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 .
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.
Claims 8-15 are finally rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In claim 8, lines 3, 8 and 11, “the organizer device” lacks antecedent basis for one such device, or is inconsistent with lines 1-2, “at lest one organizer device”.
In claim 15, lines 2-3, the terms “the game a box” and “a set of card” are indefinite as either typographical or otherwise.
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 8-10 and 13-15 are finally rejected under 35 U.S.C. 103 as being unpatentable over Schroeder (2008/0314784) in view of Ramirez (2022/0258947).
Schroeder disclose a box organizer device comprising a rectangular parallelepiped block (one of 124, 224, 324) made of resilient compressible material (foam, see paragraph 0026), the block being supported by two separators (118 and 122) made of a material (cardboard) that deforms less than the block, the block being interposed between the two separators, the device being adapted to be disposed in a game box and to compartmentalize the game box, the device configured so that a volume of the device retracts under the action of a force on at least one of the separators or otherwise presents an initial volume, the volume occupied by the device being variable so as to adjust a storage capacity of the game box. Schroeder do not disclose an additional box to hold gaming articles and the organizer device. However, Ramirez disclose providing an organizer device (110 and 112, or 200) within a box (106) to modify a storage volume of the box and to compartmentalize the box for storage of trading cards which are a game. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the organizer device of Schroeder within the game box in the manner of Ramirez as claimed, as such a modification would predictably provide a better protection and storage of the contents, which in the combination would be trading cards.
As to claim 9, the dimensions of the block in thickness and height are not seen to distinguish any new or unexpected result by their selection. It has been held that, where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than a prior art device, the claimed device is not patently distinct from the prior art device. Gardner v. TEC Systems, Inc., 725 F. 2d 1338, 220 USPQ 777 (Fed. Cir. 1984) cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
As to claim 10, Schroeder further discloses an adhesive (AKA glue) fixing the separators to the block (see paragraphs 0026, 0029 and 0031).
As to claim 13, Schroeder discloses foam specifically. As to the particular foam recited, since it has a given number as an identifier, it is a previously known polyurethane foam. It has been held to be within the level of ordinary skill in the art to select a known material on the basis of its suitability for the intended use as an obvious matter of design choice. See In re Leshin, 125 USPQ 416.
As to claim 14, Schroeder discloses cardboard (see paragraph 0025) specifically.
As to claim 15, Schroeder discloses the separators comprising a smooth surfaced material (cardboard).
Claims 11 and 12 are finally rejected under 35 U.S.C. 103 as being unpatentable over Schroeder in view of Ramirez as employed against claim 8 above, and further in view of Harms (1,488,044). Schroeder and Ramirez do not disclose a tab protruding from an inserted separator in a box. However, Harms discloses it was known to provide a tab (9) protruding from an inserted separator (including 6) in a box (30). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the set of Schroeder as modified by Ramirez with a tab in the manner of Harms as claimed, as such a modification would predictably provide an easier removal of the separator from its box.
Applicant's arguments and amendments filed December 2, 2025 have been fully considered but they are not persuasive relative to 103 grounds of rejection. Schroeder discloses employing resilient and flexible foam (see paragraphs 0026 and 0031-0032). In paragraph 0041, a rigid construction is considered in contradistinction to that previously claimed, which is flexible, resilient and retractable by it being flexible and resilient.
The 112 grounds of rejection previously made have been overcome, but new 112(a) rejections have been made in view of the amendments.
Applicant's amendment necessitated the new or modified grounds 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.
Prior Art not relied upon: Please refer to the additional references listed on the attached PTO-892, which, while not relied upon for the claim rejection, these references are deemed relevant to the claimed invention as a whole.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Orlando Aviles, can be reached on (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG
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