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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 5, 11, 15, 17 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Green et al. (U.S. 5,609,039). FMS Korea Co. Ltd. a system 1000 suitable for storing and/or transporting temperature-sensitive materials, the system 1000 comprising an insulated container 1200, the insulated container comprising a cavity (figure 1), and at least one passive temperature-control member 1400 removably disposed within the cavity of the insulated container (figure 2), the at least one passive temperature-control member 1400 comprising a first passive temperature-control member, the first passive temperature-control member comprising a refrigerant container 1410 (figure 3) and a freezable refrigerant 1420, the freezable refrigerant being disposed within the refrigerant container (figure 3), wherein the refrigerant container is at least one of curbside recyclable and compostable and wherein the freezable refrigerant comprises water (paragraph [0021]).
Further regarding claim 1, FMS Korea Co. Ltd. discloses the claimed invention except for the freezable refrigerant occupying only about 85- 90% of the usable interior volume of the refrigerant container. Green et al. teaches that it is known to provide a system with a freezable refrigerant occupying approximately 90% of the usable interior volume of the refrigerant container (see col. 12 lines 34-37). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the system of FMS Korea Co. Ltd. with the freezable refrigerant occupying only about 90% of the usable interior volume of the refrigerant container, as taught by Green et al. , in order to compensate for changes in volume due to phase changes of the refrigerant. Additionally regarding the range of 85-90%, it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, the insulated container is at least one of curbside recyclable and compostable (paragraph [0016]).
Regarding claim 11, the freezable refrigerant consists of water (paragraph [0021]).
Regarding claim 15, an outer retaining box 1100, wherein the insulated container and the at least one passive temperature-control member are disposed within the outer retaining box.
Regarding claim 17, the at least one passive temperature-control member 1400 further comprises a second passive temperature-control member (figure 2) and wherein the second passive temperature-control member is identical to the first passive temperature-control member.
Regarding claim 32, the refrigerant container is a hollow member shaped to include at least one gabled end (figure 4), wherein the usable interior volume does not include the at least one gabled end, and wherein the first passive temperature-control member consists of the refrigerant container and the freezable refrigerant (as modified by Green et al. above, the upper 90% of the refrigerant container is not filled, which would be the upper gabled end).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Green et al. (U.S. 5,609,039), as applied to claim 1 above, and further in view of Kulangara et al. (U.S. 2020/0231362).
Regarding claim 2, the modified device of FMS Korea Co. Ltd. discloses the claimed invention except for the product box. Kulangara et al. teaches that it is known to provide a system with a product box (see element 29). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with a product box, as taught by Kulangara et al., in order to transport a temperature sensitive product within the box to a secondary location.
Regarding claim 3, the product box is at least one of curbside recyclable and compostable (paragraph [0097] of Kulangara et al.).
Regarding claim 4, the product box is made of corrugated cardboard (paragraph [0097] of Kulangara et al.).
Claims 6, 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Green et al. (U.S. 5,609,039), as applied to claim 5 above, and further in view of Moore et al. (U.S. 2018/0334308).
Regarding claim 6, the modified device of FMS Korea Co. Ltd. discloses the claimed invention except for the thermal insulation members being made of natural wood fiber and/or plant fiber materials. Moore et al. teaches that it is known to provide a system with thermal insulation members made of natural wood fiber and/or plant fiber materials (see paragraphs [0074], [0077], [0078]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with thermal insulation members made of natural wood fiber and/or plant fiber materials, as taught by Moore et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight.
