DETAILED ACTION
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,050,051. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application claims the same essential cooler/system but in broader language, including: a main body having a base, rear, front and sidewalls, a continuous strap portion, first and second securement points, first and second fasteners, first and second assistive strap portions, and first and second assistive fasteners.
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, 7-12, 14, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tyrer (US 6,601,745) in view of Locarno (US 5,288,001).
Regarding claims 1, 2, 8, 10, 14, 17, 18, and 20, Tyrer discloses system for a removable attachable cooler to be used with a motorized golf cart (see Figure 1), the system comprising: a cooler 24, the cooler comprising: a main body 52 comprising: a base 26 and a rear sidewall 42, a front sidewall 38, a first side sidewall (see wall to which 44L is secured), and a second side sidewall (see wall to which 44R is secured), wherein the main body is constructed from a thermally insulating material (col 4 lines 46-54); a lid 36 operatively coupled to a top portion of the rear sidewall, and wherein the main body and the lid further include a zipper mechanism 54 for selectively transitioning the main body from an open position to a closed position via the lid. Tyrer does not disclose the strap portions being formed as continuous strap extending across a portion of the first sidewall, the front wall, and the second side wall and covering 50/75% thereof, first and second securement points, a first portion, second portion, middle portion and first and second assistive strap portions.
However, Locarno (see Figure 1) discloses a flexible carrier 2 having a main body 2 securable to two vertical supports (32/34, akin to golf cart supports 16 disclosed by Tyrer), wherein a continuous strap 4 is provided that covers the entire front and side sidewall portions of the main body, the strap 4 having two securement points (see stitching at each side of the main body 2 and the strap 4), the continuous strap further comprising a first portion 20 and a second portion 18, each of the first and second portion extending past the respective securement points and including first and second fasteners 24/22, and a middle portion (at lead line 4 in Figure 1) having a continuous connection to the front and side sidewall portions of the main body at a plurality of positions between the securement points (See Figure 1 and stitching lines on strap 4). Locarno also discloses first and second assistive strap portions 12/10 with respective first and second assistive fasteners 16/14 secured to the sidewalls at the first and second securement points. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to replace the strap portions 28L/28R of Tyrer with a single continuous strap with first, second and middle portions, and assistive strap portions as taught by Locarno, the continuous strap extending around and secured to the side sidewalls and front sidewalls of the cooler in order to prevent the front wall of the cooler from sagging away from the vertical supports of the golf cart.
Regarding claims 3 and 12, the modified Tyrer device discloses that the middle portion (see middle portion 4 taught by Locarno) being fastened at multiple positions (See stitching on 4 as in Figure 1 of Locarno) between the securement points.
Regarding claim 4, see exterior positioned carrying handles 44 of Tyrer.
Regarding claims 7, 9, Tyrer discloses the first and second sidewalls and front sidewall are non-uniform in height and increase in height starting from a lowest height at a first position until reaching a maximum height at a second position (see Figure 1 and the slope of the sidewall 38).
Regarding claim 11, Locarno discloses placing the continuous strap 4 at a position between a center point of the sidewall and an upper edge of the sidewall (see Locarno Figure 1). This same relative positioning of the continuous strap would be present on the modified Tyrer device.
Regarding claim 16, a storage compartment 52 is defined by the base 26, rear sidewall 42, front sidewall 38 and first and second side sidewalls as claimed.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyrer in view of Locarno, as applied to claim 4 above, and further in view of Seiders et al. (US 11,117,732).
Regarding claim 5, modified Tyrer discloses the invention substantially as claimed but does not disclose a handle being coupled to a strengthening member on the rear wall. Seiders discloses a cooler (Figure 1 and 2) having handles 210 secured to strengthening members 220 provided on the front and rear walls of the main body. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide handles and strengthening members on the front and rear walls of Tyrer (in place of or in addition to the handles on the sidewalls) in order to provide extra handles and to reinforce the connection point of the handle to the main body.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyrer in view of Locarno, as applied to claim 4 above, and further in view of Geier (US 2022/0097915).
Regarding claim 6, modified Tyrer discloses the invention substantially as claimed but does not disclose the handles being removable attached to the cooler. Geier discloses a cooler 22 having handles 24 that are removably secured to the main body of the cooler via strap system 10. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide similar removable handles on the cooler of Tyrer to allow the position of the handles to be adjusted based on the user’s preference or based on the weight distribution of the items held therein.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyrer in view of Locarno, as applied to claim 1 above, and further in view of Bradley (US 10,799,002).
Regarding claim 13, modified Tyrer discloses the invention substantially as claimed but does not disclose the base having a non-skid material. However, Bradley teaches that is known to provide a bottom portion of the cooler with feet members 406 made from rubber (non-skid to degree claimed) thereby defining a textured surface on the bottom portion of the cooler to preventing slipping in a wet environment (col. 16 lines 36-50, col. 23 lines 29-34). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide rubber feet on the bottom of the Tyrer cooler in order to preventing the cooler from slipping in a wet environment.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyrer in view of Locarno, as applied to claim 14 above, and further in view of Lanouette et al. (US 5,407,111).
Regarding claim 15, modified Tyrer discloses the invention substantially as claimed but does not disclose the first fastener being a male fastener and the second fastener being a female fastener for forming a shoulder strap (in contrast Tyrer and Locarno disclose each of the first and second portion having the same male/female part rather than opposite male/female parts). However, Lanouette teaches a similar device having first and second portions 16/17 wherein one portion has a male fastening component 13 while the other portion has a female component 12, wherein each respective fastening component can be secured to an opposite male/female component 12/13 secured adjacent thereto or can be secured to the opposite strap portion 16/17. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to reverse the locations of the male/female fastening components in order to enable strap portions of the modified Tyrer device to be secured together to define a single carrying strap (i.e., a shoulder strap).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tyrer in view of Locarno, as applied to claim 18 above, and further in view of Melk (US 5,403,095).
Regarding claim 19, modified Tyrer discloses the invention substantially as claimed but does not disclose the cooler further comprising a second material providing rigidity and made from one of the claimed materials. Melk discloses a similar flexible cooler 20 having a first material portion 22 and a second material portion 24 made from plastic and configured to provide rigidity to the main body of the cooler. See col. 3 lines 34-47 and col. 4 lines 38-51. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the cooler with a similar second material having rigidity as taught by Melk in order to provide protection for breakable or delicate items.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COREY NELSON SKURDAL whose telephone number is (571)272-9588. The examiner can normally be reached Mon-Fri 9am-4pm EST.
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/COREY N SKURDAL/ Primary Examiner, Art Unit 3734