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
Receipt is acknowledged of an amendment, filed on 17 November 2025, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-9, 11-20 and 22-29 are pending for examination.
Claims 10 and 21 are canceled.
Claims 7, 8, 11, 17, 18, 20 and 22 are currently amended.
Claims 28 and 29 are new.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted with the amendment filed on 17 November 2025.
Information Disclosure Statement
The information disclosure statement filed 4 September 2025 fails to comply with 37 CFR 1.97(c) because it lacks the timing fee set forth in 37 CFR 1.17(p). It has been placed in the application file, but the information referred to therein has not been considered.
Claim Objections
Claims 11, 12, 22 and 23 are objected to because of the following informalities:
Regarding claims 11 and 22, each claim has been amended to depend from itself which makes for an improper dependent claim. For the remainder of this Office action, it will be assumed that claim 11 depends from claim 8, and claim 22 depends from claim 17.
Regarding claim 12 and 23, each claim is objected to because it depends from an objected to claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Rejection under 35 USC 112(a):
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
Claims 8, 9, 11-20 and 22-29 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.
Regarding claim 8, lines 18 and 19, the structural feature “wherein the second container comprises a second impact reducing portion that is a single piece unitary construction with the second cover portion” (emphasis added) is deemed to be directed to new matter.
Regarding claim 17, lines 14 and 15, the structural feature “wherein the second container comprises a second impact reducing portion that is a single piece unitary construction with the second cover portion” (emphasis added) is deemed to be directed to new matter.
Regarding claim 28, lines 1-3, the structural feature “wherein the second impact reducing portion is a single piece unitary construction with the second cover portion” (emphasis added) is deemed to be directed to new matter.
Regarding claims 9, 11-16, 18-20, 22-27 and 29, each claim is rejected under 35 USC 112(a) because it depends from a claim rejected under 35 USC 112(a).
In each instance, the claimed structural feature finds no written support in the originally filed disclosure and the figures do not show, teach or suggest the claimed structural feature to a skilled artisan. It is noted that no explanation of where in the originally filed disclosure a skilled artisan would find support for the particular limitation has been provide by applicant in the Remarks filed on 17 November 2025.
Rejection under 35 USC 112(b):
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 17-20 and 22-27 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 claim 17, lines 14-17 have been added to recite structural details of the second container, but claim 17 at line 4 only requires the “container is configured to contain a second container therein”. The claim is considered to be vague and indefinite because the claim fails to particularly point out the required structure of the container system. Claim 17 reads at line 4 as only being configured to contain a second container, and this is further supported by claim 18 which expressly states “further comprising the second container”.
Claim 17 is attempting to further limit the structure of the second container at lines 14-17, but it is unclear as to whether or not the second container is a required part of the container system.
Claim 17 shall be interpreted as not requiring a second container, and the claim needs to be appropriately amended in order to clarify the required structure if applicant wants the claim interpreted to require the second container. If applicant wants claim 17 to require a second container than claim 18 would likewise need to be amended.
Regarding claims 18-20, 22-27, each claim is rejected under 35 USC 112(b) because it depends from a claim rejected under 35 USC 112(b).
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2005-119716) in view of Oliver (US 7471509).
Attention is directed to the English language machine translation of the Ogawa reference attached to the Office action mailed on 19 May 2025.
Regarding claim 1, the Ogawa reference discloses a protective container system (packaging structure 1) for protecting a component from impact (figs. 1-5), comprising:
a first container (packaging box 7, a corrugated cardboard box, for example) comprising a first base portion (bottom of box 1) and a first cover portion (lid of box 1, figs. 1 and 2);
a second container (carrying case 6) comprising a second base portion (6a) and a second cover portion (6b);
wherein the first container (1) is configured to contain the second container (6) therein with the second cover portion (6b) being adjacent to the first cover portion (lid of box 1, fig. 2);
wherein the second container (6) is configured to contain an electronic component (electronic device 5) therein with the electronic component being adjacent to the second cover portion (6b); and
wherein the first container (1) includes a receiving portion (packing material 8) that is structurally configured to prevent movement of the second container (6) relative to the first container (1) when the first cover portion (lid of box 1) is in a closed position relative to the first base portion (bottom of box 1, fig. 2).
