DETAILED ACTION
Response to Arguments
1. Applicant's arguments filed October 23, 2025 have been fully considered but they are not persuasive.
a) Applicant respectfully submits that Santos Dominguez fails to disclose or suggest at least this feature of amended claim 1 and therefore cannot support the Section 102 rejection thereof.
Examiner asserts that Santos Dominguez quite explicitly does not show or teach any indicia on an exterior surface thereof. Further, Examiner asserts that a person of ordinary skill in the art would not come away from the disclosure of Santos Dominguez thinking otherwise, as there is no teaching, suggestion, or other disclosure therein which even alludes to printed matter on an exterior surface thereof. Examiner notes that Applicant is allowed to employ negative claim limitations. See MPEP 2173.05(i). However, Examiner disputes that Santos Dominguez has to explicitly state as much in order to anticipate such. Examiner notes MPEP 2125(I) (Drawings as Prior Art), which says that it does not matter if a feature shown (in this case, an absence of printed matter) is “unexplained in the specification”; that what matters is what the drawings “reasonably disclose and suggest to one of ordinary skill in the art” (emphasis added). Id. Accordingly, it is the Examiner’s position that a person of ordinary skill in the art, when construing the full disclose of Santos Dominguez, will come away with an understanding that the invention lacks any indicia on the exterior surface – quite literally, no such indicia is shown. Drawings “can anticipate” the claimed invention. Id. Importing such indicia so as to invalidate the reference for use as prior art anticipating Applicant’s claimed invention is to import more than what is taught or suggested within the document itself.
b) Applicant argues that the office has not met its burden under Continental Can to establish that Santos Dominguez teaches a lack of indicia on the exterior surface.
Examiner is unclear what more “extrinsic evidence” is required for a patent document to prove an element is not present beyond not showing it or mentioning it. Applicant construes caselaw which requires a presence of a positively claimed element in the prior art, for that prior art to properly anticipate the claim. Examiner asserts that a complete silence on the part of Santos Dominguez, both in word and image, supports a lack of indicia in the reference. Otherwise, it could be construed that such indicia is present, which is clearly improper (emphasis added).
c) Applicant argues that Kyoko, in being transparent, fails to teach a lack of content-indicating indicia.
Examiner asserts that the claim requires the container exterior to be devoid of any indicia. A clear container is not the same as indicia. Should Applicant seek to claim a container which is not transparent, then the claims should be amended accordingly. Until then, such argument is moot.
d) Applicant argues that the combination of Santos Dominguez in view of Ferro fails to render obvious claim 18 because the QR code of Ferro indicates container contents.
Examiner asserts that this is a mischaracterization of the ground of rejection. Ferro is used simply to teach application of a QR code. It is extremely well-known that QR codes can be configured to convey whatever information is desired, and does not necessarily need to be that of container contents.
e) Applicant argues that amended claim 1 would render Ferro unsatisfactory for its intended purpose.
It is unclear how the claimed kit would render Ferro unsatisfactory for its intended purpose. If anything, Ferro could render Santos Dominguez unsatisfactory for its intended purpose, because the analysis, finding basis in MPEP 2143.01(V), is based on whether the modifying reference would render the base reference unsatisfactory for such purpose. However, Applicant’s language confuses the basis of this argument, and says that the claim itself would render the base reference unsuitable for its intended purpose, a position which finds no basis anywhere in the MPEP.
Claim Rejections - 35 USC § 102
2. 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.
3. Claims 1-5, 9, 12, 16, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2010/0307649 (Santos Dominguez).
Regarding claim 1, Santos Dominguez teaches a field kit, comprising:
a housing having a first body portion (2a) releasably coupled (by zipper 18; see para. [0005]; reference is otherwise silent as to any other connection between the two portions) to a second body portion (2b), the first body portion and the second body portion collectively defining an interior space (interior of bag 1), wherein the first body portion is configured to at least partially separate from the second body portion to allow access to the interior space (see Figure 5), and wherein an exterior surface the housing is devoid of any indicia for indicating presence of at least some of personal care items placed within the kit (the document makes no reference to, or otherwise does not show any indicia; a person of ordinary skill in the art would not be informed or otherwise motived to apply indicia to the exterior surface in accordance with MPEP 2125(I)), and
a plurality of compartments (19) arranged within the interior space, each compartment of the plurality of compartments being dimensioned and configured for receiving and storing a respective personal care item (Examiner notes no structure or function is read into the term “personal care item”; the kit disclosed in Santos Dominguez is capable of storing personal care items, if not in the least using the disclosed first aid items on one’s self), the plurality of compartments being distinct from each other (compartments are distinct based on having separate locations; no structure or function is read into the limitation “distinct from each other” beyond that which is explicitly claimed) and separately accessible (each compartment has its own accessible closure).
Regarding claim 2, at least one of the plurality of compartments is removable from the interior space (explicitly stated in para. [0005] by way of Velcro tapes).
