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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/24/2024 is being considered by the examiner.
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 “lower top member” and the “lower bottom member” of the lower perimeter; and the “upper top member” and the “upper bottom member” of the upper perimeter, as recited in claims 2 and 11 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 Objections
Claim 14 is objected to because of the following informalities: In line 5, applicant recites “a bottom portion diameter than is greater than the opening diameter” which should be change to –a bottom portion diameter that is greater than the opening diameter”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2 and 11-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claims 2 and 11, structural recited features of recited limitations of the “lower top member” and the “lower bottom member” of the lower perimeter; and the “upper top member” and the “upper bottom member” of the upper perimeter raises written description issues because it is unclear from the specification to which features from the invention applicant is referring. Nowhere in the specification is described the mentioned features in such a way an ordinary skill in the art would understand the invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 11-15 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 2, the claim is indefinite because the metes and bounds of the claim are indefinite. In the preamble of claim 1, transitional phrase “consisting of” is a closed transitional phrase. See MPEP 2111.03 II. Claim 1, only recite “a lower support”, “a grid plate”, and “plurality of pegs” as the structure for the insert, excluding any other structure that could be disclosed. Further, claim 2 add an additional structure of “an upper perimeter” which is an additional structure from the structure recited in claim 1.
Regarding claims 2 and 11, recited limitations of the “lower top member” and the “lower bottom member” of the lower perimeter; and the “upper top member” and the “upper bottom member” of the upper perimeter are indefinite because it is unclear to which structure applicant is referring. Nowhere in the Written Description any of the mentioned structures are disclosed. It is unclear to which structural feature from the invention applicant is referring.
Claims 12-13 are also rejected under 112(b) due to their dependency to rejected claim 11 above
Regarding to claim 14, applicant recites “a negative space” which is not clear whether applicant is referring to the same “a negative space” in claim 5 or a different negative space. Correction is required.
Regarding to claim 15, applicant recites “the pegs” which is not clear whether applicant is referring to “the pegs” as claimed in claim 5 or “the step pegs” as claimed in in claim 14. For the purpose of examination, examiner presumes that applicant is referring “the pegs” in claim 5. Correction is required.
Regarding to claim 20, applicant recites “the width is less than the top portion diameter and greater than the bottom portion diameter” which limitation is not correct and confuse by the examiner. In claim 14, applicant already recites “the bottom portion has a bottom portion diameter that is greater than the opening diameter of the grid plate opening”. Therefore, applicant’s claim limitation claim 20 is contradict to the limitation of claim 14. Furthermore, if the top portion diameter of the stepped pegs are greater than the width of the opening, the top portion cannot be insert into the opening and the bottom portion diameter would have inverted step which the grid plate cannot be support by the step. Correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 13 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13 is depended on claim 12 that depends on claim 11. Claim 11 already claiming the same limitation in its lines 1-4 in comparison with claim 13, which failing to further limit the claimed subject matter to claim 11. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-2, 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hung (US 2005/0023164) in view of Eberbach (US 10,351,287).
As to claim 1, Hung discloses an insert capable of protecting a valuable/fragile item in a case, consisting of a lower support (defined by bottom portion of box 1), a grid plate (11), and a plurality of pegs (2), wherein the grid plate has a lattice that defines a plurality of openings (111), wherein each of the plurality of openings has an opening width, wherein the plurality of pegs fit within the plurality of openings, wherein each of the plurality of pegs has a peg width (defined by width of expansion heads 21 and 22), , wherein the grid plate is located above the lower support such that a negative space (defined by space underneath plate 11) is created below the grid plate, wherein an object (4) is pressed into the plurality of pegs, resulting in some depressed pegs being depressed into the negative space and some original pegs remaining in an upright position, wherein the object is secured on an object bottom by the depressed pegs and secured on an object side by the original pegs (see figure 3). However, Hung does not specifically disclose that the peg width is slightly larger than the opening width, such that each of the plurality of pegs is frictionally but movably secured in each opening. Nevertheless, Eberbach discloses a discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), the pegs comprises a width that is slightly larger than the opening width of the openings such that each of the plurality of pegs is frictionally bur movably secured in each opening (column 1, lines 35-39). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hung with the opening have equal or slightly smaller than a diameter of its corresponding support pin/peg as taught by Eberbach in order to maintain the pin/peg inside the opening with friction to prevent the movement of the peg affect by gravity.
