces and opposite interior facing surfaces, the interior facing surfaces surrounding a content receiving cavity, the inner tray being sized and configured to be inserted into the interior space of the intermediate sleeve (see Fig. 2), the side insulation pad being positioned between the intermediate sleeve and the inner tray, the side insulation pad being in contact with the exterior facing surfaces of the inner tray and the internal facing sides of the intermediate sleeve; a lid (60) having an interior area, the size and shape of the lid corresponding to the size and shape of the top of the interior of the outer container; and a top insulation pad (63) contained within the interior area of the lid.
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) 3 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grogan.
Regarding claims 3 and 17, Grogan discloses the claimed invention except for the insulation pad having a thickness of approximately .5 to 1.5 inches; a length of approximately 37 to 74 ¾ inches; and a width of approximately 16 3/8 inches. However, it would have been an obvious matter of design choice to have the insulation pads measure those claimed dimensions based on the size and needs of a product to be carried within the insulated packaging system, 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).
Claim(s) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grogan in view of Madanagopal et al. (WO 2020/093009 A1; hereinafter Madanagopal).
Regarding claims 7-9, Grogan discloses the claimed invention except for insulation pads made of recyclable material. Madanagopal teaches a temperature insulated packaging system wherein a bottom insulation pad, a side insulation pad, and a top insulation pad are made of a recyclable material (see Par. 0165); and wherein the insulation material is a two-piece pre-consumer paper insulation adhered between two paper layers best suited for applications where temperature control is critical during transportation and can be discarded in curbside recycle bins (Madanagopal; see Par. 0160-0162). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify Grogan’s insulation pads to be made of a recyclable material as a known ecologically responsible substitution of materials in the art of insulated containers (Madanagopal; see Par. 0165).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grogan in view of Sollie et al. (US 2021/0179337 A1; hereinafter Sollie).
Regarding claim 16, Grogan discloses the claimed invention except for the lid having end flaps to cover the ends of the lid. Sollie teaches an insulated box assembly and temperature-regulating lid therefor comprising an insulated lid portion comprising end flaps to fully enclose insulative pads held within (see Figures 29-31). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify Grogan’s packaging to enclose the open ends of the lid with foldable flaps in order to completely enclose the insulative pads and thus maximize thermal insulation of the lid portion of the packaging (Sollie; Par. 0143-0144).
Response to Arguments
Applicant’s arguments, see Pages 7-9, filed 11/10/2025, with respect to the rejection(s) of claim(s) 1-15 and 17-20 under USC 103(a)—Madanagopal in view of Folkert have been fully considered and are persuasive. The combination lacks a side insulation pad in contact with an exterior surface of an inner tray and internal faces of the intermediate sleeve, as claimed. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of USC 102(a)(1)--Grogan.
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 CHRISTOPHER R DEMEREE whose telephone number is (571)270-1982. The examiner can normally be reached 9:00 am - 5:00 pm, Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NATHAN J NEWHOUSE can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R DEMEREE/Primary Examiner, Art Unit 3734