DETAILED ACTION
Response to Amendment
Due to applicant’s amendment filed on October 20, 2025, the objections to the claims, drawings, specifications and the 112(b) rejections in the previous office action (dated 06/20/2025), are hereby withdrawn.
The status of the claim(s) is as follows:
Claims 1-6, 8-9, 11, 14-15, 17, 20 and 22 have been amended,
Claims 7, 12 and 18 have been cancelled,
Claims 10, 13, 16, 19 and 21 were previously presented, and
Claims 23 and 24 have been newly added.
Therefore, claims 1-6, 8-11, 13-17 and 19-24 are currently pending.
Drawings
The drawings were received on October 20, 2025. These drawings are acceptable.
Claim Objections
Claims 9 and 11 is/are objected to because of the following informalities:
In claim 9, ln. 2, the phrase, “…said panels…” could read “…said one or more panels…” to establish the proper antecedent basis and for consistency purposes with the remainder of the claim(s).
In claim 11, ln. 1, the claim status identifier currently reads “Previously Presented”; however, this status is incorrect because the applicant has made an amendment (see ln. 2). Therefore, the status identifier of claim 11 should be change to “Currently Amended”.
The forgoing analysis may not be exhaustive. Applicant should carefully proofread all claims and make all necessary corrections.
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 1-6, 8-11, 13-15, 17 and 19-24 is/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 pre-AIA the applicant regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
In claim 1, ln. 5-6, “…inside the thermally insulated container…” renders the claim to be vague and indefinite because the applicant defines “one or more sub-inserts” in reference to the “thermally insulated container” which has not been positively recited. Therefore, it is unclear if the applicant intends to claim “a thermally insulated container” as a part of the claimed invention (i.e. “an insert”) OR NOT?
Even assuming, arguendo, that the applicant was referring back to “a thermally insulated container” (of ln. 1), it is noted that “a thermally insulated container” is presented in the preamble; emphasis added.
Applicant is reminded of the following: claim preamble language may not be treated as a limitation where it merely states an intended use of the system and is unnecessary to define the invention. It has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. See MPEP §2111.02
In claims 5 and 20, the phrase in each claim, “…a thermally insulated container…” render the claims to be vague and indefinite because it is unclear if the applicant is referring to the same “a thermally insulated container” (claim 1, ln. 1) OR a different “thermally insulated container” in this occurrence? Further clarification is required.
In claim 10, ln. 3, the phrase, “…the container…” lacks antecedent basis and renders the claim to be vague and indefinite because the applicant HAS NOT established “a container” per se in claim 8 (which claim 10 depends from). Therefore, it is unclear as to which aforementioned structure(s) is being encompassed with such language. Further clarification is required.
In claim 13, ln. 3-4, the phrase, “…the thermally insulated container…” renders the claim to be vague and indefinite because the applicant HAS NOT positively recited “a thermally insulated container” per se in claim 1 (which claim 13 depends from). Therefore, it is unclear as to which aforementioned structure(s) is being encompassed with such language. Further clarification is required.
In claim 14, ln. 3-4, the phrase, “…said at least one depending foldable tab…” lacks antecedent basis and renders the claim to be vague and indefinite because the applicant has not established “at least one depending foldable tab” per se in claim 14. Rather, the applicant established “at least one side panel” (claim 14, ln. 2) AND “a depending foldable tab” (claim 14, ln. 2-3). Therefore, it is unclear as to which aforementioned structure(s) is being encompassed with such language. Further clarification is required.
In claim 15, ln. 3-5, the phrases, “…the depending folding tab…” and “…said depending foldable tabs…” both lack antecedent basis and renders the claim to be vague and indefinite because is the applicant encompassing “a depending foldable tab” (claim 14, ln. 2-3) OR “said at least one depending foldable tab” (claim 14, ln. 3-4) when referring to “the depending folding tab” and “said depending foldable tabs” in these instances OR different “foldable tab(s)” or “folding tab(s)”. Therefore, it is unclear as to which aforementioned structure(s) is being encompassed with such language. Further clarification is required.
As for claims 2-6, 8-11, 13-15, 17 and 19-24, due to their dependencies from claim 1, they too have these deficiencies.
Examiner's note: The forgoing analysis may not be exhaustive. Applicant should carefully proofread all claims and make all necessary corrections.
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 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-6, 11, 13-17, 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Santoro (US 11493263 B2 – art of record; hereinafter Santoro) in view of Ogiwara et al. (WO 2017217554 A1 – art of record; hereinafter Ogiwara).