As to claim 5, Hung as modified discloses an insert capable of protecting a valuable/fragile item in a case, comprising a lower support (1), a grid plate (11), and a plurality of pegs (2), wherein the grid plate has a lattice that defines a plurality of openings (111), wherein each of the plurality of openings has an opening width, wherein the plurality of pegs fit within the plurality of openings, wherein each of the plurality of pegs has a peg width (defined by width of expansion heads 21 and 22), , wherein the grid plate is located above the lower support such that a negative space (defined by space underneath plate 11) is created below the grid plate (see figure 3). However, Hung does not specifically disclose that the peg width is slightly larger than the opening width, such that each of the plurality of pegs is frictionally but movably secured in each opening. Nevertheless, Eberbach discloses a discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), the pegs comprises a width that is slightly larger than the opening width of the openings such that each of the plurality of pegs is frictionally bur movably secured in each opening (column 1, lines 35-39). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hung with the opening have equal or slightly smaller than a diameter of its corresponding support pin/peg as taught by Eberbach in order to maintain the pin/peg inside the opening with friction to prevent the movement of the peg affect by gravity.
As to claim 6, Hung further discloses an object (4) is pressed into the plurality of pegs, resulting in some depressed pegs being depressed into the negative space and some original pegs remaining in an upright position, wherein the object is secured on an object bottom by the depressed pegs and secured on an object side by the original pegs (see figure 3).
As to claims 7-8, Hung does not disclose the material the pegs and the grid plate are made. However, Eberbach discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), and wherein the grid plate and pins are made of foam material (see column 6 lines 36-51). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hung having the grid plate and the pegs made of foam material as taught by Eberbach because foam material is known to be used as a material providing proper cushioning and protection to objects.
As to claims 9-10, Hung further discloses the pegs are round pegs. Hung discloses the pegs could either be circular or any polygonal shape (see figure 3 and [0019]). It is assumed if the holes in the lattice are the same shape of the pegs. From the argument the holes could have different shape from the pegs, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hung having the holes in the lattice the same shape as the pegs, either circular or any polygonal, i.e. squared, since it is a matter of design choice the shape of the pegs and the holes of the lattice because it would perform the function of cushioning and/or supporting the article disposed over the pegs equally well.
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As to claims 2 and 11, Hung as modified further discloses the lower support is a lower perimeter wherein the lower perimeter has a lower top member, two lower side members, and a lower bottom member, which define a lower space and wherein the lower space is bounded on four sides by the lower perimeter, and additionally comprising an upper perimeter, wherein the upper perimeter has an upper top member, two upper side members, and an upper bottom member, which define an upper space wherein the grid plate is located above the lower support and below the upper perimeter (as shown in above annotation).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hung (US 2005/0023164) in view of Eberbach (US 10,351,287), further in view of Sloop (4,733,806).
As to claim 12, Hung as modified further discloses the upper perimeter adds protection to the plurality of pegs, but does not disclose the lower perimeter and the upper perimeter are made from foam, wherein the insert is inserted into a case,
wherein the case has a case bottom and a case top , wherein the case top comprises a case top foam, wherein the case top foam secures the object from a top direction when the case top is closed upon the case bottom.
Eberbach discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), and wherein the grid plate and pins are made of foam material (see column 6 lines 36-51). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hung with the lower and upper perimeter made from foam material as taught by Eberbach because foam material is known to be used as a material providing proper cushioning and protection to objects.