The Ogawa reference teaches impact reducing material (11). The Ogawa reference does not disclose:
wherein the first container comprises a first impact reducing portion that is configured to extend from an outer surface portion of the first cover portion in a direction away from the second cover portion;
wherein the first impact reducing portion is structurally configured to deform in response to a first impact force on the first impact reducing portion that is less than a first minimum impact force in response to which the first cover portion is configured to deform;
wherein the first impact reducing portion is structurally configured to prevent an impact force on the first impact reducing portion that is less than the first minimum impact force from being transferred to the second impact reducing portion so as to protect the second container contained in the first container;
wherein the second container comprises a second impact reducing portion that is configured to extend from the second cover portion in a direction toward the first cover portion;
wherein the second impact reducing portion is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform; and
and wherein the second impact reducing portion is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container.
The Oliver reference discloses a similar type of protective package (fig. 5C) in which it is shown to be old and well known in the relevant to provide:
a first container (enclosure 14) that comprises a first impact reducing portion (shock absorbers 16) that is configured to extend from an outer surface portion of the first cover portion (top of enclosure 14) in a direction away from a second cover portion (top of enclosure 12);
wherein the first impact reducing portion (16) is structurally configured to deform in response to a first impact force on the first impact reducing portion that is less than a first minimum impact force in response to which the first cover portion is configured to deform (implicit);
wherein the first impact reducing portion (16) is structurally configured to prevent an impact force on the first impact reducing portion that is less than the first minimum impact force from being transferred to the second impact reducing portion so as to protect the second container (12) contained in the first container (implicit);
wherein the second container (12) comprises a second impact reducing portion (shock absorber 16) that is configured to extend from the second cover portion (top of enclosure 12) in a direction toward the first cover portion (top of enclosure 14);
wherein the second impact reducing portion (16) is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform (implicit); and
and wherein the second impact reducing portion (16) is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component (electronics within enclosure 12) contained in the second container so as to protect the electronic component container in the second container (see col. 1, lines 32-48).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the Ogawa protective container system by having incorporated:
wherein the first container comprises a first impact reducing portion that is configured to extend from an outer surface portion of the first cover portion in a direction away from the second cover portion;
wherein the first impact reducing portion is structurally configured to deform in response to a first impact force on the first impact reducing portion that is less than a first minimum impact force in response to which the first cover portion is configured to deform;
wherein the first impact reducing portion is structurally configured to prevent an impact force on the first impact reducing portion that is less than the first minimum impact force from being transferred to the second impact reducing portion so as to protect the second container contained in the first container;
wherein the second container comprises a second impact reducing portion that is configured to extend from the second cover portion in a direction toward the first cover portion;
wherein the second impact reducing portion is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform; and
and wherein the second impact reducing portion is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container, as suggested by Oliver, in order to provide additional forms of impact reducing structures.
In this instance, a skilled artisan would have recognized that the combination of Ogawa with the teachings of Oliver involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2005-119716) in view of Oliver (US 7471509), as applied to claim 1 above, and further in view of Hoge et al. (US 2008/0197036).
Regarding claim 2, the Ogawa protective container system, as modified by Oliver above, teaches the protective container system of claim 1, but does not expressly disclose wherein the receiving portion (Ogawa: 8) is configured as a structural support of the first cover portion.
The Hoge et al. reference discloses in a similar type of protective container system that it is old and well known to provide a receiving portion (530a, 530b) configured as a structural support of the first cover portion (paragraph [0043]: co-molded with container bottom 512 and container top 514).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Ogawa protective container system by having substituted a receiving portion configured as a structural support of the first cover portion, as suggested by Hoge et al., for the receiving portion (8) of Ogawa, in order to make use of a known alternative structure for providing support to the container cover and to receive the enclosed second container.
In this instance, a skilled artisan would have recognized that the substitution of the receiving portion from the Hoge et al. reference for the receiving portion of the Ogawa reference involves no more than the predictable use of prior art elements according to their established functions, and that one of ordinary skill in the art could have substituted one known element for another and the results of the substitution would have been predictable.