Regarding claim 3, further comprising one or more dividers (23) within at least one of the plurality of compartments to further sub-divide the compartment for orderly arrangement of personal care items placed in the compartment (see Figure 7).
Regarding claim 4, at least one of the plurality of compartments further comprises a closure mechanism for selectively securing the compartment (lid 21; see Figure 6).
Regarding claim 5, the closure mechanism comprises a locking mechanism operable to selectively lock and unlock the compartment independently (zipper 22; see Figure 6).
Regarding claim 9, at least one of the plurality of compartments is shaped to conform to a shape of at least one of the respective personal care items contained therein (rectangular shape can conform to a rectangular shaped object, like a box of tape or band aids).
Regarding claim 12, further comprising a handle (5) coupled to the first body portion and/or the second body portion to facilitate transportation of the field kit (shown coupled to 2a in Figure 5).
Regarding claim 16, the personal care items comprise at least one selected from a skincare product, a haircare product, a body care product, a hygiene product, a wellness product, a deformable bag, or cosmetics (Examiner notes parent claim 1 only requires the compartments be “configured for receiving and storing a respective personal care item” to which the Examiner asserts is simply providing a containment space; the compartments 19 of Santos Dominguez are capable of use in the intended manner by receiving the items listed).
Regarding claim 19, the first body portion and the second body portion are removably or hingedly coupled to each other (Examiner notes the reference teaches body is formed of two parts 2a and 2b, which are held together by a zipper 18 forming a well-known removable connection; Figure 5 shows the elements may be joined by a hinge).
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of US 6,848,581 (Cohen).
Regarding claim 6, Santos Dominguez as applied above fails to teach the kit further comprising a lid for securing the plurality of compartments.
Cohen, analogous to medical kits, teaches a lid (28) to divide the space between compartments (12) and (14).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, providing a lid as taught by Cohen, motivated by the benefit of dividing the internal space between compartments, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 7, the lid is removably or hingedly coupled to the first body portion or the second body portion (see Cohen hinge 30).
6. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) in view of US 6,848,581 (Cohen) as applied above to claim 6, and further in view of DE 202019103435 (Busse).
Regarding claim 8, Santos Dominguez in view of Cohen as applied above fails to teach that the lid comprises a locking mechanism operable to lock and unlock the plurality of compartments.
However, Cohen teaches securing the lid with hook and loop closures (36a, 36b), e.g. Velcro.
Busse teaches the equivalence of Velcro and padlocks for locking devices (see Description in the English translation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez in view of Cohen, replacing the hook and loop fasteners which secure the lid in the closed position with a padlock, as taught to be a known equivalent by Busse, motivated by the benefit of preventing unauthorized access, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
7. Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of US 4,386,642 (Durbin).
Regarding claim 10, Santos Dominguez as applied above fails to teach the kit further comprising a labeling system positioned within the interior space and associated with each of the plurality of compartments to identify the respective personal care items contained therein.
Durbin, analogous to cases with compartments, teaches labeling the compartments to identify items therein (color coding of pouches for rapid identification; see Abstract; Examiner notes the pouches are internal to the container space).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, providing color coding of the compartments as taught by Durbin, motivated by the benefit of rapid identification of compartment contents, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 11, the labeling system comprises at least one of a color-coding system, a numerical coding system, a categorization system, or an alphanumeric coding system (color coding; see Abstract).
8. Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of US 5,722,537 (Sigler).
Regarding claim 13, Santos Dominguez as applied above fails to teach that at least one of the plurality of compartments comprises a hanging mechanism configured to hang the compartment on a structure.
Sigler, analogous to containers, teaches providing a hook in order to hang the container “in a convenient place to be ready to use” (4; col. 3, lines 65-67).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the compartments of Santos Dominguez, providing each with a hook as taught by Sigler, motivated by the benefit hanging the compartments in a convenient place to be ready to use, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 14, the hanging mechanism comprises a hook, removable adhesive, or a magnet (hook 4; col. 3, lines 65-67).
9. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1).
Regarding claim 15, Santos Dominguez as applied above teaches the kit further comprising a padding material for protecting at least one of the respective personal care items contained therein (see discussion of “padded protective material” in para. [0003]), but fails to explicitly teach lining an interior surface of at least one of the plurality of compartments.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the compartments of Santos Dominguez, providing padding as broadly suggested by Santos Dominguez, motivated by the benefit of protecting items contained therein, having a predictable outcome absent a teaching of an unexpected result. A rearrangement of the parts of the prior art is obvious, absent a teaching of an unexpected result. See MPEP 2144.04(VI)(C). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
10. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of JP-3242305 (Kyoko).
Regarding claim 17, Santos Dominguez as applied above fails to teach that at least one of the first body portion or the second body portion is composed of a material selected from plastic, metal, a composite material, or a bio-degradable material.
