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 .
Claim Status
This Office action is in response to the Response to the Response to Election/Restriction filed 10/27/2025. Claims 4-24 are currently pending.
Election/Restrictions
Claims 4-18, and 24 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/27/2025.
Applicant's election with traverse of Group III, claims 19-23 in the reply filed on 10/27/2025 is acknowledged. The traversal is on the ground(s) that there would not be a burden to include the claims of Group II in the search. This is not found persuasive because the restriction requirement is based on unity of invention which does not consider search burden.
The requirement is still deemed proper and is therefore made FINAL.
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 magazine from which a folded bag is fed of claim 19, a conveyor means of claim 19, a folding means of claim 19, a means for erecting of claim 20, a means for bringing together and securing base sections of claim 20, means for closing of claim 20, means for bringing together and securing lid sections of claim 20, sealing means of claim 20, conveyor means for conveying the closed shipping pack for shipping and storage of claim 20, the means for bringing the portions together under applied pressure of claim 22, and a dispenser of claim 23 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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In this case, the following claim limitations that that use the word “means” are being interpreted under 35 U.S.C. 112(f): “a conveyor means” of claim 19, “a folding means” of claim 19, “means for erecting” of claim 20, “means for bringing together and securing base sections” of claim 20, “means for placing” of claim 20, “means for closing” of claim 20, “means for bringing together and closing lid sections” of claim 20, “sealing means” of claim 20, “conveyor means for conveying the closed shipping pack for dispatch or storage” of claim 20, and “means for bringing the portions together under applied pressure” of claim 22.
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.
Claims 19-23 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. Note that claims 19, 20, and 22 include indefinite language but claims 21 and 23 are rejected based on their dependency from claim 20.
Claim limitations “a folding means” of claim 19, “means for erecting” of claim 20, “means for bringing together and securing base sections” of claim 20, “means for placing” of claim 20, “means for closing” of claim 20, “means for bringing together and closing lid sections” of claim 20, “sealing means” of claim 20, “conveyor means for conveying the closed shipping pack for dispatch or storage” of claim 20, and “means for bringing the portion together under applied pressure” of claim 22 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. In each case, the written description simply uses the same language as the claim to describe the elements and does not disclose any specific structure. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Note that claims 20-23 have not been further treated under prior art due to the 112 rejections.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Bergstein (US 2095910).
Regarding claim 19, Bergstein discloses an apparatus for forming a shipping pack from a container blank having attached therein a deployable interior open-mouthed bag adapted to deploy from a folded configuration to align with and conform to the inner volume of an erected pack formed from said blank, the apparatus comprising: a conveyor (pg. 2, first col., lines 29-30) on which which a container blank (1 – Fig. 1) is fed (pg. 2, first col., lines 29-30); an adhesive application station (at the glue wheels, pg. 2, first col., lines 70-73); a web (9 – Fig. 1) or individual bags (pg. 3, col. 1, lines 5-9) from which a folded bag is made and fed onto a selected inner face of a first major surface (panels 2, 3 – Fig. 1) of the container blank (pg. 2, col. 1); a conveyor means (the conveyor, pg.2, first col., lines 29-30); a folding station (at the location described in pg. 2, col. 2, lines 29-39 and depicted in Fig. 2) where the blank is folded around a primary fold line (the dotted line between panels 2 and 4 – Fig. 1) to bring the inner surface of a second major (2 – Fig. 1) surface into alignment with said first surface between which the folded bag is disposed and to bring an end closing tab (6 – Fig. 1) adjacent a second primary fold line (the dotted line between panels 3 and 5 – Fig. 1); wherein a free side wall element (5 – Fig. 1) is folded around said second primary fold line to overlie the closing tab (compare Figs. 2 and 3); and applying pressure to the major faces and the side wall element to ensure adequate adhesion to retain the folded shipping pack thus formed in its storage or transport configuration (pg. 2, col. 2, lines 33-36; though not expressly mentioning “pressure” it is clear that pressure must necessarily be applied in or to adhesively secure the bag and the walls).
However, Bergstein does not expressly disclose a magazine from which the container is fed; a magazine from which a folded bag is fed; a folding means adapted to fold the free side element; or a forming station where pressure is applied.
In this case, the examiner takes Official Notice that each of those elements, the container magazine, the bag magazine, the folding means, and the forming station, are each old and well-known within the art of forming a shipping pack and thus do not patentably distinguish the claimed invention from Bergstrom.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of applicant’s claimed invention, to have provided each of those elements since Bergstein discloses the process that each of those elements perform and is simply silent with respect to the exact machinery and these elements are a known solution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M WITTENSCHLAEGER whose telephone number is (571)272-7012. The examiner can normally be reached MON-FRI: 9:00-5:00.
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/THOMAS M WITTENSCHLAEGER/Primary Examiner, Art Unit 3731
11/11/2025