Claims 3-7, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2005-119716) in view of Oliver (US 7471509), as applied to claim 1 above, and further in view of Ott et al. (US 2017/0318699).
Regarding claims 3-7, the Ogawa protective container system, as modified by Oliver above, teaches the protective container system of claim 1, but does not disclose wherein the first impact reducing portion comprises a fin; wherein the fin is a first fin, and the first impacting reducing portion further comprises a second fin; wherein the first fin and the second fin are different sizes; wherein the first fin is configured to extend a first distance from the outer surface portion of the first cover portion, the second fin is configured to extend a second distance from the outer surface portion of the first cover portion, and the first distance and the second distance are different; and wherein the first impact reducing portion comprises a first portion that is configured to extend from the outer surface portion of the first cover portion a first extension distance, and first impact reducing portion comprises a second portion that is configured to extend from the outer surface portion of the first cover portion a second extension distance, and the first extension distance and the second extension distance are different.
The Ott et al. reference discloses in a similar type of protective container system that it is old and well known in the relevant art to provide impact reducing portions in the form of a fin (4, figs. 1, 2 and 9) (paragraphs [0011] and [0029]); wherein the fin (10) is a first fin, and the first impacting reducing portion further comprises a second fin (11, fig. 2 and 9); wherein the first fin (10) and the second fin (11) are different sizes (paragraph [0030]); wherein the first fin (10) is configured to extend a first distance from the outer surface portion of the first cover portion (housing 1), the second fin (11) is configured to extend a second distance from the outer surface portion of the first cover portion (housing 1) (paragraph [0047]), and the first distance and the second distance are different (fig. 9, paragraphs [0047] and [0048]); and wherein the first impact reducing portion (figs. 6 or 7) comprises a first portion (lower portion of 7 or 8) that is configured to extend from the outer surface portion of the first cover portion (housing 1) a first extension distance, and first impact reducing portion comprises a second portion (upper portion of 7 or 8) that is configured to extend from the outer surface portion of the first cover portion (housing 1) a second extension distance, and the first extension distance and the second extension distance are different (paragraphs [0043], [0044], [0047] and [0048]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Ogawa protective container system, as modified by Oliver above with regard to claim 1, by having incorporated wherein the first impact reducing portion comprises a fin; wherein the fin is a first fin, and the first impacting reducing portion further comprises a second fin; wherein the first fin and the second fin are different sizes; wherein the first fin is configured to extend a first distance from the outer surface portion of the first cover portion, the second fin is configured to extend a second distance from the outer surface portion of the first cover portion, and the first distance and the second distance are different; and wherein the first impact reducing portion comprises a first portion that is configured to extend from the outer surface portion of the first cover portion a first extension distance, and the first impact reducing portion comprises a second portion that is configured to extend from the outer surface portion of the first cover portion a second extension distance, and the first extension distance and the second extension distance are different, as suggested by Ott et al., in order to make use of known alternative configurations for the impact reducing portion which also provide increased strength for the container.
In this instance, a skilled artisan would have recognized that the combination of Ogawa, as modified by Oliver above with regard to claim 1, with the teachings of Ott et al. involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claims 28 and 29, the Ogawa protective container system, as modified by Oliver above, teaches the protective container system of claim 1, but does not expressly disclose wherein the second impact reducing portion is a single piece unitary construction with the second cover portion, and wherein the second impact reducing portion extends across an entire width of an upper-most surface of the second cover portion.
The Ott et al. reference also teaches that the impact reducing portion (fins 4) may be a single piece unitary construction with the cover portion (paragraph [0035]: “the impact damper has a cross-section corresponding to an acute-angled triangle. A base of said triangle serves the purpose of mounting to the lateral surface 3 of the housing. This mounting may be of a releasable nature, or the impact damper 4 may be formed integrally with the housing 1.”
