DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The amendment filed 11-24-2025 has been entered.
Claims 1 and 3-11 are pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The following phrases invoke 112(f): “interlocking means”, claim 5 line 2.
In claims 6, 8, and 10, the phrase “interlocking means” is modified by sufficient structure, namely the “interlocking elements”, and therefore does not invoke 112(f).
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, 4, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Von Braun et al. (US#5425163) in view of JP 2021169211 (hereinafter “JP211”).
Regarding claim 1, Von Braun discloses a funeral coffin 5 for cremation (col. 2, lines 58-59) made at least partly of a non-biodegradable polymer material, namely polyethylene (col. 3, lines 43-47), comprising: at least one bottom wall 20; a plurality of perimeter walls 10 defining, with said bottom wall, at least one internal volume 30 for the containment of at least one corpse; at least one lid 90 intended to close said internal volume at the top 40.
Regarding claim 1, Von Braun discloses the coffin is made at least partly of a non-biodegradable polymer material, namely polyethylene, as opposed to being made at least partly of a non-biodegradable biopolymer material, such as biopolyethylene. However, as evidenced by JP211, such a non-biodegradable polymer material is known in the plastic container art as JP211 teaches a laminate sheet 10 for manufacturing a container wherein layers 12 and 15 are composed of at least partly of biopolyethylene, or a combination of polyethylene and biopolyethylene, for environmental benefits. See translation, “Description-Of-Embodiments”, paragraph 10, “The total amount of the polyethylene-based resin contained in each of the first base material layers 12 and 15 may be biopolyethylene, or a fossil fuel-derived polyethylene resin and biopolyethylene may be used in combination.”. See translation, “EXAMPLE 9”, “In the above embodiment, by using a polyethylene resin derived from biomass, it is possible to reduce the amount of fossil fuel used and the environmental load by reducing CO 2, and it is possible to obtain a laminated sheet that is comparable in mechanical properties.” Likewise, Von Braun expresses in col. 3, lines 43-45, concern for the environment as “Both the cover 90 and the container 8 are manufactured from a material that produces no atmospheric polluting gases or vapors when burned.” Therefore, as evidenced by JP211, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Von Braun by replacing its polyethylene material at least partly with biopolyethylene. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art (See MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The substitution of the material being made at least partly of biopolyethylene would further protect the environment.
Regarding claim 3, Von Braun discloses at least one of said boundary walls, namely flange 60 at top 40 of the perimeter walls 10, is made “at least partly hollow” via recess/groove 50 therein.
Regarding claim 4, Von Braun discloses the container portion 8 of the coffin (including bottom wall 20 and plurality of perimeter walls 10) is made of a single monolithic body.
Regarding claim 10, Von Braun discloses an interlocking means 50,120 (being viewed and labeled as the “third interlocking means”) between said perimeter walls and said lid comprising interlocking elements 50 and 120 (being viewed and labeled as “third interlocking elements”) associated with said perimeter walls and with said lid, respectively (col. 3, lines 7-10).
Regarding claim 11, Von Braun discloses each of said perimeter walls 10 comprises at least one upper base 60 (upper edge), opposite a lower base (lower edge); said lid 90 comprises at least one lower portion 110 facing, in use, said internal volume and arranged resting on each of said upper bases; said third interlocking elements 120 and 50 being peripherally associated with said lower portion and being associated with each of said upper bases, respectively.
Claims 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over Von Braun et al. (US#5425163) in view of JP211, and further in view of De La Fuente (US#2007/0144659).
Regarding claims 5 and 6, Von Braun discloses one-piece boundary walls (i.e. perimeter walls unitary with bottom wall) as opposed to interlocking means which are associated with each of said boundary walls and are adapted to couple the latter to each other in a modular manner, specifically wherein said interlocking means comprise first interlocking means between said perimeter walls and said bottom wall comprising a plurality of first interlocking elements associated with each of said perimeter walls and with said bottom wall. However, as evidenced by De La Fuente, such a configuration is known in the analogous art, see Figs. 3-4 and a coffin made of a polymeric material ([0039]) wherein interlocking means 149,129,249,229 are associated with each of said boundary walls and are adapted to couple the latter to each other in a modular manner. Specifically, the interlocking means comprise first interlocking means between said perimeter walls 140,120 and said bottom wall 210,220 comprising a plurality of first interlocking elements 149,129 associated with each of said perimeter walls and respective interlocking elements 249,229 associated with said bottom wall.
Therefore, as evidenced by De La Fuente, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Von Braun by replacing its one-piece boundary walls with a modular construction including interlocking means associated with each of said boundary walls and adapted to couple the latter to each other in a modular manner, specifically wherein said interlocking means comprise first interlocking means between said perimeter walls and said bottom wall comprising a plurality of first interlocking elements associated with each of said perimeter walls and with said bottom wall. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art (See MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The substitution of the modular construction with interlocking means would require less storage space prior to assembly and facilitate shipping.