Regarding claim 7, the one or more thermal insulation members (as modified by Moore et al. above, the walls of FMS Korea Co. Ltd. are modified to each have a thermal insulation member) comprise a thermal insulation base (shown in figure 2 of FMS Korea Co. Ltd.), a thermal insulation sleeve (at lead line 1100 in figure 2), and a thermal insulation lid 1120, wherein the thermal insulation base forms a bottom of the insulated container (figure 2 of FMS Korea Co. Ltd.) and comprises a thermal insulation base box made of corrugated cardboard and containing loose-fill cellulose (paragraph [0013] Moore et al.), wherein the thermal insulation sleeve forms four side walls of the insulated container and comprises a thermal insulation sleeve box made of corrugated cardboard and containing cellulose batting (paragraph [0013] Moore et al.), and wherein the thermal insulation lid forms a lid for the insulated container and comprises a thermal insulation lid box made of corrugated cardboard and containing loose-fill cellulose (paragraph [0013] Moore et al.).
Regarding claim 16, the modified system of FMS Korea Co. Ltd. discloses the claimed invention except for the thermal insulation members being made of natural wood fiber and/or plant fiber materials. Moore et al. teaches that it is known to provide a system with thermal insulation members made of natural wood fiber and/or plant fiber materials (see paragraphs [0074], [0077], [0078]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with thermal insulation members made of natural wood fiber and/or plant fiber materials, as taught by Moore et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight.
Claims 8, 10, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Green et al. (U.S. 5,609,039), as applied to claim 1 above, and further in view of Hoff et al. (U.S. 2021/0252824).
Regarding claim 8, the modified system of FMS Korea Co. Ltd. discloses the claimed invention except for the refrigerant container material comprising a paper layer. Hoff et al. teaches that it is known to provide a system with refrigerant container material comprising a paper layer (see paragraph [0033]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with refrigerant container material comprising a paper layer, as taught by Hoff et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 10, the refrigerant container is shaped to include at least one gabled end (figure 3 of FMS Korea Co. Ltd. ), the at least one gabled end is foldable (figure 4 of FMS Korea Co. Ltd. ).
Regarding claim 12, the modified system of FMS Korea Co. Ltd. discloses the claimed invention except for the water being potable water. Hoff et al. teaches that it is known to provide a system with the water being potable water (see paragraph [0011]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with the water being potable water, as taught by Hoff et al., in order to for ease of filling and disposal.
Regarding claim 13, freezable refrigerant is at least partially frozen, as taught by FMS Korea Co. Ltd. to maintain lower temperatures within the system.
Claims 18-22 are rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Green et al. (U.S. 5,609,039), as applied to claim 17 above, and further in view of Schmidt (BR 102020014444-8A2).
Regarding claim 18, the modified system of FMS Korea Co. Ltd. discloses the claimed invention except for the first positioning device. Schmidt teaches that it is known to provide a system with a first positioning device (see ribs which define recesses in 3’ for receipt of GG in figures 12 and 14). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with a first positioning device, as taught by Schmidt, in order to secure the elements within the system to prevent damage when transporting.
Regarding claim 19, the first positioning device is I-shaped, (see I shaped ribs which define recesses for receipt of GG in 3’ shown in figure 12 of Schmidt) and further comprises a first transverse bar disposed at a first end of the first dividing bar and a second transverse bar disposed at a second end of the first dividing bar.
Regarding claim 20, the first positioning device is made of corrugated cardboard, as modified by Schmidt.
Regarding claim 21, the modified system of FMS Korea Co. Ltd. discloses the claimed invention except for the product box. Schmidt teaches that it is known to provide a system with a product box (see element P in figure 14). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with a product box, as taught by Schmidt, in order to transport a temperature sensitive product within the box to a secondary location.
