DETAILED ACTION
Status of Application
Applicant’s arguments filed on December 22, 2025 have been fully considered and are addressed below. The previous 112 rejections have been withdrawn in light of Applicant’s amendments. Claims 1, 9 and 17 have been amended. Claims 4, 5, 12 and 20 have been cancelled. Claims 1-3, 6-11 and 13-19 remain pending in the application with claims 8 and 15 withdrawn from consideration.
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 .
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 9-11, 13, 14 and 16-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobsen et al. (US 2004/0123569 A1, hereinafter Jacobsen).
Regarding claim 9, Jacobsen teaches a package comprising:
a storage compartment (38);
a first geometric structure (54) coupled to the storage compartment at a first location (paragraph 27);
a second geometric structure (56) coupled to the storage compartment at a second location (paragraph 27), and
an opening/closing mechanism (72, 74, 76) configured for manipulation by an automated package-handling system (paragraph 26), wherein:
each of the first geometric structure, the second geometric structure, and the opening/closing mechanism comprise a characteristic that is at least one of identifiable or locatable by a detection component of the automated package-handling system in a three- dimensional space in which the automated package-handling system operates, wherein the characteristic comprises at least one of a shape, a color, an indent, a protrusion or a marker (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8).
It is noted that the claims are directed toward a package, not the automated package-handling system or the combination of the package and the automated package-handling system. Regarding the first geometric structure, the second geometric structure and the opening/closing mechanism comprising a characteristic that is at least one of identifiable or locatable by a detection component of the automated package-handling system, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114). In this case, the first geometric structure, the second geometric structure and the opening/closing mechanism comprise a characteristic that meets a shape and a protrusion, as claimed, and thus, the first geometric structure, the second geometric structure and the opening/closing mechanism comprise the structure necessary to function as claimed.
Regarding claim 10, Jacobsen teaches the package of claim 9 above, wherein the opening/closing mechanism comprises a third geometric structure (76) that operates along a first interlocking member (72) that forms a first side with first securing element and a second interlocking member (74) that forms a second side with a second securing element (paragraphs 26, 27 and Fig. 6).
Regarding claim 11, Jacobsen teaches the package of claim 10 above, wherein each of the first interlocking member and the second interlocking member is disposed or integrally formed along an inner surface of the storage compartment, and both the first interlocking member and the second interlocking member are operable to at least one of interlock, interdigitate, or detachably couple to each other (paragraphs 26, 27 and Fig. 6).
Regarding claim 13, Jacobsen teaches the package of claim 9 above, wherein at least a portion of the opening/closing mechanism is aligned, at least partially, with an axis along which a force is exerted to open or close the package (FIG. 6).
Regarding claim 14, Jacobsen teaches the package of claim 9 above, wherein the opening/closing mechanism comprises a first securing element and a second securing element that comprise a male/female coupling (paragraphs 26, 27 and FIG. 6).
Regarding claim 16, Jacobsen teaches the package of claim 9 above, wherein the package comprises a bag, the storage compartment is formed at least partially of a pliable material (paragraph 26), and the first geometric structure and the second geometric structure each have a higher degree of rigidity than the pliable material (paragraphs 10, 27, 28).
Regarding claim 17, Jacobsen teaches a package comprising:
a storage compartment (38);
a first securing structure (54) coupled to the storage compartment at a first location (paragraph 27);
a second securing structure (56) coupled to the storage compartment at a second location (paragraph 27), and
an opening/closing mechanism (72, 74, 76) configured for manipulation by an automated package-handling system (paragraph 26), wherein:
the first securing structure comprises a first characteristic that is at least one of identifiable or locatable by a detection component of the automated package-handing system and the first securing structure can be engaged by a first package-engaging structure of the automated package-handling system based on a location of the first securing structure in a three-dimensional space as at least one of identified or located by the detection component (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8),
the second securing structure comprises a second characteristic that is at least one of identifiable or locatable by the detection component and the second securing structure can be engaged by a second package-engaging structure of the automated package-handling system based on a location of the second geometric/securing structure in the three-dimensional space as at least one of identified or located by the detection component (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8),
the opening/closing mechanism comprises a third characteristic that is at least one of identifiable or locatable by the detection component and the opening/closing mechanism can be engaged by a third package-engaging structure of the automated package-handling system based on a location of the opening/closing mechanism in the three-dimensional space as at least one of identified or located by the detection component, and
each of the first characteristic, the second characteristic, and the third characteristic comprises at least one of machine-identifiable indicia, a near-field communication signal, a radio frequency identification tag, a shape, a color, an indent, a protrusion, or a marker (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8).
It is noted that the claims are directed toward a package, not the automated package-handling system or the combination of the package and the automated package-handling system. Regarding the first characteristic, the second characteristic and the third characteristic being at least one of identifiable or locatable by a detection component of the automated package-handling system, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114). In this case, the first characteristic, the second characteristic and the third characteristic comprise a characteristic that meets a shape and a protrusion, as claimed, and thus, the first characteristic, the second characteristic and the third characteristic comprise the structure necessary to function as claimed.
Regarding claim 18, Jacobsen teaches the package of claim 17 above, wherein the opening/closing mechanism comprises a third geometric/securing structure (76) that operates along a first interlocking member (72) that forms a first side with a first securing element and a second interlocking member (74) that forms a second side with a second securing element (paragraphs 26, 27 and Fig. 6).
