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 .
Election/Restrictions
Applicant’s election without traverse of Species 3, Figures 11-15 in the reply filed on 5/21/2026 is acknowledged.
No claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/21/2026.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,012,274. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,781,028. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of U.S. Patent No. 11,407,579. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,685,589. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-33 of U.S. Patent No. 10,384,855. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,143,282. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,029,842. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include essentially the same structural elements as the patented claims with only minor variations in verbiage and level of detail; except the patented claims do not expressly disclose the particular thermal conductivity of the insulation materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to have the specific thermal conductivity as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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.
Claim(s) 1-3, 7, 14-16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al. (US 2009/0184143, hereinafter ‘Witt’).
Witt discloses an insulating device, comprising: an outer shell (para 0002 weatherproof material); an inner liner forming a storage compartment (para 0027 surface material); an insulating closed cell foam layer (para 0027) positioned in between the outer shell and the inner liner; an opening configured to allow access to the storage compartment (see Fig. 2); and a closure configured to seal the opening (102), except does not expressly disclose the specific thermal conductivity of the materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to gain between 0.5 and 1.5 0F/hr from 0 °F to 50 °F while the insulating device is in an approximately 100 °F ambient environment and the opening is sealed by the closure, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to use materials which configure the storage compartment to gain between 0.5 and 1.5 0F/hr from 0 °F to 50 °F while the insulating device is in an approximately 100 °F ambient environment and the opening is sealed by the closure, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Witt as modified above further discloses a plurality of loops (131, 132) coupled to the outer shell; at least two carry handles (left side 112, 122) affixed to the outer shell; and the closure is secured in a sealed position via a metal or plastic clamp (136).
Witt discloses an insulating device, comprising: an outer shell (para 0002 weatherproof material); an inner liner forming a storage compartment (para 0027 surface material); an insulating closed cell foam layer (para 0027) positioned in between the outer shell and the inner liner; an opening configured to allow access to the storage compartment (see Fig. 2); and a closure configured to seal the opening (102), and wherein the insulating closed cell foam layer covers greater than 80% of the inner liner (of the insulated compartment) except does not expressly disclose the specific thermal conductivity of the materials as claimed.
However, it is noted that varying the insulative ability of the material used for constructing a cooler device has long been within the general knowledge of those having ordinary skill in the art since prior to the invention by applicant.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the Witt device wherein the insulating closed cell foam layer has a thermal conductivity between 0.16-0.32 BTU- in/(hr-sqft-°F.), wherein the insulating closed cell foam layer has a thermal conductivity between 0.9 and 5 lbs/ ft3, 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
It further would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the Witt device wherein the insulating closed cell foam layer has a thermal conductivity between 0.16-0.32 BTU- in/(hr-sqft-°F.), wherein the insulating closed cell foam layer has a thermal conductivity between 0.9 and 5 lbs/ ft3, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 4 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al. (US 2009/0184143, hereinafter ‘Witt’) as applied to claims 1-3, 7, 14-16, and 20 above, and further in view of Harris et al. (US 6336577, hereinafter ‘Harris’).
Witt as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the closure comprising a zipper as claimed.
However, Harris teaches a similar device wherein the top flap closure comprises a zipper (52) as claimed.
Because Witt as modified above and Harris both teach closure mechanisms for the opening of a backpack cooler, it would have been obvious to one of ordinary skill in the art to substitute the zipper closure taught by Harris for the buckle closure taught by Witt as modified above to achieve the predictable result of securely closing the flap of the backpack.
Claim(s) 5-6, 8-13, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Witt et al. (US 2009/0184143, hereinafter ‘Witt’) as applied to claims 1-3, 7, 14-16, and 20 above, and further in view of Collie (US Des. 397,273).
Witt as modified above discloses all limitations of the claim(s) as detailed above except does not expressly disclose the closure comprising a roll-down seal as claimed.
However, Collie is one of myriad references teaching using a roll-down seal secured in a sealed position via a clamp to close the opening of a backpack (see Figs. 1-8), Collie specifically teaching its use on a backpack cooler.
Because Witt as modified above and Collie both teach closure mechanisms for the opening of a backpack cooler, it would have been obvious to one of ordinary skill in the art to substitute the clamped roll-down seal closure taught by Collie for the buckle closure taught by Witt as modified above to achieve the predictable result of securely closing the flap of the backpack.
Witt as modified above further results in a device wherein the plurality of loops are capable of attachment of items (functional/intended use recitation); and a shoulder strap removably connected to the outer shell (right side 112).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER N HELVEY/Primary Examiner, Art Unit 3734
July 9, 2026
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