Regarding claim 22, the modified system of FMS Korea Co. Ltd. discloses the claimed invention except for the third and fourth passive temperature-control members. Schmidt teaches that it is known to provide a system with third and fourth passive temperature-control members (see GG in figure 13). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with third and fourth passive temperature-control members, as taught by Schmidt, in order to maintain a lower temperature for a longer period and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (BR 102020014444-8A2) in view of Grazon (WO 95/25253A1). Schmidt teaches a system, shown in figure 14, suitable for storing and/or transporting temperature-sensitive materials, the system comprising an insulated container 1’, the insulated container comprising a cavity (figures 11-14), a product box P, the product box being removably disposed within the cavity of the insulated container, the product box being designed to hold the temperature-sensitive materials (paragraph [0040]), a plurality of passive temperature-control members (figures 12) removably disposed within the cavity of the insulated container, the plurality of passive temperature-control members being identical to one another and comprising a first passive temperature-control member and a second passive temperature-control member, wherein the first and second passive temperature-control members are seated directly on top of the product box (paragraphs [0038], [0040]), and a positioning device (paragraph [0036]) disposed within the cavity of the insulated container (figures 5 and 12), wherein the positioning device comprises a dividing bar positioned between the first passive temperature-control member and the second passive temperature-control (figures 12 and 13).
Regarding claim 23, Schmidt discloses the claimed invention except for the positioning device being removable. Grazon teaches that it is known to provide a system with a removeable positioning device (see element 10). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the system of Schmidt with the positioning device being removable, as taught by Grazon, in order to allow the cavity to receive differently sized product boxes and secure the differently sized product boxes therein.
Claims 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (BR 102020014444-8A2) in view of Grazon (WO 95/25253A1), as applied to claim 23 above, and further in view of Kulangara et al. (U.S. 2020/0231362), Moore et al. (U.S. 2018/0334308) and Hoff et al. (U.S. 2021/0252824).
Regarding claim 24, Schmidt discloses the claimed invention except for the insulated container, product box and positioning device being made of natural wood fiber or plant fiber materials and the passive temperature-control members comprising a paper-based container. Kulangara et al. teaches that it is known to provide a system with a product box made of plant fiber materials (see paragraph [0097]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the system of Schmidt with a product box made of plant fiber materials, as taught by Kulangara et al., in order to use lightweight and recyclable materials.
Moore et al. teaches that it is known to provide a system with thermal insulation members made of natural wood fiber and/or plant fiber materials (see paragraphs [0074], [0077], [0078]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of Schmidt with thermal insulation members made of natural wood fiber and/or plant fiber materials, as taught by Moore et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight.
Hoff et al. teaches that it is known to provide a system with refrigerant container material comprising a paper layer (see paragraph [0033]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of Schmidt with refrigerant container material comprising a paper layer, as taught by Hoff et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 25, the freezable refrigerant consists of water (paragraph [0036]).
Regarding claim 26, the water is at least partially frozen (paragraph [0036]).
Regarding claim 27, the product box, the positioning device, and the first and second passive temperature-control members are dimensioned so that a portion of each of the first and second passive temperature-control members is positioned directly over opposing peripheral edges of the product box (figure 14).
Claims 28-30 are rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Jeon (KR102421917B1) and Green et al. (U.S. 5,609,039).
Regarding claim 28, FMS Korea Co. Ltd. teaches a method for storing and/or transporting a payload of temperature-sensitive materials (Abstract), the system comprising providing a thermal shipping system (figures 1 and 2), the thermal shipping system comprising an insulated container 1200, the insulated container comprising a cavity (figure 2), and at least one passive temperature-control member 1400 removably disposed within the cavity of the insulated container (figure 2), the at least one passive temperature control member 1400 comprising a first passive temperature-control member, the first passive temperature-control member comprising a refrigerant container 1410 and a freezable refrigerant 1420, the refrigerant container 1410 having an openable gabled end (figure 4), the freezable refrigerant being disposed within the refrigerant container (figure 4), positioning a payload of temperature-sensitive materials within the insulated container (paragraph [0003]), storing and/or transporting the payload within the insulated container (paragraph [0003]), then, removing the payload from the insulated container, and (ec) opening the openable gabled end of the refrigerant container and emptying the freezable refrigerant from the refrigerant container.
Regarding claim 28, FMS Korea Co. Ltd. discloses the claimed invention except for the step of emptying the refrigerant container. Jeon teaches that it is known to provide a refrigerant container which is emptied (“when the ice pack is melted, the filled water can be used…”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the method of FMS Korea Co. Ltd. with the step of emptying the refrigerant container, as taught by Jeon, in order to reduce waste.