The Ott et al. reference teaches that the impact reducing portion (fins 4, fig. 2) extends across an entire width of an upper-most surface of the cover portion (paragraph [0031]: “the upper area two rib-shaped impact dampers 4 extend over the entire width of the lateral surface 3.”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Ogawa protective container system, as modified by Oliver above with regard to claim 1, by having incorporated that the second impact reducing portion is a single piece unitary construction with the second cover portion, and that the second impact reducing portion extends across an entire width of an upper-most surface of the second cover portion, as taught by Ott et al., in order to make use of known alternative configurations for the impact reducing portion which also provide increased strength for the container.
In this instance, a skilled artisan would have recognized that the combination of Ogawa, as modified by Oliver above with regard to claim 1, with the teachings of Ott et al. involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Claims 8, 9, 11-20 and 22-27 are rejected under 35 U.S.C. 103 as being unpatentable over Hoge et al. (US 2008/0197036) in view of Oliver (US 7471509), and further in view of Ott et al. (US 2017/0318699).
Regarding claim 8, the Hoge et al. reference discloses a protective container system (protective cartridge case) for protecting a component from impact, comprising:
a first container (510) comprising a first base portion (512) and a first cover portion (514);
a second container (60) comprising a second base portion (bottom of 60) and a second cover portion (top of 60) (paragraph [0004]): “cartridge housing includes an upper housing section and a lower housing section which substantially enclose the magnetic tape, which includes a cartridge leader”);
wherein the first container (510) is configured to contain the second container (60) therein with the second cover portion being adjacent to the first cover portion;
wherein the second container (60) is configured to contain an electronic component (cartridge tape or a statement of intended use which is fully capable of being performed) therein with the electronic component being adjacent to the second cover portion (a statement of intended use which is fully capable of being performed);
wherein the first container (510) comprises a first impact reducing portion (520e, 522e) (fig. 6, paragraph [0042]) that is configured to extend from an outer surface portion of the first cover portion in a direction away from the second cover portion;
wherein the first impact reducing portion is structurally configured to deform in response to a first impact force on the first impact reducing portion that is less than a first minimum impact force in response to which the first cover portion is configured to deform (implicit); and
wherein the first impact reducing portion is structurally configured to prevent an impact force on the first impact reducing portion that is less than the first minimum impact force from being transferred to the second container so as to protect the second container contained in the first container and an electronic component container in the second container (implicit).
The Hoge et al. reference does not expressly disclose wherein the second container comprises a second impact reducing portion that is a single piece unitary construction with the second cover portion and that is configured to extend from the second cover portion in a direction toward the first cover portion.
The Oliver reference discloses that it is old and well known to provide a protective container system wherein a second container (12) comprises a second impact reducing portion (16) that is configured to extend from the second cover portion (top of enclosure 12) in a direction toward a first cover portion (top of enclosure 14).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the Hoge et al. protective container system by having incorporated wherein the second container comprises a second impact reducing portion that is configured to extend from the second cover portion in a direction toward the first cover portion, as suggested Oliver, in order to make use a known alternative structure for providing additional impact reducing portions for protecting the contents.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al. with the teachings of Oliver involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Additionally, the Ott et al. reference also teaches that the impact reducing portion (fins 4) may be a single piece unitary construction with the cover portion (paragraph [0035]: “the impact damper has a cross-section corresponding to an acute-angled triangle. A base of said triangle serves the purpose of mounting to the lateral surface 3 of the housing. This mounting may be of a releasable nature, or the impact damper 4 may be formed integrally with the housing 1.”
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Hoge et al. protective container system, as modified by Oliver above, by having incorporated wherein the second container comprises a second impact reducing portion that is a single piece unitary construction with the second cover portion and that is configured to extend from the second cover portion in a direction toward the first cover portion, as suggested by Ott et al., in order to make use of known alternative configurations for the impact reducing portion which also provide increased strength for the container.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al., as modified by Oliver above, with the teachings of Ott et al. involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claim 9, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 8, wherein the first container (Hoge et al.: 510) includes a receiving portion (Hoge et al.: 530a, 530b) that is structurally configured to prevent movement of the second container (Hoge et al.: 60) relative to the first container (Hoge et al.: 510) when the first cover portion (Hoge et al.: 514) is in a closed position relative to the first base portion (Hoge et al.: 512, paragraph [0043]).
