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 .
This office action is in response to the reply filed on 1/22/2026, wherein claims 1, 14, 15 and 17 were amended; claims 16, 18-19, 21 and 23 were canceled; and claims 24-28 were added. Claim 15 remains withdrawn from consideration.
Claim Rejections - 35 USC § 112
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.
Claim 14 is 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.
Claim 14 is rendered indefinite since the claim uses the phrase “or” to define one of three elements (a wall mount bracket, fasteners or assembly instructions) then the claim further defines only one of the elements (the wall mount bracket). If Applicant is intending to positively recite the wall mount bracket and the enlarged terminal end of the post being sized to mount upon and conceal the wall mount bracket, Applicant amend the claim to define “a wall mount bracket, fasters and assembly instructions”. For examination purposes, Examiner interprets the claim as “a wall mount bracket, fasteners and assembly instructions housed within the cavity; and wherein the enlarged terminal end of the post is sized to mount upon and conceal the wall mount bracket”.
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, 3-13, 22, 24, 26 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blonder (US 2,979,192).
Regarding claim 1, Blonder discloses a package assembly (See Fig. 1) comprising: a plurality of pivotally connected panels (See panels in the blank in Fig. 5) to collectively support a product and define a cavity (cavity within package 10), wherein an aperture (at 18/22) is formed into one of the plurality of pivotally connected panels; and a home hardware product (at 16/15/17 in Fig. 5) comprising a post (at 16) with an enlarged terminal end (at 17) capable of mounting upon a wall mount bracket for installation upon an upright support surface, wherein the home hardware product is affixed to an exterior side of one of the plurality of pivotally connected panels (a portion of the product is affixed to an exterior surface as shown in Fig. 1); and wherein the aperture is sized to receive the enlarged terminal end of the post partially in the cavity (as shown in Figs. 2 and 4).
Regarding claim 3, Blonder discloses the aperture is formed in a front panel (11/11g) of the plurality of pivotally connected panels; and wherein the front panel serves as a backer card.
Regarding claim 4, Blonder discloses at least two of the plurality of pivotally connected panels are pivoted to rollover relative to the front panel to form the cavity (as shown in Fig. 1).
Regarding claim 5, Blonder discloses the cavity extends further than the home hardware product to avoid contact with a sequentially displayed home hardware product (as shown in Fig. 4).
Regarding claim 6, Blonder discloses the plurality of pivotally connected panels further comprises a back panel (at 14) and two other panels (12 and 13).
Regarding claim 7, Blonder discloses the plurality of pivotally connected panels further comprises a back panel (at 14) and at least two of a front panel (at 11/11g/14g), a side panel (at 12) and a bottom panel (at 11a).
Regarding claim 8, Blonder discloses the bottom panel is sized to support the package assembly upon an underlying support surface (as shown in Fig. 7 orientation).
Regarding claims 9-10, Blonder discloses a fastener (tab 11b) to connect a pair of the plurality of pivotally connected panels.
Regarding claim 11, Blonder discloses the home hardware product is not mounted to an insert.
Regarding claim 12, Blonder discloses a shrink wrap is not provided over the home hardware product; and wherein an additional protective coating of the package assembly is not provided over the home hardware product.
Regarding claim 13, Blonder discloses a hang tab (at 14g in Fig. 2) with a hang tab aperture (at 20) is formed in one of the plurality of panels.
Regarding claim 22, Blonder discloses at least a portion of the post is exposed through the aperture (as shown in Fig. 1).
Regarding claim 24, Blonder discloses the aperture is sized to match a profile (e.g. circular cross section) of the enlarged terminal end of the post.
Regarding claim 26, Blonder discloses the package assembly permits customer access to the entire home hardware product (i.e. upon opening of panels 11g/12g/13g).
Regarding claim 27, Blonder discloses the aperture is formed in the front panel; and wherein the hang tab is formed in the front panel and extends above the pivotally connected panels (as shown in Fig. 4).
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 25 is rejected under 35 U.S.C. 103 as being unpatentable over Blonder (US 2,979,192) as applied to claim 1 above, in view of McDonald (US 2012/0103982). As described above, Blonder discloses the claimed invention except for the ties. However, McDonald teaches a package assembly (at 600 in Fig. 17) comprising a plurality of pivotally connected panels to collectively support a product (at 450) and define a cavity (compartment within 610 in Fig. 17), wherein an aperture (near 530 in Fig. 17) is formed into one of the plurality of pivotally connected panels for receiving a portion of the product within the cavity, further comprising ties (at 400 in Fig. 18, which are at both ends as shown in Fig. 19) that extend through the aperture to attach the product to one of the plurality of panels, for the purpose of securely holding the product in place within the package assembly. 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 provided the package assembly of Blonder with ties as taught by McDonald in order to more securely hold the home hardware product in place within the package assembly.
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, 3-14, 17 and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 15 of U.S. Patent No. 12,084,245. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Patent ‘245 (claim 1) discloses the claimed subject matter.
Regarding claim 3, Patent ‘245 (claim 2) discloses the claimed subject matter.
Regarding claim 4, Patent ‘245 (claim 3) discloses the claimed subject matter.
Regarding claim 5, Patent ‘245 (claim 4) discloses the claimed subject matter.
Regarding claim 6, Patent ‘245 (claim 5) discloses the claimed subject matter.
Regarding claim 7, Patent ‘245 (claim 6) discloses the claimed subject matter.
Regarding claim 8, Patent ‘245 (claim 7) discloses the claimed subject matter.
Regarding claim 9, Patent ‘245 (claim 8) discloses the claimed subject matter.
Regarding claim 10, Patent ‘245 (claim 9) discloses the claimed subject matter.
Regarding claim 11, Patent ‘245 (claim 1) discloses the claimed subject matter.
Regarding claim 12, Patent ‘245 (claim 10) discloses the claimed subject matter.
Regarding claim 13, Patent ‘245 (claim 11) discloses the claimed subject matter.
Regarding claim 14, Patent ‘245 (claims 1 and 12) discloses the claimed subject matter.
Regarding claim 17, Patent ‘245 (claim 15) discloses the claimed subject matter.
Regarding claim 22, Patent ‘245 (claim 1) discloses the claimed subject matter.
Allowable Subject Matter
Claim 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and upon filing of a proper terminal disclaimer to overcome the double patenting rejection.
Claims 17 and 28 would be allowable upon filing of a proper terminal disclaimer to overcome the double patenting rejection.
Response to Arguments
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
Applicant argues that claim 1 is amended and recites in part, "wherein the aperture is sized to receive the enlarged terminal end of the post partially in the cavity." Support for this amendment is provided in paragraph [0054] of the specification. The rejection relies on spindle 16 of Blonder for the post. The spindle 16 of Blonder does not include an enlarged terminal end, as claimed, "partially in the cavity." Amended claim 1 does not read on Blonder; and therefore, is novel over Blonder.
Contrary to Applicant’s argument, as shown in Fig. 6-7 of Blonder, the aperture (at 18/22) is sized to receive the enlarged terminal end (at 17) of the post partially in the cavity (as shown in Fig. 4). 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
THIS ACTION IS MADE FINAL. 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 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