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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group IV, corresponding to claims 43 to 49 and withdrawn claims 1-42 from prosecution in the reply filed on 12/05/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 43 to 49 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.
Regarding Claims 43, 46, 48 and 49:
Claim 43 reads:
A method of using reversible packaging, including the steps of:
a user purchasing a product contained within reversible packaging showing a first design;
the user removing the reversible packaging and reversing the reversible packaging to show a second design; and
the user securing the reversible packaging around the product showing the second design.
This is confusing since, as written, the method as claimed can only be executed by a single user executing all the steps, and it is unclear if that is actually the intention of the Applicant. Note that Claims 46, 48 and 49 include further steps that also need to be executed by the user, but later on Claim 48 and in the Specification, it is indicated that the user can be a company, that would then require that the whole company execute the steps.
Regarding Claim 44:
The Claim on the first line reads: “The method of claim 43, wherein the first design is chosen from the group consisting of”. The claim appears to be a Markush grouping, Examiner notes this is not correctly recited, and suggests "consists of at least one of:", and eliminating “and combinations thereof” on the last line.
Regarding Claim 47:
The Claim on the second and third line reads: “performing a step chosen from the group consisting of”. The claim appears to be a Markush grouping, Examiner notes this is not correctly recited, and suggests "consists of at least one of:",
Regarding Claim 48:
The Claim on the first line reads: “The method of claim 47, further including a step chosen from the group consisting of”. The claim appears to be a Markush grouping, Examiner notes this is not correctly recited, and suggests "consists of at least one of:".
Regarding Claim 49:
The Claim on the second and third line reads: “performing a step chosen from the group consisting of”. The claim appears to be a Markush grouping, Examiner notes this is not correctly recited, and suggests "consists of at least one of:".
Claim Rejections - 35 USC § 102
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.
Claims 43 and 45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagpal (WO2021146167, US 2023/0038262 will be used for text and Figures).
Regarding Claim 43:
Nagpal discloses a method of using reversible packaging, including the steps of:
a user purchasing a product contained within reversible packaging showing a first design (Paragraph 0036; Figure 4A, show reversible container 402, that will be considered the reversible packaging, in a shipping configuration, to show in the exterior information relevant for shipping and with lid 404 open and closed showing product 411 inside);
the user removing the reversible packaging (Paragraph 0039, a consumer can receive an embodiment of the reversible container and remove the product within) and reversing the reversible packaging to show a second design (Paragraph 0039, the consumer can disassemble the reversible container, reassemble the reversible container into a display configuration as shown on Figure 4B, Paragraph 0036, 0038, where different ornamentation, information, materials, and so on can be visible on the reversible container 402 exterior, in particular lid ornamentation 410 is visible on the exterior of the reversible container 402 even while in the closed configuration 440); and
the user securing the reversible packaging around the product showing the second design (Paragraph 0039, after setting the reversible container in the display configuration dispose the product back into the reversible container. In the display configuration, surface ornamentation is now visible on exterior surfaces of the reversible container, Figure 4B shows the container closed, so the reversible packaging can be considered secured around the product).
Regarding Claim 45:
Nagpal discloses that securing step is further defined as the user using a sealing mechanism for securing the reversible packaging around the product (Paragraph 0041, The container design may also contemplate recloses such as releasable tabs, pressure adhesives, etc. for lid portions, short of any additional limitations they will be considered sealing mechanisms).
Claim Rejections - 35 USC § 103
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 46 is rejected under 35 U.S.C. 103 as being unpatentable over Nagpal (WO2021146167, US 2023/0038262 will be used for text and Figures), as applied to Claim 43 above.
As discussed for Claim 43 above, the modified invention of Nagpal discloses the invention as claimed.
The modified invention of Nagpal does not disclose a step of giving the product as gift to an individual.
It would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention to give the product as a gift to an individual since giving gifts to celebrate an occasion or as a sample for example, is a common practice in the art.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Nagpal (WO2021146167, US 2023/0038262 will be used for text and Figures), as applied to Claim 43 above, and in view of Mills (US 2002/0134822).
