DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 29, 2026 has been entered.
Response to Amendment
Due to applicant’s amendment filed on June 29, 2026, the claim objections and the 112(b) rejections in the previous office action (dated 12/29/2025) are hereby withdrawn.
The status of the claim(s) is as follows:
Claims 1, 5, 9-11, 14-15 and 20 have been amended,
Claims 2-4, 6, 8, 13, 16-17, 19 and 21-24 were previously presented, and
Claims 7, 12 and 18 have been cancelled.
Therefore, claims 1-6, 8-11, 13-17 and 19-24 are currently pending.
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.
Claim 1 and its dependents are indefinite because it is not clear whether claim 1 is drawn to the sub-combination of: an insert FOR a thermally insulated container, or whether the claim is drawn to the combination of: an insert AND a thermally insulated container AND one or more sub-inserts having a panel made from thermally conductive material. This is because while some portion of the claim indicate that what is claimed is the sub-combination (see claim 1, ln. 1, “an insert for a thermally insulated container” AND claim 1, ln. 5-6, “…for the accommodation of one or more sub-inserts inside a thermally insulated container…”), other portions of the claim indicate that what is claimed is the combination (see claim 1, ln. 7-9, requiring “…at least one of said sub-inserts IS accommodated by one or more of the one or more openings, wherein said sub-insert comprises a panel made of thermally conductive material…”). It is noted further in connection with this limitation that it is by now well settled that features not claimed may not be relied upon in support of patentability. In this office action, the thermally insulated container AND one or more sub-inserts having a panel made from thermally conductive material ARE PRESUMED NOT TO BE CLAIMED in order for the examiner to give the claim its broadest reasonable interpretation. Accordingly, all references in the claim to the thermally insulated container AND one or more sub-inserts having a panel made from thermally conductive material are considered to be merely functional. On the other hand, clarification of the scope of claims are required.
In claim 1, ln. 6, “…inside a thermally insulated container…” renders the claim 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.
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 claim 1, ln. 7-8, the phrases, “…said sub-inserts…” and “…said sub-insert…” both lack antecedent basis and renders the claim to be vague because the applicant defines “one or more openings defining one or more attachment locations” in reference to “one or more sub-inserts” AND “at least one sub-insert” comprising a panel made of the thermally conductive material, WHICH ARE NOT POSITIVELY RECITED (see note about subcombination and combination above; emphasis added). Therefore, it is unclear to which aforementioned structure(s) is being encompassed with such language. Further clarification is required.
In claims 5 and 20, the phrase in each claim, “…the 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 claim 1, ln. 6) OR a different “thermally insulated container” in this occurrence? Further clarification is required.
In claim 10, ln. 3, the phrase, “…the thermally insulated container…” renders the claim to be vague and indefinite because the applicant HAS NOT BEEN POSITIVELY RECITED “a thermally insulated container” per se in claim 1 (which claim 10 depends from directly or indirectly). 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 BEEN 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.
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 (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 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 capable of accommodating one or more sub inserts inside a thermally insulated container (Santoro Col. 5 ln. 39 – Col. 7 ln. 50).
Examiner’s note: with respect to “…for the accommodation of one or more sub inserts inside a thermally insulated container….is accommodated by one or more of the one or more openings…” 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 (made from thermally conductive material) 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 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, the four side panels provided in the form of respective, depending foldable tabs including the depending foldable 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 the 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 thermally insulated 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 June 29, 2026 with respect to the pending claims have been fully considered but they ARE NOT persuasive for the following reason(s):
Applicant’s argument: Applicant argues that the claim amendments presented address all the previously mentioned 112(b) rejections or issues in the last office action (dated 12/29/2025; see Remarks pg. 5, item II).
Examiner’s response: Upon further review of the amendments presented, applicant HAS NOT addressed all of the previously mentioned 112(b) rejections or issues AND in fact raised new 112(b) rejections or issues (as noted above); emphasis added.
Applicant’s argument: Applicant argues that the applied art (Santoro and further in view of Ogiwara, Baske and Patstone) do not teach or suggest the claimed features of amended ind. claim 1, specifically, “….at least one sub-insert accommodated by one of the openings, where the sub-insert comprises a thermally conductive material…” Therefore, the 103 rejections are improper and should be withdrawn (see Remarks pg. 6-7, item III).
Examiner response: Examiner respectfully disagrees with applicant’s assertion and please refer to the updated 112(b) rejections and the examiner’s note [after the rejection of claim 1] above to see how the noted limitation above (i.e. the “at least one sub-insert accommodated by one of the openings, where the sub-insert comprises a thermally conductive material”) is being treated or construed.
Furthermore, it appears applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references.
Lastly, applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
In essence, the claimed structure is only directed to an insert having foldable sections with a plurality of openings on those foldable sections, and the overall insert is made from a thermally conductive material. Examiner notes the applied art structure yields or teaches a nearly or substantially identical insert AND made from the same material (as disclosed or claimed); emphasis added.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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 about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. 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.
/B. V. P./
Examiner, Art Unit 3736
/RAFAEL A ORTIZ/Primary Examiner, Art Unit 3736
Prosecution Insights