Regarding claim 7, Von Braun as modified above by De La Fuente meets the claim limitations as De La Fuente further teaches wherein said bottom wall 210,220 comprises at least one upper surface facing, in use, said internal volume; and that each of said perimeter walls comprises 140,120 at least one lower base (lower portion) arranged, in use, resting on said bottom wall; said first interlocking elements 249,229 being peripherally associated with said upper surface and interlocking elements 149,129 being associated with each of said lower bases (see Fig. 4).
Regarding claim 8, Von Braun discloses one-piece boundary walls (i.e. perimeter walls unitary with bottom wall) as opposed to a modular construction including second interlocking means between said perimeter walls comprising second interlocking elements associated with each of said perimeter walls. However, as evidenced by De La Fuente, such a configuration is known in the analogous art, see Figs. 3-4 and a coffin made of a polymeric material ([0039]) including an interlocking means 136,138 between said perimeter walls comprising second interlocking elements 136 and 138 associated with each of said perimeter walls.
Therefore, as evidenced by De La Fuente, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Von Braun by replacing its one-piece boundary walls with a modular construction including second interlocking means between said perimeter walls comprising second interlocking elements associated with each of said perimeter walls. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art (See MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The substitution of the modular construction with interlocking means would require less storage space prior to assembly and facilitate shipping.
Regarding claim 9, Von Braun as modified above by De La Fuente meets the claim limitations as De La Fuente further teaches that each of said perimeter walls 140,120 comprises: at least one internal face facing, in use, said internal volume; and at least one lateral edge arranged transversely with respect to said bottom wall to define, in use, the depth of said internal volume; each of said second interlocking elements 136,138 being associated with at least one of either said internal face or said lateral edge (see Fig. 4).
Response to Arguments
Regarding the applied Wikipedia reference in the previous Office action, the applicant argues the following:
“The Wikipedia document shows a publication date of March 28, 2023. However, the present application has an international filing date of January 13, 2023 and moreover claims the benefit of priority of the Italian Patent Application No. 102022000000911, dated January 20, 2022.
Therefore, the Wikipedia reference is not a "printed publication" within the meaning of 35 U.S.C. S 102(a) (1) with respect to the pending claims. As the Office Action's entire obviousness rationale for modifying Von Braun relies on the teachings of Wikipedia, the rejection is legally unsupported and must be withdrawn.”
The above argument is inaccurate as the date of March 28, 2023 is not the publication date of the Wikipedia document, but rather the retrieval date of the Wikipedia document from the Internet as explicitly stated on page 1 of the PCT/ISA/210 document. The publication date of the Wikipedia document is undetermined. A new ground(s) of rejection is presented above and the instant Office action has been made non-final.
Regarding claims 5-9, the applicant argues the following:
“There would have been no apparent reason to discard Von Braun's simple, elegant, one-piece nestable design and replace it with the significantly more complex, multi-part, assembly-required modular design of De La Fuente. Doing so would increase manufacturing costs, introduce numerous potential points of failure at the joints, and require time and labor for assembly. The simplicity of Von Braun's design teaches away from the complexity of De La Fuente's. The proposed combination is therefore based on hindsight, not on any motivation found in the prior art. As the combination is improper, claims 5-9 are believed unobvious over the applied prior art.“
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the examiner provides a clear statement of motivation, namely the substitution of the modular construction with interlocking means would require less storage space prior to assembly and facilitate shipping. This motivation is explicitly found in paragraph [0063] of the teaching reference of De La Fuente (US#2007/0144659) as the modular form of the coffin can be efficiently packaged as a kit in compact form for shipment or storage until partial or full assembly is desired. The modular form minimizes the storage volume required by a disassembled coffin and facilitates the disassembled modular coffin being placed into a shipping container to protect the coffin from damage during shipment. One of ordinary skill in the art would consider the above teachings of De La Fuente in an effort to improve the funeral coffin of Von Braun.
The applicant argues the following:
“Furthermore, the claimed subject matter achieves unexpected and surprising results, which is a strong "secondary" consideration of non-obviousness. As supported by the disclosure and Figure 5, the use of bio-polyethylene results in a massive shift in the carbon lifecycle. A traditional 24kg polyethylene coffin results in the emission of 44 kg of CO2. In stark contrast, the claimed coffin results in the net absorption of 74.16 kg of CO2. This is a change of over 118 kg of CO2 per coffin. This is not a predictable result; it is a qualitative change from a net-positive emitter to a net-negative sequesterer of greenhouse gases. This powerful and unexpected technical effect strongly rebuts any prima facie case of obviousness.”
The applicant has not filed an affidavit or declaration under 37 CFR 1.132 to substantiate arguments of unexpected results. In any event, the “secondary” consideration based upon unexpected results is insufficient for at least the following reason: It refers only to the system described in the instant application and not to the individual claims of the application. As such the “secondary” consideration does not show that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716. For example, the claim language of claim 1 only requires the coffin be made in part of a biopolymer material such as bio-polyethylene.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
WO 2021029372 and JP 2021176648 each establish biopolyethylene was a known material prior to the effective filing date of 01-20-2022 of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM L MILLER whose telephone number is (571)272-7068. The examiner can normally be reached 9:30 - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677