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
Claims 10-12 and 27-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/06/2026.
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) 1-6, 8-9, 13, and 16-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pitts (US 2001/0028561) which in figures 1 and 2 disclose the following claimed limitations:
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In re claim 1: First-aid case (100), characterized in that at least one partial area of the first-aid case (100) contains a luminescent material ([0019]) (see figures 1 and 2 of Pitts). Pitts favors chemiluminescent materials, however further discloses a plurality of prior art references which use phosphorescent materials ([0007]-[0011]) With this in mind, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the chemiluminescent material with the a phosphorescent material for any desired benefit such cost or strength of illumination or duration of illumination. As to the desirability of the modification, the proper inquiry is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004). In this case the fact that phosphorescent materials are not desired by the inventor over chemiluminescent materials doesn’t take away from what the prior art teaches as a whole to one of ordinary skill in the art (i.e. that if phosphorescent materials are used, they may not have as long of a duration of illumination as a chemiluminescent material).
In re claim 2: the first-aid case (100) has two case shells (110/130) and the partial regions which contain the phosphorescent material are attachments which can be attached to the case shells (110/130) (see figures 1 and 2 of Pitts).
In re claim 3: the attachable add-on parts are selected from at least one of the following elements: Handle, component of the handle, in particular insert part, fastener, component of the fastener, in particular actuating element, stack centering device, and decorative strip (see figures 1 and 2 of Pitts).
In re claim 4: the handle (120) and/or a case shell (110/130) contains or contain phosphorescent material ([0019]) (see figures 1 and 2 of Pitts).
In re claim 5: the phosphorescent material has an afterglow duration of at least 1 h (the phosphorescent material disclosed by Pitts inherently have the properties to glow bright immediately and slowly dim over a long period of time).
In re claim 6: the mass fraction of the phosphorescent material in the partial regions or the case shell (110/130) is at least 10% (see figures 1-16 of Pitts).
In re claim 8: the first-aid case (100) is filled with at least one of: plasters and dressing material, disposable gloves, first aid scissors and tweezers, hygienic face mask, hygienic clothing, emergency showers and eyewash, disinfectants and dispensers, defibrillators and accessories, and respiratory masks (see figure 2 of Pitts).
In re claim 9: at least partial surface regions are metallized (see [0019] of Pitts).
In re claim 13: A first aid case (100), characterized in that at least one section of the first aid case (100) contains a luminescent material ([0019]) (see figures 1 and 2 of Pitts), wherein the luminescent material has been applied to an outer surface of the first aid case (100) in one layer as part of a hot stamping process (see [0011], [0051]-[0052] of Pitts).
a luminescent material ([0019]) (see figures 1 and 2 of Pitts). Pitts favors chemiluminescent materials, however further discloses a plurality of prior art references which use phosphorescent materials ([0007]-[0011]) With this in mind, it would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to replace the chemiluminescent material with the a phosphorescent material for any desired benefit such cost or strength of illumination or duration of illumination. As to the desirability of the modification, the proper inquiry is “whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,’ not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.” In re Fulton, 391 F.3d 1195, 73 USPQ2d 1141 (Fed. Cir. 2004). In this case the fact that phosphorescent materials are not desired by the inventor over chemiluminescent materials doesn’t take away from what the prior art teaches as a whole to one of ordinary skill in the art (i.e. that if phosphorescent materials are used, they may not have as long of a duration of illumination as a chemiluminescent material).
Furthermore, the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above)
In re claim 16: the phosphorescent material is provided in one layer, which also contains a protective coating and/or a colored coating (see [0011] and [0051] of Pitts).
In re claim 17: a further layer, also applied in the hot stamping process, between the layer containing the phosphorescent material and the outer surface, wherein the further layer is transparent or comprises a white coating (see [0011] and [0051] of Pitts).
In re claim 18: the layer containing the phosphorescent material provides decoration and/or information, in particular in the form of lettering and/or at least one symbol (see [0052] of Pitts).
In re claim 19: the first aid case (100) comprises two case shells (110/130) and the outer surface is provided on an outer wall of one case shell (110/130) (see figures 1 and 2 of Pitts).
In re claim 20: the first aid case (100) comprises two case shells (110/130) and bodies are add-on parts which can be affixed to the case shells (110/130) in the form of sections which contain the phosphorescent material (see figures 1 and 2 of Pitts).
In re claim 21: the add-on parts that can be affixed are selected at least from one of the following elements: handle (20), component of the handle (20), in particular insert part (30), closure (40), component of the closure (40), in particular actuating element, stacking centering apparatus (50), and decorative strip (see figures 1 and 2 of Pitts).
In re claim 22: the handle (120) and/or a case shell (110/130) contains or contain phosphorescent material ([0019]) (see figures 1 and 2 of Pitts).
In re claim 23: the phosphorescent material has an afterglow duration of at least 1 h (the phosphorescent material disclosed by Pitts inherently have the properties to glow bright immediately and slowly dim over a long period of time).
In re claim 24: at least one body of the first aid case (100) consists of a material that contains phosphorescent material, wherein the mass fraction of the phosphorescent material in the partial regions or the case shell (110/130) is at least 10% (see figures 1-16 of Pitts).
In re claim 25: the first aid case (100) is filled with at least one of: plasters and dressings, disposable gloves, first aid scissors and tweezers, hygienic face masks, hygienic clothing, emergency showers and eyewash kits, disinfectants and dispensers therefor,-defibrillators and accessories, and respiratory masks (see figure 2 of Pitts).
In re claim 26: at least one surface section is metal-coated (see [0019] of Pitts).
Claim(s) 7 and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pitts (US 2001/0028561) in view Gardner (US 2020/00115563). Pitts discloses the claimed invention as discussed above with the exception of the following claimed limitations that are taught by Gardner:
In re claim 7: the phosphorescent material is a pigment containing particles of SrAl204:Eu, Dy (see [0017] ofGardner).
In re claim 14: the phosphorescent material is provided in the form of a pigment which contains particles of SrAl204:Eu, Dy (see [0017] ofGardner).
In re claim 15: the layer containing the phosphorescent material has a layer thickness of between 5 and 15 g/m2 (see [0017] ofGardner).
Itwould have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the phosphorescent material of Pitts with particles of SrAl204:Eu as taught by Gardner in order to increase the glow in the dark properties (see [0017] ofGardner).
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered, This action is Non-Final. Regarding the applied prior art a claimed invention is unpatentable if the differences between it and the prior art are "such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art." 35 U.S.C. § 103(a) (2000); In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334 (Fed. Cir. 2006) (citing Graham v. John Deere Co., 383 U.S. 1, 13-14, 148 USPQ 459, 464-65 (1966)). The Federal Circuit has repeatedly recognized that to establish a prima facie case of obviousness, the references being combined do not need to explicitly suggest combining their teachings. See e.g., Kahn, 441 F.3d at 987-88, 78 USPQ2d at 1336 ("the teaching, motivation, or suggestion may be implicit from the prior art as a whole, rather than expressly stated in the references"); and In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed. Cir. 1988) ("for the purpose of combining references, those references need not explicitly suggest combining teachings").
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO A GRANO whose telephone number is (571)270-3927. The examiner can normally be reached M-F 7:00-3:30 EST.
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/ERNESTO A GRANO/ Primary Examiner, Art Unit 3735
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