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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/25/2026 has been entered. Claims 5-6 and 10-19 remain withdrawn from consideration.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bradfield et al. (US 2014/0091003).
Regarding claim 1, Bradfield discloses a paper card packaging (at 2 in Figs. 3-4B), comprising: a paper card body (at 10/20), comprising a first half portion (at 20) and a second half portion (at 10), capable of enclosing a product after the product is positioned on the second half portion; wherein the second half portion comprises a plurality of holes (rectangular-shaped holes at the two sides of aperture 12 in Fig. 3 – See portion of Fig. 3 labeled below); wherein the plurality of holes is positioned to receive a positioning device (e.g., at 30) such that the positioning device engages the plurality of holes to define a temporary positioning structure for restricting movement of a product (e.g., product at 40/50) on the second half portion prior to being enclosed by the first half portion and the second half portion (as shown in Figs. 4A-4B); wherein the positioning device is a limiting device (limiting the movement of a product contained therein) comprising a plurality of rods (vertical portions of 30), each rod being adapted to pass through the plurality of holes respectively (as shown in Figs. 4A-4B); and wherein, when the plurality of rods pass through the respective holes, the plurality of rods protrude from the second half portion by a height that is less than a thickness of the product to be packaged (depending on the height of the product placed therein; e.g. the packaging of Bradfield is fully capable of holding a product having a thickness greater than the height of the rods).
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Regarding the intended use of the claimed invention “configured to enclose a product”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). The packaging of Bradfield is fully capable of holding a product in the manner as defined in the claims.
Regarding claim 3, Bradfield discloses the plurality of holes are arranged outside and surround a placement region (at 12) for positioning the product on the second half portion.
Regarding claim 4, Bradfield discloses one of the plurality of holes is capable of being aligned with a corresponding opening region of the product when the product is placed on the second half portion (depending on the type/shape/size of the product contained therein), and the other holes of the plurality of holes are arranged outside and surround a placement region for positioning the product on the second half portion. Regarding the intended use of the claimed invention “configured to enclose a product”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 7, Bradfield discloses the plurality of holes are rectangular.
Regarding claim 8, Bradfield discloses dimensions (e.g. length and width) of the first half portion and the second half portion are approximately the same (as shown in Fig. 4A).
Claims 1, 3-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2017/0166374).
Regarding claim 1, Wang discloses a paper card packaging (packaging shown in Fig. 9), comprising: a paper card body, comprising a first half portion (at 22) and a second half portion (at 12), configured to enclose a product after the product is positioned on the second half portion (as shown in Fig. 9 – at least a portion of the product is enclosed between 22 and 12); wherein the second half portion comprises a plurality of holes (holes at 122b in Fig. 8, that accommodate elements 50 in Fig. 9); wherein the plurality of holes is positioned to receive a positioning device (e.g., at 50) such that the positioning device engages the plurality of holes to define a temporary positioning structure for restricting movement of a product (e.g., product at 61) on the second half portion prior to being enclosed by the first half portion and the second half portion; wherein the positioning device is a limiting device (limiting the movement of a product contained therein) comprising a plurality of rods (elements 50 are elongated rods that are fed through the holes, wrapped around the product and tied together), each rod being adapted to pass through the plurality of holes respectively (as shown in Fig. 9); and wherein, when the plurality of rods pass through the respective holes, the plurality of rods protrude from the second half portion by a height that is less than a thickness of the product to be packaged (depending on the height of the product placed therein; e.g. the packaging of Wang is fully capable of holding a product having a thickness greater than the height of the rods).
Regarding the intended use of the claimed invention “configured to enclose a product”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). The packaging of Wang is fully capable of holding a product in the manner as defined in the claims.
Regarding claim 3, Wang discloses the plurality of holes are arranged outside and surround a placement region for positioning the product on the second half portion.
Regarding claim 4, Wang discloses one of the plurality of holes is capable of being aligned with a corresponding opening region of the product when the product is placed on the second half portion (depending on the type/shape/size of the product contained therein), and the other holes of the plurality of holes are arranged outside and surround a placement region for positioning the product on the second half portion. Regarding the intended use of the claimed invention “configured to enclose a product”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987).
Regarding claim 7, Wang discloses the plurality of holes are circular.