Regarding claims 1-3 and 16, Santoro teaches an insert embodiment (300; as shown in Figs. 7a-8; for a thermally insulated container (i.e. cooler (200)), the insert comprising:
one or more panels (320; made of a flexible material, such as silicon, flexible plastic, flexible vinyl coated plastic tarp, vinyl coated nylon, or the like);
wherein at least one side panel of said one or more panels comprises one or more openings (110) defining one or more attachment locations for the disposition of one or more sub inserts inside the thermally insulated container (Santoro Col. 5 ln. 39 – Col. 7 ln. 50).
Examiner’s note: with respect to “…for disposition of one or more sub inserts inside the thermally insulated container…” is directed to functional or intended-use limitation(s), to which no patentable weight has been given by the examiner. Applicant is reminded of the following with regards to functional or intended-use limitation(s): a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art (i.e. structure rather than function). If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2114
Although, Santoro states that the one or more opening(s) are for draining of ice or water. The one or more opening(s) are still considered to be one or more attachments locations, which are capable of having things or objects attached thereto (as claimed); emphasis added.
However, Santoro fails to tech the one or more panels [of the insert] being made of a thermally conductive material, wherein the thermally conductive material is aluminum; specifically an aluminum sheet.
Ogiwara is in the same field of endeavor as the claimed invention and Santoro, which is an insert or liner for an insulated or cryogenic container. Ogiwara teaches an insert (i.e. in the form of a storage container (1)), wherein the insert comprising one or more panels (i.e. the four walls that make up the body portion (2)) made of a thermally conductive material (i.e. material), wherein the thermally conductive material is aluminum, specifically an aluminum sheet (Ogiwara top of pg. 4, ln. 1-3).
With this in mind, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the one or more panels of the plastic insert (of Santoro) to be aluminum, as taught by Ogiwara, so that the overall insert (of Santoro) is more impact and corrosion resistant and can withstand long-term storage (Ogiwara top of pg. 4 ln. 1-3).
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. See MPEP §2144.07
Regarding claim 4, modified Santoro as above further teaches wherein the [aluminum] sheet thickness is within the range 0.5 to 3 millimeters (Ogiwara pg. 4, 4th ¶, ln. 7-8).
Examiner’s note: Ogiwara discloses or teaches the following, “…the cryobox transport and storage container (1) has a plate thickness of about 0.5 mm to 1.4 mm…” Since, Ogiwara disclosed thickness range of the plate [or sheet] is encompassed with the claimed range of 0.5 – 3 mm, specifically, from 0.5 to 1.4 mm; emphasis added. Therefore, Ogiwara discloses or teaches the claimed thickness range of 0.5 to 3 mm; emphasis added. See MPEP §2131.03(II).
Regarding claim 5, modified Santoro as above further teaches one or more fixation devices (340) adapted to fix the insert inside the thermally insulated container (Santoro Col. 5 ln. 51-64 and Figs. 7a-8).
Regarding claim 6, modified Santoro as above further teaches wherein at least one side panel (320) of said one or more panels comprises one or more openings (110) in the form of one or more perforations (see Santoro Figs. 7a-8).
Regarding claim 11, modified Santoro as above further teaches wherein one or more of the one or more panels each comprise at least one-fold line (see Santoro Fig. 8).
Regarding claim 13, modified Santoro as above further teaches wherein the insert is adapted to be reconfigured between a first, flat configuration (see Santoro Fig. 8) and a second, erected configuration (see Santoro Figs. 7a-c), wherein in the second, erected configuration the insert is provided in readiness for insertion into the thermally insulated container.
Regarding claim 14, modified Santoro as above further teaches wherein in the first, flat configuration, the insert comprises a base panel and at least one side panel provided in the form of a depending foldable tab, wherein a fold line is provided between said base panel and said at least one depending foldable tab (see Santoro Fig. 8).
Regarding claim 15, modified Santoro as above further teaches wherein in the first, flat configuration, the insert is in the shape of a cross defined by said base panel and four side panels provided in the form of respective, depending foldable tabs including the depending folding tab, wherein a total of four-fold lines are provided between said base panel and said depending foldable tabs (see Santoro Fig. 8).
Regarding claim 17, Santoro as above further teaches a method of retrofitting a thermally insulated container, the method comprising the step of fitting the insert according to claim 1 to the thermally insulated container (Santoro Col. 5 ln. 39 – Col. 7 ln. 50).
Regarding claim 19, modified Santoro as above further teaches wherein said aluminum sheet has a uniform thickness.
