DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
2. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the width of layer C being about the same as the width of the strip, as now recited in claim 24, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claim 24 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 24 recites “the width of layer C is about the same width as that of the strip”. This is not supported in the originally filed disclosure. The drawings never show the relative widths of the individual layers. The specification only discloses layer A having a width larger than layer C (see page 8 lines 17-23).
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.
4. Claim 24 is 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 24 recites “the width of layer C is about the same width as that of the strip”. First, the scope of “about the same” is unclear. Second, claim 1, from which claim 24 depends, establishes that the strip includes layer C. In other words, layer C is the strip. What is this claim actually comparing the width of layer C to? Itself as it is part of the strip? The width of layer A only? The width of layer B only? The widths of all layers A and B only? The widths of layers A, B, and C? For the purpose of examination, prior art satisfying any of these hypotheticals will be considered sufficient to satisfy this claim limitation.
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 1-2, 6, 10-11, 13, 19, 20, and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nash (US 2014/0312107 A1).
Regarding claim 1, Nash teaches a handle for boxes comprising (Figs. 1-4) a bottom liner 17; a top liner 11 secured to the bottom liner and comprising a central cut-out portion 14; and a strip 12, wherein the strip comprises a first end portion 15, a second end portion 16 and an elongated central portion 13 which extends between the first end portion and the second end portion, wherein the first end portion and the second end portion are secured between the bottom liner and the top liner adjacent opposing ends of the central cut-out portion (Fig. 3), and the elongated central portion has a length exceeding a length of the cut-out portion and is arranged to form an arch when pulled in a direction away from the bottom liner (Fig. 4), wherein the strip comprises (“the material is a tape with a coating of adhesive applied to a substrate”, see [0036]) at least a layer A (the material/tape), a layer B (coating of adhesive), and a layer C (a substrate), wherein the layer B is arranged between the layer A and the layer C, wherein the layer A comprises nonwoven (see [0036]), the layer B comprises an adhesive (see [0036]) and the layer C comprises a reinforcement material (see [0036]), and wherein the layer A constitutes an exterior surface of the strip; wherein layer B and layer C are arranged as a core and layer A is arranged as a casing substantially covering (at least the top thereof) the core.
Regarding claim 6, Nash teaches the nonwoven is selected from the list consisting of nonwoven polymer (see “polyester, polypropylene, polyethylene” in [0036]).
Regarding claim 10, Nash does not teach results of the load bearing test as described in the specification. A result of a load bearing test is a function or property of a handle, and it has been held that something which is old does not become patentable upon discovery of a new property (MPEP 2112). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 section I. Put another way, merely reciting new test result would not, in and of itself, create patentable distinction or anyone could continue patenting a product indefinitely provided they come up with a new test.
Nash teaches the claimed invention as set forth regarding claim 1, and therefore the structure of Nash is identical in structure to the claimed product and is presumed to have the property of having a breaking strength of at least 100kg as evaluated by means of the test described in the detailed description. Applicant may meet the burden of showing the claimed and prior art structures are not substantially identical by identifying a distinguishing structural element within the claims.
Regarding claim 11, Nash teaches the bottom liner comprises paperboard (see [0032]). Regarding claim 13, Nash teaches the first end portion and the second end portion of the strip are secured to the bottom liner and the top liner through adhesive means (see [0032] and [0035]).
Regarding claims 19 and 20, the normal construction of the Nash handle would include a method for manufacturing as set forth in claims 19 and 20 where the method includes the basic steps of “providing” and “combining” which Nash explicitly teaches.
Regarding claim 24, to the degree the claim is understood, Nash discloses the handle according to claim 1, wherein the strip (which includes layer C, as defined by claim 1) has a width (that of layer C) and layer C has a width, and the width of layer C is about the same as that of the strip (which includes layer C, as defined by claim 1).
Claim Rejections - 35 USC § 103
7. 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.
8. Claims 1, 3, 8-10, and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 203845136 U) in view of Peters (US 2008/0217197 A1).