Regarding Claim 44:
Nagpal discloses that the first design is chosen from the group consisting of contents of said packaging body, information that is commercially required or regulatory required, a display for a sales shelf, packaging for shipping, safety information and combinations thereof (Figure 4A, the shipping configuration of the reversible container 402 shows the shipping label 408 on the shipping surface 409 of the body 406 for visual access to carriers and recipients of the reversible container 402).
Nagpal does not disclose that the second design is chosen from the group consisting of a gift wrap design, a return label, and combinations thereof.
Mills teaches a similar reversible packaging having a first design and a second design in the opposite side with a pre-printed return address label (Paragraph 0017, the bottom panel 18 may be provided with printed indicia such as a return address label, the panels 4, 10 and 12 are folded in the opposite direction so that the upper surface of the bottom panel 18 becomes the top surface of the box. If the bottom panel is printed with a return address label, the user merely folds the various panels in the opposite direction to place the bottom panel as an upper surface of the box equipped with a pre-printed return address label).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to Nagpal the teachings of Mills and have a return label pre-printed as part of the second design if the reversible package is to be returned in the display configuration.
Claims 47, 48 and 49 are rejected under 35 U.S.C. 103 as being unpatentable over Nagpal (WO2021146167, US 2023/0038262 will be used for text and Figures) as applied to Claim 43 above and in view of Mills (US 2002/0134822) and Pomerantz (US 7693745).
Regarding Claims 47, 48 and 49:
As discussed for Claim 44 above, the modified invention of Nagpal discloses the invention as claimed, including that the second design comprises a return label.
The modified invention of Nagpal does not disclose a step chosen from the group consisting of taking a picture of a return label, reading a barcode, and toggling a QR code, the user sending the product to a company for a return, or a subsequent step of the company performing a step chosen from the group consisting of taking a picture of the return label, reading the barcode, and toggling the QR code and approving a return or exchange.
Pomerantz teaches affixing to each package a unique identifier (Abstract), such as a barcode, when transferring packages in a package routing system; and that to enable consumers to return items to the vendor, that can be a large company, scanning a barcode on the package to confirm that an item is returnable (Column 8, line 64 to Column 9 line 5) and when the packages arrive at the destination they are identified by reading the barcode label to determine storage location and to update the internal inventory (Column 14, lines 13 to 23).
Therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Nagpal the teachings of Pomerantz and have the user scan a barcode on the package to confirm that the item is returnable and for the company to read the barcode on the packages to determine storage location and to update the internal inventory, since the use of barcodes as package identifier for determining returns and inventory control is a common practice in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In particular Gillani (US 6948616) and Moran (US 5344065) disclose relevant reversible containers that could have been used for a proper rejection of Claim 43.
Rejections for Claims 47, 48 and 49 can also be made using Knight (US 2005/0060165) that teaches a sample of a return shipping label for returning a package to a vendor, in particular a company, that includes a carrier bar code that needs to be scanned by the user for the package to be accepted, tracked by the carrier all the way to the location designated by the vendor and scanned upon receipt at the designated delivery location (Paragraph 0041, 0042, Figure 3, return-shipping label 300 including carrier bar code 320 as a package-tracking identifier and the Company name on 304, Figure 1, the return item 106 is returned to the designated location 116); therefore, it would have been obvious to a person having ordinary skill in the art to which the claimed invention pertains, before the effective filing date of the claimed invention, to incorporate to the modified invention of Nagpal the teachings of Knight and include including in the return label a carrier bar code as a package-tracking identifier to be scanned by the user for the package to be accepted and tracked by the carrier when returning to the company and read by the company upon receipt at the designated delivery location, since the use of barcodes as package-tracking identifier is a common practice in the art.
Also, Jones (US 2022/0207466) teaches adding QR codes to shipping container to be read to add or remove products from inventory when shipped or received.
The Examiner recommends having an interview to discuss at least the issues of lack of clarity.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDUARDO R FERRERO whose telephone number is (571)272-9946. The examiner can normally be reached M-F 9:30-7:00.
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, SHELLEY SELF can be reached at 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDUARDO R FERRERO/Examiner, Art Unit 3731
/ROBERT F LONG/Primary Examiner, Art Unit 3731