Further regarding claim 28, FMS Korea Co. Ltd. discloses the claimed invention except for the freezable refrigerant occupying only about 85- 90% of the usable interior volume of the refrigerant container. Green et al. teaches that it is known to provide a system with a freezable refrigerant occupying approximately 90% of the usable interior volume of the refrigerant container (see col. 12 lines 34-37). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the system of FMS Korea Co. Ltd. with the freezable refrigerant occupying only about 90% of the usable interior volume of the refrigerant container, as taught by Green et al., in order to compensate for changes in volume due to phase changes of the refrigerant. Additionally regarding the range of 85-90%, it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 29, the freezable refrigerant consists of water (paragraph [0021]).
Regarding claim 30, the freezable refrigerant is at least partially frozen, as taught by FMS Korea Co. Ltd. to maintain lower temperatures within the system (“refrigerant pack” made of PCM, water in “cold storage unit”).
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Jeon (KR102421917B1) and Green et al. (U.S. 5,609,039), as applied to claim 28 above, and further in view of Moore et al. (U.S. 2018/0334308) and Hoff et al. (U.S. 2021/0252824).
Regarding claim 24, Schmidt discloses the claimed invention except for the insulated container, refrigerant container comprising a paper-based container.
Moore et al. teaches that it is known to provide a system with thermal insulation members made of natural wood fiber and/or plant fiber materials (see paragraphs [0074], [0077], [0078]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of Schmidt with thermal insulation members made of natural wood fiber and/or plant fiber materials, as taught by Moore et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight.
Hoff et al. teaches that it is known to provide a system with refrigerant container material comprising a paper layer (see paragraph [0033]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of Schmidt with refrigerant container material comprising a paper layer, as taught by Hoff et al., in order to provide an inexpensive, recyclable material for the container, which is also lightweight and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over FMS Korea Co. Ltd. (KR 10-2022-0080840A) in view of Green et al. (U.S. 5,609,039), as applied to claim 1 above, and further in view of Yializis et al. (U.S. 2019/0210324).
Regarding claim 33, the modified device of FMS Korea Co. Ltd. discloses the claimed invention except for the paper layer, the first and second layers being made of polyethylene and the foil layer. FMS Korea Co. Ltd. does teach a biodegradable layer with PBS or PBAT layers on either side of the biodegradable layer. Yializis et al. teaches that it is known to provide a container with the biodegradable layer being paper, the outer layers being polyethylene and a foil layer between (see figures 5 and 6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide the modified system of FMS Korea Co. Ltd. with the biodegradable layer being paper, the inner and outer layers being polyethylene and a foil layer between, as taught by Yializis et al., in order to provide protection for the paper layer and enhance the sealing qualities of the walls.
Response to Arguments
Applicant's arguments filed August 19, 2025 have been fully considered but they are not persuasive. Applicant argues that FMS Korea Co. Ltd. does not teach that the refrigerant occupies only about 85-90% of the usable volume of the container. The secondary reference of Green et al. (U.S. 5,609,039)has been added to the rejection for the teaching of only partially filling the cavity with the refrigerant. Leaving space in the cavity allows for expansion of the refrigerant due to temperature changes.
Applicant argues that FMS Korea Co. Ltd. does not teach that the first and passive control members and the first positioning device are seated directly on top of the product box. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the first and passive control members and the first positioning device are seated directly on top of the product box in claims 18-22) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding claim 23, Schmidt teaches that the container can be used without element 2, wherein 1 and 3 are directly connected. The first and second passive temperature control members would then be seated directly on top of an appropriately sized product box.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NIKI MARINA ELOSHWAY whose telephone number is (571)272-4538. The examiner can normally be reached Monday through Friday 7: 00 a.m. to 3:00 p.m..
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, Orlando E. Aviles can be reached at 571-270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NIKI M ELOSHWAY/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736