Regarding claim 1, Zhang teaches a handle for boxes comprising (Fig. 2) a bottom liner 3; a top liner 1 secured to the bottom liner and comprising a central cut-out portion (see [0004]); and a strip 2, wherein the strip comprises a first end portion, a second end portion and an elongated central portion which extends between the first end portion and the second end portion, wherein the first end portion and the second end portion are secured between the bottom liner and the top liner adjacent opposing ends of the central cut-out portion (see [0004], Fig.1), and the elongated central portion has a length exceeding a length of the cut-out portion and is arranged to form an arch when pulled in a direction away from the bottom liner (due to the z-shape fold, Fig. 7).
The handle of Zhang is formed by taking a sheet of paper (Fig. 3; [0021]), folding outsides inward along folds 6 and 8 ([0021]) to overlap and adhere to a reinforcing cotton rope elements 5 ([0022]), and folding it again along a central fold 7 ([0021]; Fig. 5) to get a strip that has four layers of paper (Fig. 4), and then folding this strip along folds 9 and 10 to get a Z-shaped arrangement ([0023]; Fig. 6). This handle 2 is glued to the top liner 1 ([0024]) and the bottom liner 3 is glued to the bottom of the top liner ([0024]). Zhang teaches element 5 is adhered at two sides to the paper elements, so adhesive would be present between This arrangement produces a cross section that is approximated in the below diagram:
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Zhang teaches the strip comprises at least a layer A, a layer B, and a layer C (see above diagram of the cross section), wherein the layer B is arranged between the layer A and the layer C, wherein the layer B comprises an adhesive ([0022]) and the layer C comprises a reinforcement material ([0022]), and wherein the layer A constitutes an exterior surface of the strip and arranged as a casing substantially covering a core formed by layers B and C. Zhang does not teach the layer A comprises nonwoven, instead teaching kraft paper ([0021]). Peters teaches an analogous container with a handle and teaches it is known to make handles various materials and lists paper and nonwoven fabric as alternatives ([0039]). It would have been obvious to one having ordinary skill in the art to use a nonwoven fabric, 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 USPO 416.
Regarding claim 3, Zhang teaches (see diagram above) the strip is folded (specifically because of the folding at line 7, [0021], Fig. 5) so as to arrange the layer A as an exterior surface for substantially the entire strip (Fig. 4).
Regarding claim 8, Zhang teaches the reinforcement material is selected from the list consisting of kraft paper, high density polyethylene, jute, paper and textile (Zhang teaches cotton, [0022], and cotton is a plant textile).
Regarding claim 9, Zhang does not teach any particular sizing for the strip width. The Office takes the position that this feature is not a patentably distinguishable feature over the prior art because mere changes in size, color, and shape over the prior art cannot be used to distinguish over the prior art (see the Manual of Patent Examining Procedures, Section 2144.04). At the time of the invention, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Zhang so the handle structure could be of various sizes to make the handle suitable for comfortably holding various containers of different sizes and weights as desired.
Regarding claim 10, Zhang is modified to use a known material as taught by Peters, so Zhang does not teach results of the load bearing test as described in the specification. A result of a load bearing test is a function or property of a handle, and it has been held that something which is old does not become patentable upon discovery of a new property (MPEP 2112). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 section I. Put another way, merely reciting new test result would not, in and of itself, create patentable distinction or anyone could continue patenting a product indefinitely provided they come up with a new test.
Zhang in view of Peters renders obvious the claimed invention as set forth regarding claim 1, and therefore the modified structure of Zhang is substantially identical in structure to the claimed product and is presumed to have the property of having a breaking strength of at least 100kg as evaluated by means of the test described in the detailed description. Applicant may meet the burden of showing the claimed and prior art structures are not substantially identical by identifying a distinguishing structural element within the claims.
Regarding claim 16, Zhang discloses the handle according to claim 1, wherein the layer A is wrapped around at least layers B and C (see Fig. 5 and Figure above).
Regarding claim 17, Zhang does not teach any particular sizing for the top and bottom liners. The Office takes the position that this feature is not a patentably distinguishable feature over the prior art because mere changes in size, color, and shape over the prior art cannot be used to distinguish over the prior art (see the Manual of Patent Examining Procedures, Section 2144.04). At the time of the invention, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Zhang so the handle structure could be of various sizes to make the handle suitable for comfortably holding various containers of different sizes and weights as desired.
