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 .
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 16/023,236 and 17/729,621. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a mailer with a flap closing the mailer and a releasable tape.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,737,842. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a mailer with a flap closing the mailer and a releasable tape.
Claims 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 11,312,540. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a mailer with a flap closing the mailer attached to a side panel and a releasable tape.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,011,394. Although the claims at issue are not identical, they are not patentably distinct from each other because they disclose a mailer with a flap closing the mailer and a releasable tape.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first side extension including a second tape layer releasably secured to an outer surface thereof opposite the inner surface, wherein at least a portion of the flap is secured to both the tape layer and the second tape layer to further secure the carrying volume for mailing; and the flap including: a second tape layer releasably secured to an outer surface of the flap opposite an inner surface of the flap securable to the tape layer, wherein the first side extension is secured directly to the flap to further secure the carrying volume for mailing. must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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(s) 1, 4, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Avery (US 2,303,296) in view of Locke (US 3,199,765) and Grossman (US 2012/0189228).
Regarding claim 1, Avery discloses a reusable mailer bag, comprising: a front panel, a rear panel, a side panel, and a bottom panel that include interior surfaces defining a carrying volume having an opening, wherein the side panel extend from the bottom panel to the opening to define a recessed portion (Fig. 5) between the front and rear panels; a flap positionable between the front and rear panels across the opening to close the carrying volume; and a first side extension extending from the flap adjacent to the side panel, the first side extension configured to extend around the side panel and secure directly to the rear panel. See Figs. 1-5. Avery does not disclose side panels that taper or a completely removable flap.
Locke, which is drawn to a mailer, discloses side panels (21) that taper, such that a top portion of the front and rear panels extends farther outwardly from the side panel than a bottom portion of the side panel. See Figs. 1 and 4. Thus, it 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 to have the side panels of Avery taper as disclosed by Locke in order to accommodate and protect certain items within the mailer.
Avery does not disclose the flap as claimed. Grossman discloses a flap capable of being configured to be completely removed (at 30) from the mailer bag after shipping. See Fig. 1. Thus, it 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 to completely remove the flap of Avery, as disclosed by Grossman, in order to facilitate the opening of the mailer.
Regarding claim 4, Avery does not disclose handles. Grossman, which is drawn to a mailer, disclose a pair of handles (24) attached to the interior surfaces of front and rear panels, the pair of handles configured to be positioned entirely within a carrying volume during shipping and configured to extend out of the opening for transport. See Figs. 1-4. Thus, it 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 to use handles in Avery, as disclosed by Grossman, in order to facilitate transport of the mailer if desired.
Regarding claim 16, the side panel includes a first side panel and a second side panel, the second side extension configured to extend around the second side panel and secure to the rear panel. See Figs. 1-5.
Regarding claim 20, Avery, as modified above, discloses a reusable mailer bag comprising: a front panel, a rear panel, a side panel, and a bottom panel that define a carrying volume having an opening, wherein the side panel includes a recessed portion adjacent the opening such that the side panel is spaced apart from side edges of the front and rear panels adjacent the opening to reduce a length of the opening, wherein a top edge of the side panel is attached to the front and rear panels, wherein top portions of the front and rear panels extend farther outwardly from the side panel than a bottom portion of the side panel, and a bottom edge of the side panel is attached to each of the front and rear panels along a side edge of the bottom panel so that the side panel is slanted from the opening to the bottom panel; and a flap configured to extend across the opening to close the carrying volume, the flap capable of being configured to be completely removed from the mailer bag after shipping.
Claim(s) 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke and Grossman as applied above in further view of Masters (US 4,421,150) and Doderer-Winkler (US 5,429,576).
Regarding claims 2 and 3, Avery does not disclose a releasable tape on the rear panel. Masters discloses a tape (26) on a rear panel, a first side extension (24) configured to secure to the tape layer (26) to secure directly to the rear panel. See Fig. 1. Also, Doderer-Winkler, which is drawn to a bag, discloses using a releasable tape layer (32). See Fig. 1. Thus, it 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 to use a releasable tape, as disclosed by Doderer-Winkler, on the rear of Avery, as disclosed by Masters, in order to reclose/reuse the bag, while also protecting the panels of the bag.
Claim(s) 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke, and Grossman as applied above in further view of Doderer-Winkler (US 5,429,576).
Regarding claims 6 and 7, Avery does not disclose a releasable tape on the front panel. Doderer-Winkler, which is drawn to a bag, discloses using a releasable tape layer (32) on a front panel, wherein a portion of the flap is securable to the tape layer. See Fig. 1. Thus, it 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 to use a releasable tape, as disclosed by Doderer-Winkler, on the front of Avery in order to reclose/reuse the bag, while also protecting the panels of the bag.