Sloop further discloses a case (10), wherein the case has a case bottom (16) and a case top (18), wherein the case top (18) comprises a case top foam (84), the case bottom comprises pegged insert ( Figure 5) wherein the case top foam secures the object from a top direction when the case top is closed upon the case bottom (Figure 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the insert of Hung to place within a case as taught by Sloop to use to stabilized the material inside the case.
As to claim 13, Hung as modified further discloses the lower support is a lower perimeter wherein the lower perimeter has a lower top member, two lower side members, and a lower bottom member, which define a lower space and wherein the lower space is bounded on four sides by the lower perimeter.
Claims 1 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Busenitz (11,753,229) in view of Eberbach (US 10,351,287).
As to claims 1 and 5-6, Busenitz discloses an insert (14) capable of protecting a valuable/fragile item in a case (10), consisting of a lower support (52), a grid plate (50 or 48), and a plurality of pegs (44), wherein the grid plate has a lattice that defines a plurality of openings (56), wherein each of the plurality of openings has an opening width, wherein the plurality of pegs fit within the plurality of openings, wherein each of the plurality of pegs has a peg width, wherein the grid plate is located above the lower support such that a negative space (defined by space underneath plate 42 and between plate 48 and plate 46) is created below the grid plate (48), wherein an object (100) is pressed into the plurality of pegs, resulting in some depressed pegs being depressed into the negative space and some original pegs remaining in an upright position, wherein the object is secured on an object bottom by the depressed pegs and secured on an object side by the original pegs (see figure 3). However, Busenitz does not specifically disclose that the peg width is slightly larger than the opening width, such that each of the plurality of pegs is frictionally but movably secured in each opening. Nevertheless, Eberbach discloses a discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), the pegs comprises a width that is slightly larger than the opening width of the openings such that each of the plurality of pegs is frictionally bur movably secured in each opening (column 1, lines 35-39). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Busenitz with the opening have equal or slightly smaller than a diameter of its corresponding support pin/peg as taught by Eberbach in order to maintain the pin/peg inside the opening with friction to prevent the movement of the peg affect by gravity and without the need of additional securement plate 42 to secure the pin in place.
As to claim 7, Busenitz does not disclose the material the pegs are made of a substance selected from the group consisting of foam, plastic and rubber. However, Eberbach discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), and wherein the grid plate and pins are made of foam material (see column 6 lines 36-51). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Busenitz having the grid plate and the pegs made of foam material as taught by Eberbach because foam material is known to be used as a material providing proper cushioning and protection to objects.
Claims 3-4, 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over Busenitz (11,753,229) in view of Eberbach (US 10,351,287), further in view of Kleyman et al (7,654,021).
As to claim 3, Busenitz does not disclose the lower support is a plurality of stepped pegs, where each of the stepped pegs has a bottom portion, a top portion, and a step, where the top portion has a top portion diameter, where the top portion diameter is less than the opening diameter of a grid plate opening, where the bottom portion has a bottom portion diameter than is greater than the opening diameter of the grid plate opening, wherein the bottom portion transition to the top portion at a step, where the grid plate rest upon the step. Nevertheless, Kleyman discloses an image retainer with a grid plate (22) with plurality of pegs (14), and a lower support (42), the lower support (42)is a plurality of stepped pegs (42, Figure 8), where each of the stepped pegs has a bottom portion (middle larger portion), a top portion (upper smaller portion) , and a step (step between the middle larger portion and the upper smaller portion), where the top portion has a top portion diameter, where the top portion diameter is less than the opening diameter of a grid plate opening, where the bottom portion has a bottom portion diameter than is greater than the opening diameter of the grid plate opening (Figure 8), wherein the bottom portion transition to the top portion at a step, where the grid plate rest upon the step (Figure 8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lower support of Busenitz with step support having smaller diameter top portion insert to an opening as taught by Kleyman to prevent misalign of the fastener when supporting the structure.
As to claim 4, Busenitz as modified further discloses the openings are circular, and have a circular opening diameter, and wherein the circular opening diameter is larger than the top portion diameter and smaller than the bottom portion diameter, such that the grid plate rests on the step (Figure 8 of Kleyman).