Regarding claim 19, Jacobsen teaches the package of claim 18 above, wherein each of the first interlocking member and the second interlocking member is disposed or integrally formed along an inner surface of the storage compartment, and both the first interlocking member and the second interlocking member are operable to at least one of interlock, interdigitate, or detachably couple to each other (paragraphs 26, 27 and Fig. 6).
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.
Claims 1-3, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobsen in view of Actis (US 9,193,490 B2).
Regarding claim 1, Jacobsen teaches a package comprising:
a storage compartment (38);
a first geometric structure (54) coupled to the storage compartment at a first location (paragraph 27);
a second geometric structure (56) coupled to the storage compartment at a second location (paragraph 27), and
an opening/closing mechanism (72, 74, 76) configured for manipulation by an automated package-handling system (paragraph 26), wherein:
the first geometric structure comprises a first characteristic that is at least one of identifiable or locatable by a detection component of the automated package-handing system and the first geometric structure can be engaged by a first package-engaging structure of the automated package-handling system based on a location of the first geometric/securing structure in a three-dimensional space as at least one of identified or located by the detection component (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8),
the second geometric structure comprises a second characteristic that is at least one of identifiable or locatable by the detection component and the second geometric structure can be engaged by a second package-engaging structure of the automated package-handling system based on a location of the second geometric/securing structure in the three-dimensional space as at least one of identified or located by the detection component (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8), and
the opening/closing mechanism comprises a third characteristic that is at least one of identifiable or locatable by the detection component and the opening/closing mechanism can be engaged by a third package-engaging structure of the automated package-handling system based on a location of the opening/closing mechanism in the three-dimensional space as at least one of identified or located by the detection component (paragraphs 10, 11, 24, 26-28, 30, 36-40, 49-63, 66 and FIG. 3-8).
Jacobsen fails to teach each of the first characteristic, the second characteristic, and the third characteristic comprising at least one of machine-identifiable indicia, a near-field communication signal, or a radio frequency identification tag. Actis teaches an analogous package comprising characteristics that are identifiable or locatable by a detection component of an automated package-handling system and further teaches that the characteristics can be at least one of a cutout, several cutouts, a mark, a combination mark and cutout, a logo, a hook, a notch, a metal insert, a sensor, a radio frequency identification member, combinations thereof and similar devise to enable detection by a detection system. Actis further discloses an embodiment that utilizes an indicator or mark to help locate or pinpoint the cutout so that it is more visible, especially to a camera system, OCR system, machine vision system or similar visualization system, which uses the cutout and/or indicator to locate a grabbing machine relative to the cutout to pick up the bag (column 4 line 43-column 5 line 32).
Accordingly, one having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify Jacobsen by providing the first geometric structure, the second geometric structure and the opening/closing mechanism with a means such as an RFID member, as taught by Actis, so that each of the first geometric structure, the second geometric structure and the opening/closing mechanism can be clearly located or pinpointed.
Regarding claim 2, Jacobsen as modified by Actis teaches the package of claim 1 above, wherein the opening/closing mechanism comprises a third geometric/securing structure (76) that operates along a first interlocking member (72) that forms a first side with a first securing element and a second interlocking member (74) that forms a second side with a second securing element (Jacobsen: paragraphs 26, 27 and Fig. 6).
Regarding claim 3, Jacobsen as modified by Actis teaches the package of claim 2 above, wherein each of the first interlocking member and the second interlocking member is disposed or integrally formed along an inner surface of the storage compartment, and both the first interlocking member and the second interlocking member are operable to at least one of interlock, interdigitate, or detachably couple to each other (Jacobsen: paragraphs 26, 27 and Fig. 6).
Regarding claim 6, Jacobsen as modified by Actis teaches the package of claim 1 above, wherein at least a portion of the opening/closing mechanism is aligned, at least partially, with an axis along which a force is exerted to open or close the package (Jacobsen: FIG. 6).
Regarding claim 7, Jacobsen as modified by Actis teaches the package of claim 1 above, wherein the opening/closing mechanism comprises a first securing element and a second securing element that comprise a male/female coupling (Jacobsen: paragraphs 26, 27 and FIG. 6).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5 and 6 of U.S. Patent No. 12,138,804. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 2 under examination are anticipated by claims 1, 5 and 6 of the reference patent. Every limitation in the claims under examination are recited in the reference patent claims.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 11 and 12 of U.S. Patent No. 12,138,804. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 17 and 18 under examination are anticipated by claims 8, 11 and 12 of the reference patent. Every limitation in the claims under examination are recited in the reference patent claims. The only difference between the claims under examination and the reference patent claims is that the claims under examination additionally include “a shape, a color, an indent, a protrusion, or a marker”. However, claim 17 under examination only requires “at least one of machine-identifiable indicia, a near-field communication signal, a radio frequency identification tag a shape, a color, an indent, a protrusion, or a marker”. Accordingly, claim 17 under examination is sufficiently anticipated by claim 12 of the reference patent.
Response to Arguments
Applicant's arguments filed December 22, 2025 with respect to Lewis have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Actis.
Applicant’s arguments filed December 22, 2025 with respect to Jacobsen have been fully considered but they are not persuasive.
The claims are directed toward a package, not the automated package-handling system or the combination of the package and the automated package-handling system. Accordingly, the functions of the automated package-handling system are not of particular relevance or significance. A recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations and while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (see MPEP 2114). In this case, the first geometric/securing structure, the second geometric/securing structure and the opening/closing mechanism of Jacobsen comprise the structure necessary to function as claimed.
Conclusion
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/NINA K ATTEL/Examiner, Art Unit 3734
/NATHAN J NEWHOUSE/Supervisory Patent Examiner, Art Unit 3734