Regarding claim 18, Zhang teaches the top liner 1 comprises a laminate or a kraft paper ([0019]).
Regarding claim 19, Zhang teaches a method for manufacturing the handle according to claim 1 above, comprising: providing a bottom liner 3, providing a top liner 1, providing a strip 2 ([0019], Fig. 2), providing an adhesive ([0024]), combining the bottom liner 3, the top liner 1, the strip 2, and the adhesive to form the handle ([0024]).
Regarding claim 20, Zhang is the strip 2 is formed by taking a sheet of paper (Fig. 3; [0021]), folding outsides inward along folds 6 and 8 ([0021]) to overlap and adhere to a reinforcing cotton rope elements 5 ([0022]), and folding it again along a central fold 7 ([0021]; Fig. 5) to get a strip that has four layers of paper (Fig. 4), see the diagram above, which comprises providing a layer A, a layer B, and a layer C and stacking the layers A-C to form the strip as illustrated in the diagram above.
Regarding claim 21, translated Zhang describes the reinforcement 5, applied to teach layer C, is a cotton rope (0004) and the illustrations and description imply that this would be thinner than the paper as demonstrated in the diagram above so that they fit within the fold lines. Accordingly, layer A has a width that is larger than the layer B and the layer C such that after stacking, lateral portions of the layer A (the portions of layer A that form fold lines 6 and 7 specifically) extend beyond lateral ends of the layer B and the layer C such that layer A provides an exterior surface to substantially the entire strip.
Regarding 22, Zhang teaches after stacking (Fig. 5), the strip is folded (along fold 7; [0021]) so as to arrange the layer A as an exterior surface for substantially the entire strip (Fig. 4, also see above diagram).
Regarding claim 23, Zhang teaches providing the strip further comprises (see diagram) providing a layer D (by folding along fold 6, 0021) and a layer E (the other side of the cotton rope being adhered to two sides; 0022) to form the strip.
Regarding claim 24, to the degree the claim is understood, Zhang discloses the handle according to claim 1, wherein the strip (which includes layer C, as defined by claim 1) has a width (that of layer C) and layer C has a width, and the width of layer C is about the same as that of the strip (which includes layer C, as defined by claim 1).
9. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over by Nash (US 2014/0312107 A1) as applied to claim 1 above, and further in view of Keienburg (EP 2,384,886 A1).
Nash teaches adhesive comprises a polyethylene-based adhesive (0036), but Nash does not teach a basis weight, so when forming the container of Nash one of ordinary skill in the art would find it obvious to use conventional adhesives for such containers. Keienburg teaches an analogous container that is formed using a polyethylene-based adhesive and teaches using a basis weight of 19-21 gsm (see annotated translation), which falls inside the claimed range of 10-50 gsm. It would have been obvious to one having ordinary skill in the art to use the material taught by Keienburg, 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 USPO 416.
10. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over by Nash (US 2014/0312107 A1) as applied to claim 1 above, and further in view of Grubstein (US 2014/0034543 A1).
Nash teaches the material for the handle may be formed from various non-woven materials, but Nash does not teach a basis weight, so when forming the container of Nash one of ordinary skill in the art would find it obvious to use conventional paperboards for such containers. Grubstein teaches an analogous container with a handle using nonwoven material (0012) having a basis weight of approximately 80 gsm (0016), which falls inside the claimed range of 20-100 gsm. It would have been obvious to one having ordinary skill in the art to use the material taught by Grubstein, 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 USPO 416.
11. Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over by Nash (US 2014/0312107 A1) as applied to claim 1 above, and further in view of Arki (US 2016/0068297 A1).
Regarding claim 7, Nash teaches the reinforcing material is a paper product ([0036]), but Nash does not teach a basis weight, so when forming the container of Nash one of ordinary skill in the art would find it obvious to use conventional paperboards for such containers. Arki teaches an analogous container with handle and teaches forming containers using a basis weight of 60-330 lbs/ream, and as an example gives 80-140 ([0050]), which converts to 89-488 gsm for the entire range with the example being 118-207 gsm, which overlaps the claimed range of 20-200 gsm. It would have been obvious to one having ordinary skill in the art to use the claimed basis weight, 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 USPO 416. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05, section I.