Kyoko, analogous to first aid kits, teaches forming the container body and lid of transparent plastic, allowing visual recognition of supplies from outside the container (see translation).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, forming it of transparent plastic as taught by Kyoko, motivated by the benefit of allowing visual recognition of supplies from outside the container, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
11. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of US 11,369,454 (Ferro).
Regarding claim 18, Santos Dominguez as applied above fails to teach the kit further comprising a machine-readable code, wherein the machine-readable code comprises at least one of access information of an online fillable order form for ordering personal care products, an identification of the field kit, or user account information.
Ferro, analogous to medical kits, teaches providing a machine-readable code (105) which can be used to provide a user an augmented reality experience to explore the contents of the container, which is understood by the Examiner as comprising an identification of the kit e.g. identifying the contents therein (col. 13, lines 50-61).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, providing a machine-readable code as taught by Ferro, motivated by the benefit of providing a user with an augmented reality experience to explore the contents of the container, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Should Applicant disagree, Examiner asserts it is obvious and well-known to use QR codes to access a variety of information, and it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to configure the QR code such that it provided an order form, identification of the kit, or user account information, as it is well known to provide such information online, and the QR code is simply a way to guide a user to such information.
12. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of US 10,817,832 (Agrawal).
Regarding claim 20, Santos Dominguez as applied above fails to teach the kit further comprising an onboard inventory management assembly configured to track quantity of the respective personal care items used or remaining in the field kit.
Agrawal, analogous to medical kits, teaches it is known to provide an inventory management assembly comprising RFID tags (128; col. 5, lines 4-11) read by an RFID reader (134; col. 5, lines 30-37) for purposes of tracking inventory and reordering supplies to replenish the kit (col. 2, lines 52-60).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, providing an inventory management assembly such as that taught by Agrawal, motivated by the benefit of tracking and reordering supplies to replenish the kit, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
13. Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) as applied above under 35 USC 102(a)(1), in view of US 3,865,166 (Pedro).
Regarding claim 21, Santos Dominguez as applied above fails to teach the kit further comprising a locking mechanism operable to lock and unlock the first body portion and the second body portion, wherein when the first body portion and the second body portion are unlocked, the interior space is accessible, and when the first body portion and the second body portion are locked, the interior space is inaccessible.
Pedro, analogous to cases closed by a zipper, teaches it is known to secure the double zipper tabs together with a padlock (28) to prevent unauthorized access (col. 2, line 67 through col. 3, line 6).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, providing a lock as taught by Pedro, motivated by the benefit of preventing unauthorized access, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
14. Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over US 2010/0307649 (Santos Dominguez) in view of US 11,369,454 (Ferro) and in view of EP 4,047,868 (Samson).
Regarding claim 22, Santos Dominguez teaches a field kit system comprising:
a server in communication with a network, the server storing a fillable order form accessible online (not taught), and a field kit, wherein the field kit comprises:
a housing having a first body portion (2a) releasably coupled (by zipper 18; see para. [0005]; reference is otherwise silent as to any other connection between the two portions) to a second body portion (2b), the first body portion and the second body portion collectively defining an interior space (interior of bag 1), wherein the first body portion is configured to at least partially separate from the second body portion to allow access to the interior space (see Figure 5), and an exterior surface the housing is devoid of any indicia for indicating presence of at least some of personal care items placed within the kit (the document makes no reference to, or otherwise does not show any indicia; a person of ordinary skill in the art would not be informed or otherwise motived to apply indicia to the exterior surface in accordance with MPEP 2125(I)),
a plurality of compartments (19) arranged within the interior space, each compartment of the plurality of compartments being dimensioned and configured for receiving and storing a respective personal care item (Examiner notes no structure or function is read into the term “personal care item”; the kit disclosed in Santos Dominguez is capable of storing personal care items, if not in the least using the disclosed first aid items on one’s self), the plurality of compartments being distinct from each other (compartments are distinct based on having separate locations; no structure or function is read into the limitation “distinct from each other” beyond that which is explicitly claimed) and separately accessible (each compartment has its own accessible closure), and a machine-readable code for accessing the fillable order form on the server (not taught).
Santos Dominguez fails to teach:
a server in communication with a network, the server storing a fillable order form accessible online, and a machine-readable code for accessing the fillable order form on the server.
Ferro, analogous to medical kits, teaches providing a machine-readable code (105) which can be used to provide a user an augmented reality experience to explore the contents of the container, which is understood by the Examiner as comprising an identification of the kit e.g. identifying the contents therein (col. 13, lines 50-61).
Samson, analogous to QR codes, teaches taking a user to a fillable form by a QR code (see claim 12).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the kit of Santos Dominguez, providing a machine-readable code as taught by Ferro, motivated by the benefit of allowing the user to initiate an online event, and further using the QR code to take the user to an fillable form, as taught to be known by Samson, motivated by the benefit of allowing the user to place an online order, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES N SMALLEY/Examiner, Art Unit 3733