Regarding claims 11 and 12, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 8, but does not disclose wherein the second impact reducing portion is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform; and wherein the second impact reducing portion is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container.
The Oliver reference also discloses that it is old and well known to provide a protective container system wherein the second impact reducing portion (12) is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform (implicit); and wherein the second impact reducing portion (12) is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container (implicit).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Hoge et al. protective container system, as modified by Oliver and Ott et al. above with regard to claim 8, by having incorporated wherein the second container comprises a second impact reducing portion that is configured to extend from the second cover portion in a direction toward the first cover portion; wherein the second impact reducing portion is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform; and wherein the second impact reducing portion is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container, as suggested by Oliver, in order to make use a known alternative structure for providing additional impact reducing portions for protecting the contents.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al., as modified by Oliver and Ott et al. above with regard to claim 8, with the additional teachings of Oliver involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claims 13-16, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 8, but does not expressly disclose wherein the first impact reducing portion comprises a first impact reducing portion first portion and a first impact reducing portion second portion; wherein the first impact reducing portion first portion and the first impact reducing portion second portion are different sizes; wherein the first impact reducing portion first portion is configured to extend a first distance from the outer surface portion of the first cover portion, the first impact reducing portion second portion is configured to extend a second distance from the outer surface portion of the first cover portion, and the first distance and the second distance are different; and wherein the first impact reducing portion first portion does not directly contact the first impact reducing portion second portion.
The Ott et al. reference additionally discloses in a similar type of protective container system that it is old and well known in the relevant art to provide impact reducing portions in the form of a first impact reducing portion (impact dampers 4) comprises a first impact reducing portion first portion (10) and a first impact reducing portion second portion (11) (fig. 9); wherein the first impact reducing portion first portion (10) and the first impact reducing portion second portion (11) are different sizes (fig. 9, paragraph [0030]); wherein the first impact reducing portion first portion (10) is configured to extend a first distance from the outer surface portion of the first cover portion (1, 3), the first impact reducing portion second portion (11) is configured to extend a second distance from the outer surface portion of the first cover portion (1, 3), and the first distance and the second distance are different (paragraphs [0047] and [0048]); and wherein the first impact reducing portion first portion (10) does not directly contact the first impact reducing portion second portion (11) (figs. 2 and 9).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Hoge et al. protective container system, as modified by Oliver and Ott et al. above with regard to claim 8, by having incorporated wherein the first impact reducing portion comprises a first impact reducing portion first portion and a first impact reducing portion second portion; wherein the first impact reducing portion first portion and the first impact reducing portion second portion are different sizes; wherein the first impact reducing portion first portion is configured to extend a first distance from the outer surface portion of the first cover portion, the first impact reducing portion second portion is configured to extend a second distance from the outer surface portion of the first cover portion, and the first distance and the second distance are different; and wherein the first impact reducing portion first portion does not directly contact the first impact reducing portion second portion, as suggested by Ott et al., in order to make use of known alternative configurations for the impact reducing portion which also provide increased strength for the container.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al., as modified by Oliver and Ott et al. above with regard to claim 8, with the additional teachings of Ott et al. involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claim 17, the Hoge et al. reference discloses a protective container system (protective cartridge case) for protecting a component from impact, comprising:
a container (510) comprising a base portion (512) and a cover portion (514);
wherein the container (510) is configured to contain a second container (60) therein with a cover portion (top of 60) of the second container (60) being adjacent to the cover portion (514) of the container (510);
wherein the container (510) comprises an impact reducing portion (522e) that is configured to extend from an outer surface portion of the cover portion (514) of the container (510) in a direction away from the cover portion (top of 60) of the second container (60);
wherein the impact reducing portion (522e) is structurally configured to deform in response to an impact force on the impact reducing portion that is less than a minimum impact force in response to which the cover portion is configured to deform (implicit); and
wherein the impact reducing portion (522e) is structurally configured to prevent an impact force on the impact reducing portion that is less than the minimum impact force from being transferred to the second container so as to protect the second container contained in the first container and an electronic component container in the second container (implicit).