Regarding claim 8, Wang discloses dimensions (e.g. width and thickness) of the first half portion and the second half portion are approximately the same.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Bradfield et al. (US 2014/0091003) as applied to claim 1 above, in view of Hansen et al. (US 6,315,206). As described above, Bradfield discloses the claimed invention except for the weakened line. However, Hansen teaches a packaging (See Fig. 8) comprising a first half (at the left side of 26) and a second half (at the right side of 26) for accommodating a product there between, wherein the second half is provided with a weakened line (at 68a-e) which is easy to tear at the outer side of the product placement region for positioning the product, for the purpose of allowing the product to be easily removed therefrom. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the packaging of Bradfield with a weakened line as taught by Hansen in order allow for the product to be more conveniently removed.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0166374) as applied to claim 1 above, in view of Hansen et al. (US 6,315,206). As described above, Wang discloses the claimed invention except for the weakened line. However, Hansen teaches a packaging (See Fig. 8) comprising a first half (at the left side of 26) and a second half (at the right side of 26) for accommodating a product there between, wherein the second half is provided with a weakened line (at 68a-e) which is easy to tear at the outer side of the product placement region for positioning the product, for the purpose of allowing the product to be easily removed therefrom. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the packaging of Wang with a weakened line as taught by Hansen in order allow for the product to be more conveniently removed.
Response to Arguments
Applicant's arguments filed 9/25/2026 regarding the Wang reference have been fully considered but they are not persuasive.
Applicant argues that Bradfield et al. does not disclose the feature that when the plurality of rods pass through the respective holes, the plurality of rods protrude from the second half portion by a height that is less than a thickness of the product. As described in Paragraph 40, Lines 7-11 and FIG. 2A of Bradfield, the strap portion 32 of the retainer 30 encircles the narrowed section 52 of the item 50. Further, as described in Paragraph 36, Lines 1-9, the retainer 30 includes a flange portion 34 that is trapped between the front card 10 and the back card 20, such that the retainer 30 is permanently fixed within the package.
Regarding Applicant’s argument, Examiner points out that the product is not positively recited in combination with the package/positioning device in claim 1. Therefore, the manner in which the positioning device interacts with the product is only functional language/intended use. Regarding the intended use of the claimed invention “configured to enclose a product”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). The packaging of Bradfield is fully capable of holding a product in the manner as defined in the claims. When the plurality of rods (vertical portions of 30) pass through the respective holes (rectangular-shaped holes at the two sides of aperture 12 in Fig. 3 – See portion of Fig. 3 labeled above), the plurality of rods protrude from the second half portion by a height that is less than a thickness of the product to be packaged (depending on the height of the product placed therein; e.g. if the package of Bradfield is holding a product having a portion with a thickness greater than the height of the rods). Furthermore, 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 positioning device is not permanently fixed within the package) 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).
Moreover, Examiner points out that the positioning device is not positively recited in the claims. Claim 1 defines “the plurality of holes is positioned to receive a positioning device”. Regarding the intended use of the claimed invention "to receive a positioning device", it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the positioning device is not positively recited, the prior art must only be capable of receiving a positioning device in the manner set forth in the claims. The Bradfield reference is fully capable of receiving a positioning device in the manner set forth in the claims.
Applicant argues that Wang al. does not disclose the feature of claim 1 that "when the plurality of rods pass through the respective holes, the plurality of rods protrude from the second half portion by a height that is less than a thickness of the product." As described in Paragraph 35, Line 1-5, and shown in FIG. 9 of Wang, the binding member 50 passes through the holes 122 and 112 and wraps around the first article 61 and the second article 62.
Regarding Applicant’s argument, Examiner points out that the product is not positively recited in combination with the package/positioning device in claim 1. Therefore, the manner in which the positioning device interacts with the product is only functional language/intended use. Regarding the intended use of the claimed invention “configured to enclose a product”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). The packaging of Wang is fully capable of holding a product in the manner as defined in the claims. When the plurality of rods (elements 50 are elongated rods that are fed through the holes, wrapped around the product and tied together) pass through the respective holes (holes at 122b in Fig. 8, that accommodate elements 50 in Fig. 9), the plurality of rods protrude from the second half portion by a height that is less than a thickness of the product to be packaged (depending on the height of the product placed therein; e.g. if the package of Wang is holding a product having a portion with a thickness greater than the height of the rods).
Moreover, Examiner points out that the positioning device is not positively recited in the claims. Claim 1 defines “the plurality of holes is positioned to receive a positioning device”. Regarding the intended use of the claimed invention "to receive a positioning device", it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the positioning device is not positively recited, the prior art must only be capable of receiving a positioning device in the manner set forth in the claims. The Wang reference is fully capable of receiving a positioning device in the manner set forth in the claims.
With respect to the art rejections, in accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 70 USPQ2D 1827, 1834 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A REYNOLDS whose telephone number is (571)272-9959. The examiner can normally be reached M-F 9am-5pm.
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, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A. REYNOLDS/Primary Examiner, Art Unit 3735