Regarding claim 12, Nash teaches the bottom liner is formed from paperboard ([0032]), but Nash does teach a basis weight, so when forming the container of Nash one of ordinary skill in the art would find it obvious to use conventional paperboards for such containers. Arki teaches an analogous container with handle and teaches forming containers using a basis weight of 60-330 lbs/ream, and as an example gives 80-140 ([0050]), which converts to 89-488 gsm for the entire range with the example being 118-207 gsm, teaching that the entire claimed range of 16-190 gsm falls within known conventional materials. It would have been obvious to one having ordinary skill in the art to use the claimed basis weight, 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 USPO 416. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05, section I.
12. Claims 9 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over by Nash (US 2014/0312107 A1) as applied to claim 1 above.
Regarding claim 9, Nash teaches the handle can have various widths (0036) but does not teach any particular sizing. The Office takes the position that this feature is not a patentably distinguishable feature over the prior art because mere changes in size, color, and shape over the prior art cannot be used to distinguish over the prior art (see the Manual of Patent Examining Procedures, Section 2144.04). At the time of the invention, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Nash so the handle could be of various sizes to make the handle suitable for comfortably holding various containers of different sizes and weights as desired.
Regarding claim 17, Nash teaches the bottom liner is larger than the opening in the top liner so as to cover it (0032), but Nash does not teach any particular sizing for the top and/or bottom liners. The Office takes the position that this feature is not a patentably distinguishable feature over the prior art because mere changes in size, color, and shape over the prior art cannot be used to distinguish over the prior art (see the Manual of Patent Examining Procedures, Section 2144.04). At the time of the invention, it would have been obvious for one of ordinary skill in the art to have modified the teachings of Nash so the handle structure could be of various sizes to make the handle suitable for comfortably holding various containers of different sizes and weights as desired.
Allowable Subject Matter
13. Claims 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or suggest the recited material layering for forming a handle strip as set forth in the limitations of claim 1 and claim 14. The prior art teaches examples of handles using two materials and using folded structures as applied in the rejections above, but the prior art does not teach or suggest the multiple material layering as set forth in the claims.
Response to Arguments
14. Applicant has argued that Nash is silent regarding any liners and teaches direct attachment of the strip to the container itself. Nash clearly discloses a bottom liner 17 and the top wall 11 of the container can be considered a “top liner” as so broadly claimed and within the context of the claim structure currently presented. There is nothing in the claim that structurally distinguished a container wall from a liner.
15. Applicant has argued that Nash fails to disclose an A-B-C layer strip as claimed. As set forth in paragraph 6 above, Nash discloses “the material is a tape with a coating of adhesive applied to a substrate” (see [0036]); at least a layer A (the material/tape), a layer B (coating of adhesive), and a layer C (a substrate), wherein the layer B is arranged between the layer A and the layer C, wherein the layer A comprises nonwoven (see [0036]), the layer B comprises an adhesive (see [0036]) and the layer C comprises a reinforcement material (see [0036]), and wherein the layer A constitutes an exterior surface of the strip; wherein layer B and layer C are arranged as a core and layer A is arranged as a casing substantially covering (at least the top thereof) the core.
16. Applicant has argued that Nash requires a cut-out in the container which inherently weakens the container and restricts the handle’s placement. Examiner notes that this does nothing to take away from the fact that Nash discloses structure that anticipates the claims as currently presented.
17. Applicant has argued that Zhang fails to disclose the layer B of adhesive. Zhang discloses such adhesive layer between both sides of the rope and the paper in paragraph [0022].
18. Applicant has argued that Zhang fails to disclose layers B and C arranged as a core around which layer A forms a casing. See Figure 5 of Zhang and the Figure set forth in paragraph 8 above.
Conclusion
19. 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.
20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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, Nathan 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. 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.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 5/26/26
Prosecution Insights