The Hoge et al. reference does not expressly disclose wherein the second container comprises a second impact reducing portion that is a single piece unitary construction with the cover portion of the second container and is configured to extend from the cover portion of the second container in a direction toward the cover portion of the container.
The Oliver reference discloses that it is old and well known to provide a protective container system wherein a second container (12) comprises a second impact reducing portion (16) that is configured to extend from the cover portion (top of enclosure 12) of the second container (12) in a direction toward a cover portion (top of enclosure 14) of a container.
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have modified the Hoge et al. protective container system by having incorporated wherein the second container comprises a second impact reducing portion that is configured to extend from the cover portion of the second container in a direction toward the cover portion of the container, as suggested Oliver, in order to make use a known alternative structure for providing additional impact reducing portions for protecting the contents.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al. with the teachings of Oliver involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Additionally, the Ott et al. reference also teaches that the impact reducing portion (fins 4) may be a single piece unitary construction with the cover portion (paragraph [0035]: “the impact damper has a cross-section corresponding to an acute-angled triangle. A base of said triangle serves the purpose of mounting to the lateral surface 3 of the housing. This mounting may be of a releasable nature, or the impact damper 4 may be formed integrally with the housing 1.”
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Hoge et al. protective container system, as modified by Oliver above, by having incorporated wherein the second container comprises a second impact reducing portion that is a single piece unitary construction with the cover portion of the second container and is configured to extend from the cover portion of the second container in a direction toward the cover portion of the container, as suggested by Ott et al., in order to make use of known alternative configurations for the impact reducing portion which also provide increased strength for the container.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al., as modified by Oliver above, with the teachings of Ott et al. involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claim 18, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 17, further comprising a second container (Hoge et al.: 60), wherein the second container (Hoge et al.: 60) comprises a second base portion (bottom of 60).
Regarding claim 19, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 18, wherein the second container (Hoge et al.: 60) is configured to contain an electronic component (cartridge tape or a statement of intended use which is fully capable of being performed) therein with the electronic component being adjacent to the second cover portion (a statement of intended use which is fully capable of being performed).
Regarding claim 20, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 19, wherein the container (Hoge et al.: 510) includes a receiving portion (Hoge et al.: 530a, 530b) that is structurally configured to prevent movement of the second container (Hoge et al.: 60) relative to the container (Hoge et al.: 510) when the cover portion (Hoge et al.: 514) is in a closed position relative to the base portion (Hoge et al.: 512, paragraph [0043]).
Regarding claims 22 and 23, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 17, but does not disclose wherein the second impact reducing portion is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform; and wherein the second impact reducing portion is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container.
The Oliver reference discloses that it is old and well known to provide a protective container system wherein the second impact reducing portion (12) is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform (implicit); and wherein the second impact reducing portion (12) is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container (implicit).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Hoge et al. protective container system, as modified by Oliver and Ott et al. above with regard to claim 17, by having incorporated wherein the second container comprises a second impact reducing portion that is configured to extend from the second cover portion in a direction toward the first cover portion; wherein the second impact reducing portion is structurally configured to deform in response to a second impact force on the second impact reducing portion that is less than a second minimum impact force in response to which the second cover portion is configured to deform; and wherein the second impact reducing portion is structurally configured to prevent an impact force on the second impact reducing portion that is less than the second minimum impact force from being transferred to an electronic component contained in the second container so as to protect the electronic component container in the second container, as suggested by Oliver, in order to make use a known alternative structure for providing additional impact reducing portions for protecting the contents.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al., as modified by Oliver and Ott et al. above with regard to claim 17, with the additional teachings of Oliver involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Regarding claims 24-27, the Hoge et al. protective container system, as modified by Oliver and Ott et al. above, teaches the protective container system of claim 17, but does not expressly disclose wherein the first impact reducing portion comprises a first impact reducing portion first portion and a first impact reducing portion second portion; wherein the first impact reducing portion first portion and the first impact reducing portion second portion are different sizes; wherein the first impact reducing portion first portion is configured to extend a first distance from the outer surface portion of the first cover portion, the first impact reducing portion second portion is configured to extend a second distance from the outer surface portion of the first cover portion, and the first distance and the second distance are different; and wherein the first impact reducing portion first portion does not directly contact the first impact reducing portion second portion.