As to claim 14, Busenitz does not disclose the lower support is a plurality of stepped pegs, where each of the stepped pegs has a bottom portion, a top portion, and a step, where the top portion has a top portion diameter, where the top portion diameter is less than the opening diameter of a grid plate opening, where the bottom portion has a bottom portion diameter than is greater than the opening diameter of the grid plate opening, wherein the bottom portion transition to the top portion at a step, where the grid plate rest upon the step, wherein the grid plate rests upon a plurality of stepped pegs, thereby creating a negative space below the grid plate. Nevertheless, Kleyman discloses an image retainer with a grid plate (22) with plurality of pegs (14), and a lower support (42), the lower support (42) is a plurality of stepped pegs (42, Figure 8), where each of the stepped pegs has a bottom portion (middle larger portion), a top portion (upper smaller portion) , and a step (step between the middle larger portion and the upper smaller portion), where the top portion has a top portion diameter, where the top portion diameter is less than the opening diameter of a grid plate opening, where the bottom portion has a bottom portion diameter than is greater than the opening diameter of the grid plate opening (Figure 8), wherein the bottom portion transition to the top portion at a step, where the grid plate rest upon the step (Figure 8), and the grid plate rests upon a plurality of stepped pegs. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the lower support of Busenitz with step support having smaller diameter top portion insert to an opening as taught by Kleyman to prevent misalign of the fastener when supporting the structure.
As to claim 15, Busenitz does not disclose the material the pegs are made of a substance selected from the group consisting of foam, plastic and rubber. However, Eberbach discloses an insert for cushioning an object, the insert comprises a grid plate (10) with pins/pegs (14) inserted into holes of the grid plate (see column 4 lines 45-49), and wherein the grid plate and pins are made of foam material (see column 6 lines 36-51). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Busenitz having the grid plate and the pegs made of foam material as taught by Eberbach because foam material is known to be used as a material providing proper cushioning and protection to objects.
As to claim 16, Busenitz as modified further discloses the openings are circular, and have a circular opening diameter, and wherein the circular opening diameter is larger than the top portion diameter and smaller than the bottom portion diameter, such that the grid plate rests on the step (Figure 8 of Kleyman).
As to claims 17-19, Busenitz as modified by Kleyman further discloses the number of stepped pegs is four, and each of the four stepped pegs is located at a corner of the grid plate (Busenitz further discloses the stepped pegs are near four corner of the grid plate), but does not specifically discloses the number of stepped pegs is more than four and at least one of the stepped pegs is at a location other than a corner or side of the grid plate. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the number of the stepped pegs is more than four in order to provide additional support to the already four corner, since such a modification would amount to a mere duplication of parts. It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. 2144.04(VI)(B). With regarding to the location of the additional stepped pegs It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rearranged the stepped pegs in order to provide support to the additional location as needed. It has been held that rearranging parts of an invention involves only routine skill in the art. MPEP2144 (VI)(C).
As to claim 20, Busenitz as modified by Kleyman further discloses that the openings are circular with a circular diameter, the circular diameter is greater than the top portion diameter and less than the bottom portion diameter of the stepped pegs, such that the grid rests on a step, where the step is located at an intersection of the top portion and the bottom portion of the stepped peg. However, Busenitz does not discloses the openings are square. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the opening with square shape because the selection of the specific shape such as the disclosed by Busenitz or as claimed would have been an obvious matter of design choice inasmuch as the resultant structures will work equally well. Furthermore, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. A Change in aesthetic (ornamental) design generally will not support patentability. MPEP 2144.04(IV)(B).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-20 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-20 of copending Application No. 18/758,352 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUN HOI CHEUNG whose telephone number is (571)270-5702. The examiner can normally be reached Monday to Friday 9AM-5:30PM.
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/CHUN HOI CHEUNG/Primary Examiner, Art Unit 3736