Regarding claim 8, as modified above, the tape layer can be removable from the front panel to detach the flap from the front panel.
Regarding claim 9, as modified above, the flap includes an adhesive layer (9), the adhesive layer configured to adhere to the tape layer of the front panel to secure the flap to the front panel.
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke, Grossman and Doderer-Winkler as applied above in further view of Raming (US 7,891,490).
Regarding claim 10, Avery discloses a tape layer (10 or 12) configured to receive a shipping label, but Avery does not necessarily disclose a releasable tape layer. See Figs. 1-3. Raming, which is drawn to a bag, discloses the common element of a releasable tape layer (88 or 18) that receives a shipping label (12). See Figs. 1-5. Thus, it 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 to use a releasable tape layer for the shipping label, as disclosed by Raming, on the bag of Avery in order to remove and replace a variety of information.
Regarding claim 11, Avery does not disclose a hidden surface. Raming discloses the front panel further including a hidden surface (18) disposed under the first tape layer, the first tape layer removable to reveal the hidden surface, the hidden surface selected from the group consisting of a promotional code, an advertisement, and a writable surface. See Fig. 5. Thus, it 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 to use a hidden surface, as disclosed by Raming, on the mailer of Avery in order to utilize the surface to convey a message to a user.
Claim(s) 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke, and Grossman as applied above in further view of Sauer (US 8,590,774).
Regarding claims 12 and 13, Avery does not disclose the flap as claimed. Sauer, which is drawn to a mailer, discloses a flap (130) that includes a first and second tear strip (top and bottom of 601) configured to detach the flap from the rear and front panels. See Fig. 6. Thus, it 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 to use first and second tear strips, as disclosed by Sauer, in order to open the mailer and provide an indication that the mailer has been opened.
Claim(s) 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke, Grossman, Sauer as applied above in further view of Addiego (US 4,818,120).
Regarding claim 14, Avery does not disclose a third tear strip. Addiego, which is drawn to a mailer, discloses a flap that includes a third tear strip (62) to detach a first side extension from a second end portion. See Figs. 1-2. Thus, it 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 to use a third tear strip on the flap of Avery, as disclosed by Addiego, in order to facilitate the opening the device by having more areas to tear the flap.
Regarding claim 15, as modified above, the first, second, and third tear strips form a continuous tear strip.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke and Grossman as applied above in further view of Wood (US 2010/0155279).
Regarding claim 17, Avery, as modified above, discloses a reusable mailer bag comprising: a front panel, a rear panel, a side panel, and a bottom panel that define a carrying volume having an opening, wherein the side panel is disposed at an acute angle relative to the bottom panel so that a top portion of the side panel is recessed from a side edge of the front panel and a side edge of the rear panel, and wherein a top portion of the front and rear panels extend farther outwardly from the side panel than a bottom portion of the side panel, and a bottom portion of the side panel is coupled to a side edge of the bottom panel, to the side edge of the front panel, and to the side edge of the rear panel; a flap configured to extend across the opening to close the carrying volume, the flap capable of being configured to be completely removed (at 30) from the mailer bag after shipping; and a first side extension extending from a first edge of the flap. See Above.
Wood, which is drawn to a container, discloses a first side extension configured to secure directly to a side panel. See Figs. 1-5. Thus, it 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 to have the side extension of Avery secure to a side panel, as disclosed by Wood, in order to accommodate various sized items.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Avery, Locke, Grossman, and Doderer-Winkler (US 5,429,576) as applied above in further view of Masters (US 4,421,150).
Regarding claim 21, Avery, as modified above, sufficiently discloses the claimed invention except for a second tape layer. Masters discloses a second tape layer (26) secured to a rear panel adjacent a top edge and a first upper corner of the rear panel; and a third tape layer (other 26) releasably secured to the rear panel adjacent the top edge and a second upper corner opposite the first upper corner of the rear panel. See Fig. 1. Thus, it 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 to have a second and third tape, as disclosed by Masters, on the mailer of Avery in order to better secure the mailer in closed position.
Response to Arguments
Applicant's arguments filed 7/25/2025 have been fully considered but they are not persuasive. Applicant argues that Grossman does not disclose the flap configured to be completely removed from the bag after shipping. The claim language as currently written is considered functional language. As such, it is the Office’s position that Grossman discloses a flap that is capable of being removed as claimed.
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 DEREK J BATTISTI whose telephone number is (571)270-5709. The examiner can normally be reached 9:00 am - 5:00 pm M-F.
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/DEREK J BATTISTI/Primary Examiner, Art Unit 3734