The Ott et al. reference additionally discloses in a similar type of protective container system that it is old and well known in the relevant art to provide impact reducing portions in the form of a first impact reducing portion (impact dampers 4) comprises a first impact reducing portion first portion (10) and a first impact reducing portion second portion (11) (fig. 9); wherein the first impact reducing portion first portion (10) and the first impact reducing portion second portion (11) are different sizes (fig. 9, paragraph [0030]); wherein the first impact reducing portion first portion (10) is configured to extend a first distance from the outer surface portion of the first cover portion (1, 3), the first impact reducing portion second portion (11) is configured to extend a second distance from the outer surface portion of the first cover portion (1, 3), and the first distance and the second distance are different (paragraphs [0047] and [0048]); and wherein the first impact reducing portion first portion (10) does not directly contact the first impact reducing portion second portion (11) (figs. 2 and 9).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have further modified the Hoge et al. protective container system, as modified by Oliver and Ott et al. above with regard to claim 17, by having incorporated wherein the first impact reducing portion comprises a first impact reducing portion first portion and a first impact reducing portion second portion; wherein the first impact reducing portion first portion and the first impact reducing portion second portion are different sizes; wherein the first impact reducing portion first portion is configured to extend a first distance from the outer surface portion of the first cover portion, the first impact reducing portion second portion is configured to extend a second distance from the outer surface portion of the first cover portion, and the first distance and the second distance are different; and wherein the first impact reducing portion first portion does not directly contact the first impact reducing portion second portion, as suggested by Ott et al., in order to make use of known alternative configurations for the impact reducing portion which also provide increased strength for the container.
In this instance, a skilled artisan would have recognized that the combination of Hoge et al., as modified by Oliver and Ott et al. above with regard to claim 17, with the additional teachings of Oliver et al. involves no more than the predictable use of prior art elements according to their established functions. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR, 550 U.S. at 416.
Response to Arguments
Objection to Claims:
Applicant’s amendment and corresponding arguments, see page 12 of the Remarks, filed on 17 November 2025, with respect to the objection to claims 7 and 17-27 have been fully considered and are persuasive. The objection to claims 7 and 17-27 as set forth in the previous Office action has been withdrawn.
Rejection under 35 USC 102(a)(1):
Applicant’s amendment and corresponding arguments, see pages 14 and 15 of the Remarks, filed on 17 November 2025, with respect to the rejection of claims 8, 9 and 17-20 under 35 USC § 102(a)(1) as anticipated by Hoge et al. have been fully considered and are persuasive. The rejection of claims 8, 9 and 17-20 under 35 USC § 102(a)(1) as set forth in the previous Office action has been withdrawn. However, note that claims 8, 9 and 17-20 are now rejected under 35 USC 103 as set forth above. The limitations added to both claims 8 and 17 which are quoted on page 13 of the Remarks are taught by Oliver and Ott et al. as discussed above in the rejection of the claims 8 and 17.
Rejection under 35 USC 103:
Applicant's amendments and corresponding arguments, see pages 13 and 15-19 of the Remarks, filed 17 November 2025, have been fully considered but they are not persuasive.
35 USC 103 Rejection of claims 8 and 17 as amended:
Applicant argues that “Oliver fails to remedy the deficiencies of Hoge. For example, the Examiner relies upon Oliver to allegedly disclose the existence of a second impact reducing portion that is configured to extend from the second cover portion, (see Office Action at page 14). Applicant submits that modifying the Hoge system with the teachings of Oliver would not have been obvious for at least the reason that to do so would increase the size of the second container of Hoge, and Oliver teaches away from increasing the size of the enclosure and the overall envelope.”
