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 .
Response to Amendment
This office action is in response to the reply filed on 3/3/2026, wherein claims 17-18 were amended. Claims 13-20 are pending. Claims 1-12 are withdrawn.
Election/Restrictions
Newly amended claims 17-18 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Applicant made an election without traverse to species III stated on the election filed 9/15/2025. The amendments to the claims includes material that are drawn to restricted species I and II. For example claims 17 and 18 describe an encircling sidewall as comprising a panel and bounding a compartment which is not required of the elected species III.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17 and 18 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 13, 15-16, and 19-20 is/are rejected under 35 U.S.C. 102a(1) as being anticipated by Friar (US 5350108 A).
With respect to claim 13, Friar discloses a carton comprising: a first panel (29) having an elongated slot (31) extending therethrough, said elongated slot having a first end oppositely disposed from a second end, said elongated slot defining a length extending between said first end and said second end; a locking panel assembly comprising a locking tab (97) having a linear length greater than said length of said elongated slot, said locking tab comprising: a base (99) comprising a front edge and an opposing back edge with a first side edge and a second side edge extending therebetween; a first retention flap projecting (left 103) from said first side edge of said base and being foldable relative to said base; a second retention flap (right 103) projecting from said second side edge of said base and being foldable relative to said base; a third retention flap (100) projecting from said front edge of said base and being foldable relative to said base (99); said locking tab disposable through said slot (31) after configuration from a relaxed position into a folded position, said folded position comprising each of said first retention flap, said second retention flap, and said third retention flap being folded relative to said base (fig 7b-7c); and said locking tab further configured (the tab is capable of rebounding) to automatically rebound from said folded position to a rebound position after said locking tab is disposed through said slot, said rebound position comprising each of said first retention flap, said second retention flap, and said third retention flap rebounding at least partially toward said relaxed position. (col 8 lines 45-60 )
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With respect to claim 15, Friar discloses the carton of claim 13, wherein said relaxed position comprises each of said first retention flap, said second retention flap, and said third retention flap being disposed in a common plane with said base. (unfolded position of blank)
With respect to claim 16, Friar discloses the carton of claim 13, wherein said base (99) further comprises a front face (99 visible in fig 7), and wherein said folded position further comprises: said third retention flap (100) being folded to be disposed adjacent to said front face of said base, said third retention flap comprising a back face (100 visible in fig 7a) oppositely disposed in relation to said front face of said base; and both of said first retention flap and said second retention flap (103s of fig 7a) folded to be disposed adjacent to said back face of said third retention flap.
With respect to claim 19, Friar discloses the carton of claim 18, wherein said at least one trial product is housed within at least one container selected from the group consisting of: a pill bottle, a syringe, a vial, and a tube.
Examiner Note: Claim 19 does not positively claim the at least one trial product. As such, Friars device is capable of storing at least one trial product as described from the group listed above.
With respect to claim 20, Friar discloses the carton of claim 18, wherein said encircling sidewall comprises a transverse cross-section shape selected from the group consisting of: square, rectangular, circular, elliptical, and polygonal. (Friars invention is rectangular)
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Friar (US 5350108 A) in view of Morey (US 1108464 A).
With respect to claim 14, the references as applied to claim 13, above, disclose all the limitations of the claims except for wherein said rebound position comprises each of said first retention flap, said second retention flap, and said third retention flap projecting in orthogonal relation relative to said base. Friar does not directly disclose how much the retention flaps unfold. However, in a similar field of endeavor, namely locking tabs, Morey taught of locking tabs that unfold to angles perpendicular to its base/insertion reference. In both inventions, unfolding allows for retention of the locking tab, a specific angle of 90 degrees is well within the scope of both inventions to perform the intended function. Therefore, it would have been obvious to one of ordinary skill in the art of locking tabs before the effective filing date of the claimed invention to include a 90 degree unfolding as taught by Morey in the retention flaps of Friar since the claimed invention is only a combination of these old and well known elements which would have performed the same function in combination as each did separately. In the present case Friar teaches of unfolding retention flaps and adding a specific angle (like 90 degrees) as taught by Morey would maintain the same functionality of the Friar, making the results predictable to one of ordinary skill in the art (MPEP 2143).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 1745770 A, US 2388288 A, US 2690286 A, US 3462066 A, US 3510047 A, US 3826420 A, US 3869079 A, US 4015767 A, US 4046311 A, US 4196842 A, US 4304353 A, US 4401258 A, US 5217159 A, US 5419486 A, US 5642854 A, US 6223980 B1, US 20020036230 A1, US 6364200 B1, US 20050173291 A1, US 20070170234 A1, US 20090057387 A1, US 20130087607 A1, US 20140305944 A1, US 20150251797 A1, US 9663265 B1, US 20170158372 A1, US 20170334614 A1, US 20190344927 A1, and US 20200172317 A1.
Response to Arguments
Applicant's arguments filed 3/3/2026 have been fully considered but they are not persuasive. Applicant believes the prior art doesn't disclose "said locking tab further configured to automatically rebound from said folded position to a rebound position after said locking tab is disposed through said slot". Further stating that "The claimed invention requires resilient recovery following insertion. That is, the folded configuration stores deformation energy that results in automatic return movement once the locking tab clears the slot. Friar does not disclose such automatic rebound behavior." However, it is believed that Friar does meet such limitations and even if not, the term configured to broadens the statement. Firstly, in the drawings of Friar it shows the tab prior to insertion and after insertion. Even without the drawings, it is inherent that Friars tab is able to move towards a relaxed position, otherwise it wouldn't be considered a locking tab. It is unclear how narrow the term "automatic" is being read, but there is no outside force required by the user for the tab to move from folded state to a rebound state after insertion of the locking tab through the slot. Further, cardboard is naturally configured to rebound even without external factors, especially if the fold line has only been activated once. The rebound position is said to be "at least partially toward said relaxed state". This is true of Friar, the locking tab slightly unfolds, resulting in movement at least partially toward the relaxed state. This rebound configuration can be clearly seen in figure 7b, arrow 110 is even stated to be the movement arrow. That movement arrow is clearly towards the unfolded (relaxed) orientation shown in figure 7. For the reasons stated above, it is believed that prior art reads on the present application.
It was previously believed claims 17 and 18 were incorrectly labeled as dependents of claim 1 for the reasons stated in the previous action, include the labeling of the carton as “the carton” and not the zipper carton. Further, the introduction of parts which would be an antecedent issue if dependent upon claim 1. The amendments to claim 17 and 18 now read on species I and are no longer dependent upon species III and are therefore restricted.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYMREN K SANGHERA whose telephone number is (571)272-5305. The examiner can normally be reached Mon - Fri.
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/S.K.S./Examiner, Art Unit 3735
/ERNESTO A GRANO/Primary Examiner, Art Unit 3735
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