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 .
This Office Action acknowledges the applicant’s amendment filed on 6/3/2026. Claims 1-4 and 6-8 are pending in the application. Claim 5 is cancelled. Claims 3 and 7 are withdrawn from consideration.
The text of those sections of Title 35, U.S. code not included in this action can be found in a prior Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4, 6 and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 and 6 of co-pending Application No. 18/552528 in view of Fine et al. US 6,070,427.
Although the claims at issue are not identical, they are not patentably distinct from each other because each set of claims recite a syringe transport tool set comprising a packing container having side walls, a packing member (retaining tool ‘528) including an insertion portion to store syringes in a standing (upright) position and a solid portion surrounding the insertion portion, with the solid portion formed in a layer shape by sequentially providing a plurality of layers of the non-crosslinked foamed polyethylene in the insertion direction, a cold storage agent to refrigerate the syringe and a content storage container that houses the content and a surrounding member (buffer member).
The difference of the co-pending applications is the present application recites additional features and limitations, such as, the packaging member that is installed in a housing space of a packing container, surrounds a syringe (being positively claimed) including a material storage container that houses a viscous material.
However, Fine (Fig. 2) teaches that it was known in the art to have a syringe transport tool having a packaging member 1 that is installed in a housing space of a packing container, surrounds a syringe (being positively claimed) including a material storage container that houses a viscous material. (Col 5:28-49)
It would be obvious to one having ordinary skill in the art to have the packaging member surround a syringe as taught by Fine since doing so would provide more cooling and protection to the articles in the package.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 4, 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin US 2002/0195575 A1 in view of Sixt et al. US 2007/0210090 A1 and further in view of Xiaohai et al. US 2005/0189404 A1.
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With regards to claim 1, Martin (Fig. 5) discloses a syringe transport tool set comprising: a packaging member 10/50 that is installed in a housing space of a packing container 46, surrounds a syringe (32; para. 0027) including a material storage container that houses a viscous material; a buffer member (para. 0028; additional foam placed at the base and lid of container to clamp the “pig” in place) that mitigates an external force applied to the syringe transport tool set when the syringe is transported; the packaging member includes an insertion portion (shown above) that allows insertion of the syringe in a state where the syringe is in a vertically standing position when the syringe transport tool set is positioned on its bottom, and a solid portion that is provided around the insertion portion and forms the insertion portion, the solid portion is formed from a first end portion on a side where the insertion portion is located to a second end portion on a side opposite to the first end portion in an insertion direction in which the viscous material is inserted into the insertion portion, and the solid portion contains foamed polyethylene, the solid portion is formed in a layer shape by sequentially providing a plurality of layers of the foamed polyethylene 50 (Fig. 5) in the insertion direction, the packing container has an opening through which the packaging member and the buffer member are inserted into the packing container, and the bottom is a surface of the packing container opposite the opening.
Martin does not specifically disclose a cold storage agent that is installable between the packaging member and the buffer member in the housing space and includes a content that refrigerates the syringe and a content storage container that houses the content, wherein the buffer member has a thermal conductivity of 0.022 W/m-K or less, the content is configured to have a melting point in a range of -50 degrees or more to -30 degrees or less, the content storage container has a surface on which a recessed portion is formed.
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However, Sixt teaches it was known in the art to have a container have a cold storage agent that is installable between the packaging member and the buffer member in the housing space and includes a content 24’ that refrigerates articles and a content storage container 24 that houses the content, and the content is configured to have a melting point in a range of -50 degrees or more to -30 degrees or less, the content storage container has a surface on which a recessed portion (at 25; shown above) is formed. (Abstract, Para. 0006-0007, 0054 and claim 30 and Fig. 4; annotated above)
Martin discloses a buffer (foam installed in base and lid of container) to provide protection to the syringe but it does not specifically disclose the buffer member has a thermal conductivity of 0.022 W/m-K or less.
Sixt (Fig. 1) teaches that it was known in the art to have a buffer member 6 have a thermal conductivity of 0.022 W/m-K or less. (Para. 0006, 0031 and claims 30-31)
The inventions of Martin and Sixt are both drawn to the field of containers that can hold sensitive articles. Each container includes a buffer. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the container in Martin by providing a cold storage agent being inserted into the packing container with a content storage container that houses the content and the content is configured to have a melting point in a range of -50 degrees or more to -30 degrees or less and the buffer member have a thermal conductivity of 0.022 W/m-K or less as taught by Sixt for the purposes of providing a container to transport articles that require a regulated temperature space for longer storage or transport.
Martin discloses the solid portion contains a plurality of layers of foamed polyethylene, but it does not specifically disclose it is non-crosslinked foamed polyethylene.
However, Xiaohai teaches that it was known in the art to have a container that holds and transports temperature sensitive articles that includes a packaging member that forms a solid portion that contains a plurality of layer of non-crosslinked foamed polyethylene. (7/9/11/13/15; Figs. 2-4 and Para. 0020, 0063-0065 and 0073 and claim 4)
The inventions of Martin and Xiaohai are both drawn to the field of containers that are capable of sensitive articles. Each container includes a packaging member to assist in the holding and protecting of the articles. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the packaging member in Martin by having the member contain non-crosslinked foamed polyethylene as taught by Xiaohai for the purposes of providing an alternative type of material to the packing member.
With regards to claim 2, Sixt discloses the content storage container 24 has a flat surface. (shown in the annotated figure above)
With regards to claim 4, Martin does not specifically disclose non-crosslinked foamed polyethylene contained in the solid portion has a linear expansion coefficient of 0.1 to 10 x 10-4 cm/cm· °C.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the solid portion have a linear expansion coefficient of 0.1 to 10 x 10-4 cm/cm· °C, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
With regards to claim 6, Martin the solid portion (50; shown in Fig. 5) is provided with a flat surface at the second end portion. (Described in Para. 0028)
With regards to claim 8, Sixt further teaches one or more other recessed portions (recessed portions below and next to recess 25; shown in the annotated figure above) are formed on the surface of the content storage container.
Response to Arguments
Applicants’ arguments with respect to claim(s) 1-2,4,6 and 8 have been considered but are moot because of a new ground of rejection. However, with regards to the Applicants remarks that the prior art reference Douglas-Hamilton does not disclose the amended limitations of having the “packing container has an opening through which the packaging member, the buffer member, and the cold storage agent are inserted into the packing container, and the bottom is a surface of the packing container opposite the opening” and “the solid portion is formed in a layer shape by sequentially providing a plurality of layers of the non-crosslinked foamed polyethylene in the insertion direction”. The reference Douglas-Hamilton is no longer cited in the above rejection, as stated above, Martin in view of Sixt and further in view of Xiaohai teaches the amended limitation. Martin discloses a packing container that has an opening through which the packaging member, the buffer member, and the cold storage agent (as taught by Sixt) are inserted into the packing container and the solid portion is formed in a layer shape by sequentially providing a plurality of layers of the non-crosslinked foamed polyethylene in the insertion direction (Martin teaching syringe being inserted into a plurality of layers of polyethylene foam./ Xiaohai teaches layers of non-crosslinked foamed polyethylene.).
Conclusion
Applicants’ 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 JENINE SPICER whose telephone number is (313)446-4924. The examiner can normally be reached 9:00am-5:00pm, Monday-Thursday.
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/JENINE SPICER/Examiner, Art Unit 3736
/RAFAEL A ORTIZ/Primary Examiner, Art Unit 3736
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