Regarding claim 20, modified Santoro as above further teaches wherein the one or more fixation devices are adapted to fix the insert to one or more internal side walls of a thermally insulated container (Santoro Col. 5 ln. 51-64 and Figs. 7a-8).
Regarding claim 21, modified Santoro as above further teaches wherein each side panel comprises a plurality of perforations (110; see Santoro Figs. 7a-8).
Claims 8-10 and 22-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over the applied references (as applied to claim 1 above) and further in view of Baske et al. (US 2021040322 A1; hereinafter Baske).
Regarding claims 8, 22 and 23, Santoro as above teaches all the structural limitations as set forth in claim 1, except for wherein the insert comprises a pocket for holding a phase-change material, and wherein said pocket is made of a thermally conductive material, specifically a metal and more specifically aluminum.
Baske in the same field of endeavor as the claimed invention, Santoro and Ogiwara, which is an insert or liner for an insulated or cryogenic container. Baske teaches an insert (i.e. in the form of a rack (12) for a thermally insulated container (10)), the insert comprising one or more panels (50, 52, 54, 56) made of a thermally conductive material (i.e. aluminum; see Baske [0052]), and wherein each of the one or more panels comprises pocket(s) or slot(s) for holding a phase-change material (PCM hereinafter) packs (Baske [0049-0055] and Figs. 18-21).
With this in mind, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the insert (of Santoro) to have similar pockets or slots (as taught by Baske) to ensure that the temperature-sensitive product or content (stored within the overall insert) can be fully surrounded by the PCM packs (see Baske [0049]).
Regarding claim 9, modified Santoro as above further teaches wherein said pocket is disposed in contact with one or more of said [one or more] panels (Baske [0049-0055] and Figs. 18-21).
Regarding claim 10, modified Santoro as above further teaches herein said pocket comprises an upwardly facing opening for receiving the phase-change cooling material, which opening is configured to be accessible when a lid of the container is opened (Baske [0049-0055] and Figs. 18-21).
Claim 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over the applied references (as applied to claim 8 above) and further in view of Patstone (US 20140054297 A1 – art of record; hereinafter Patstone).
Regarding claim 24, modified Santoro as above teaches all the structural limitations as set forth in claim 8, except for wherein the phase change material (PCM hereinafter) is ice.
Patstone is in the same field of endeavor as the claimed invention, Santoro, Ogiwara and Baske, which is an insert or liner for an insulated or cryogenic container. Patstone teaches a liner made of phase change material (PCM hereinafter) and wherein the PCM is a frozen water-based (i.e. ice) gel pack (Patstone [0002,0008-0010]).
With this in mind, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the PCM (of Santoro) with a frozen-water based (i.e. ice) gel pack (as taught by Patstone) to finely adjust the thermal insulative properties within the thermally insulated container. Since, the PCM of both Santoro and Patstone are considered to be art-recognized equivalents at the time of the invention was made, one of ordinary skill in the art would have found it obvious to substitute the frozen-water based PCM pack (of Patstone) for the PCM pack (of Santoro). An express suggestion to substitute one equivalent component for another is not necessary to render such substitution obvious. See MPEP §2143(I)(B) or §2144.06(II)
Response to Arguments
Applicant's arguments filed on October 20, 2025 have been fully considered but they ARE NOT persuasive for the following reason(s):
Applicant’s argument: applicant argues that the claim amendments overcome the claim objections and the 112(b) issues previously mentioned (see Remarks pg. 9, items II and III).
Examiner’s response: Upon further review, the claim amendments raised new claim objections and 112(b) issues which are presented in their respective heading(s) above.
Applicant’s argument: applicant argues that the applied art (specifically Santoro) fails to teach the following, “…one or more openings defining one or more attachment locations for the disposition of one or more sub-inserts inside the thermally insulated container…” To further support their assertion, applicant argues the openings (of Santoro) are used for drainage of water or ice and NOT for attachment purposes (see Remarks pg. 9-10, item IV).
Examiner’s response: Examiner respectfully disagrees with applicant’s assertion, please refer to examiner’s note (immediately after the rejection of claims 1-3 and 16) to see how the new limitation is being construed by the examiner AND how Santoro still discloses or teaches the limitation above; emphasis added.
Conclusion
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 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 or earlier communications from the examiner should be directed to BRIJESH V. PATEL whose telephone number is (571)270-1878. The examiner can normally be reached on Monday - Thursday 6:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached on 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/B. V. P./
Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736