Applicant’s argument is unpersuasive because while the Oliver reference teaches alternative or less preferred structures, it does properly teach the limitations for which it is relied. It may state that the absorbers (16) allegedly increase the size of the enclosure (14), but such does not appear to be germane to the combination of Hoge et al. and Oliver, or to the combination of Hoge et al., Oliver and Ott et al. as discussed in the rejection. The issue of size is no where mentioned in the claims nor is the issue of whether or not the features of Oliver and Ott et al. may be combined with Hoge et al. as discussed above in the rejection. Applicant has “asserted no discovery beyond what was known in the art.” Size is no where mentioned in the written description as a problem that applicant is attempting to solve.
From MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments:
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).”
As concerns the issue of the single piece unitary construction, it is pointed out that such feature as claimed by applicant is deemed to be directed to new matter and the feature has been rejected under 35 USC 112(a). Additionally, such a feature is expressly known in the prior art, Ott et al., as discussed above in the 35 USC 103 rejections.
35 USC 103 Rejection of claim 1:
As concerns the rejection of claim 1 under 103 based on the combination of Ogawa and Oliver, see pages 18 and 19 Remarks filed on 17 November 2025, applicant argues that “Applicant submits that modifying the Ogawa system with the teachings of Oliver would not have been obvious for at least the reason that to do so would increase the size of the second container of Ogawa, and both Oliver and Ogawa teach away from increasing the size of the enclosure and the overall envelope. As described above, Oliver teaches away from increasing the size of the enclosure.”
Applicant’s argument is unpersuasive because while the Oliver reference teaches alternative or less preferred structures, it does properly teach the limitations for which it is relied. It may state that the absorbers (16) allegedly increase the size of the enclosure (14), but such does not appear to be germane to the combination of Ogawa and Oliver, or to the combination of Ogawa, Hoge et al., Oliver and Ott et al. as discussed in the rejection. The issue of size is nowhere mentioned in the claims nor is the issue of whether or not the features of Oliver and Ott et al. may be combined with Ogawa as discussed above in the rejection. Applicant has “asserted no discovery beyond what was known in the art.” Size is nowhere mentioned in the applicant’s written description as a problem that applicant is attempting to solve.
Applicant’s argument that “Adding protrusions (such as the shock absorbers 16) as a single piece unitary construction with the second container 6 of Ogawa would increase the size of the entire package of Ogawa because it would introduce additional material (and thus distance) between second container 6 and the packing 108 of the outer container, as can be seen from FIGS. 4 and 5 of Ogawa, reproduced below.”
Applicant’s argument is unpersuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). The issue of size is nowhere mentioned in the claims nor is the issue of whether or not the features of Oliver and Ott et al. may be combined with Hoge et al. as discussed above in the rejection. Applicant has “asserted no discovery beyond what was known in the art.” Size is nowhere mentioned in the applicant’s written description as a problem that applicant is attempting to solve.
In response to applicant’s arguments that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In the rejections under 35 USC 103 set forth above it is pointed out that a clear demonstrate that:
1. The applied prior art references actually do disclose or suggest each and every feature recited in the rejected claims;
2. there is a reasonable probability of success of such modifications;
3. the proposed combination of prior art elements "does no more than yield predictable results;" and
4. the existence of a teaching, suggestion, or apparent reason, either in the explicit teachings of the applied references themselves or in the prior art knowledge available to one of ordinary skill in the art, to make such modification so as to result in the claimed invention.
35 USC 103 Rejection of dependent claims 2-7, 9, 11-16, 18-20 and 22-27:
It is noted that applicant has provided no specific arguments pointing out any errors with respect to the rejections of the dependent claims 2-7, 9, 11-16, 18-20 and 22-27, and thus the rejections of the dependent claims 2-7, 9, 11-16, 18-20 and 22-27 are deemed proper.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references listed on the attached form (PTO-892) are cited to show protective container systems. All are cited as being of interest and to show the state of the prior art.
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 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 STEPHEN F. GERRITY whose telephone number is (571)272-4460. The examiner can normally be reached Monday - Friday (8:00 - 5:00).
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, Anna Kinsaul can be reached at 571-270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN F. GERRITY/Primary Examiner, Art Unit 3731 9 December 2025
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