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 .
Specification
The abstract of the disclosure is objected to because its length. The abstract should not contain more than 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 7, 9-12 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claim 1, the amendment to the claim with the limitation reciting “the corner contacts a portion of the unitary body that does not include the slot” is a negative limitation which raises a new matter issues added to the specification for the first time after amendment see MPEP 2173305(i). Furthermore, the amendment is indefinite because it is unclear from the specification to what feature and/or what the claim is referring with language “that does not include the slot. Claims 2-4, 7, 9-12 and 21 inherit the same issue of claim 1 because the claims are dependent to claim 1.
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 1-4, 7, 9-12 and 21 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. Regarding claim 1, line 13, “the corner” lacks antecedent basis. It is unclear to what or which corner applicant is referring. In case the examiner is looking at the of the object to be disposed in the slot, then “the corner” lacks antecedent basis. Furthermore, the claim is indefinite because it is unclear if applicant is positively claiming the object or not. For example, in line 12 of claim 1, “the slot capable of having a side or a corner of an object” clearly suggest that the object is not positively recited and the claim is directed to the intended use and the capability of the slot to accept an object. However, in line 13 of the claim “until the corner contacts a portion of the unitary body” appears that the corner of the object is positively claimed and requires direct contact between the corner of the object and the unitary body of the cushioning device.
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.
Claims 1-4, 9-11 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Béliveau (6,082,543) in view of Mertz, II (US 2005/0115860).
Claims 1 and 2
As best understood, Béliveau discloses a packing protector/cushioning device (10) having a unitary body formed from polyethylene foam/resilient material (see column 2 lines 46-49), the unitary body having a length, a width, and a thickness, wherein the length of the unitary body is greater than the width of the unitary body (see figures 2 and 3); first and second ends (42 and 44) located opposite each other in a direction of the length of the unitary body; first and second coupling mechanisms (defined by projection 46 at end 42 and cavity 48 at end 44) located on the first and second ends of the unitary body, wherein, when the unitary body is in a looped configuration, the first and second coupling mechanisms are configured to be coupled to each other to hold the unitary body in the looped configuration (see figure 1). Béliveau further discloses the packing protector/cushioning device is used for protecting fragile objects commonly ship in a box (see column 1 lines 4-9). Béliveau does not disclose a slot through the thickness of the unitary body, as required. However, Mertz, II discloses a package (10) for shipping and storing a product panel (14), the package comprising a protective material (16) comprising structures protruding in the interior of the protective material, each comprising a slot (26) for engaging with a peripheral side surface of an object slid therethrough until a corner of the object contacts a portion of protective material that does not include the slot (see figure 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify packing protector/cushioning device having a protruding portion with a slot as taught by Mertz, II for providing support to the sides of the article enclosed within the packing protector/cushioning device. After Béliveau is modified by Mertz, II, the unitary body in the looped configuration will provide cushioning for the side and/or the corner of the object.
Claim 3
After Béliveau is modified by Mertz, II, the slot will extend in the direction of the length of the unitary body.
Claim 4
Mertz, II further discloses the slot includes slits (27) in which material of the protruding portion of the package could make each of the slots to fit to different thicknesses of the object (see [0021] and [0022]), therefore the slot could either be centered or off center in a horizontal direction (see figure 3). After Béliveau is modified by Mertz, II the slot will be either off center or centered in the direction of the length of the unitary body.
Claim 9
Béliveau further discloses the first coupling mechanism (46) has a hammerhead shape that includes a neck; the second coupling mechanism (defined by cavity 48) has through hole; and when the first and second coupling mechanisms are coupled to each other, the neck of the first coupling mechanism passes through the through hole of the second coupling mechanism (see figures 1 and 2).
Claim 10
Béliveau further discloses the through hole of the second coupling mechanism is located proximate the second end of the unitary body, and wherein the unitary body further includes a slit (defined by portion of the cavity 48 which the neck of the first coupling mechanism fits) between the through hole and the second end (see figures 1 and 2).
Claim 11
Béliveau further discloses the first coupling mechanism (46) has a trapezoidal shape (defined by portion of the first coupling mechanism pointed by reference numeral 46); the second coupling mechanism has a cavity/through hole (48) having a graduated shape; and when the first and second coupling mechanisms are coupled to each other, the trapezoidal shape of the first coupling mechanism seats against the graduated shape in the through hole of the second coupling mechanism (see figures 1 and 2).
Claim 21
Mertz, II further discloses the slot includes slits (27) in which material of the protruding portion of the package could make each of the slots to fit to different thicknesses of the object (see [0021] and [0022]). After Béliveau is modified by Mertz, II, the slots comprise a plurality of slits.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Béliveau (6,082,543) and Mertz, II (US 2005/0115860) as applied to claim 1 above, and further in view of Clark, Jr. (3,900,156).
Béliveau does not disclose the first coupling mechanism has a convex arcuate shape, and the second coupling mechanism has through hole having a concave arcuate shape, as required. However, Clark, Jr. discloses a corner pad or protective shield comprising first and second coupling mechanism (E), wherein a first coupling mechanism comprises a convex tab (25 or 26) engaging into a second coupling mechanism comprising concave notches/hole (25a or 26a) (see figures 3, 7 and column 2 lines 58-68). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the coupling mechanism of Béliveau having convex and concave shape for the first and second coupling mechanism respectively, as taught by Clark, Jr. since the shape of the coupling mechanism is a matter of design choice the shape of the first and second coupling mechanism because it will perform the function of coupling ends of the packing protector/cushioning device equally well.
Allowable Subject Matter
Claims 23, 24, 27, 28 and 30 are allowed. No prior art discloses a package comprising an object in combination with plurality of cushioning devices having first and second ends configured to couple to each other in a looped configuration and including a slot extending through the thickness of each cushioning device capable to have a corner of the object to slid through the slot, as required in claim 23.
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 7, 9-12 and 21 have been considered but are moot in view of a new ground of rejection. With respect to applicant’s argument of the objection to the abstract, the examiner disagrees. The examiner points out that the applicant has also to count the numbers between parenthesis () because those are also characters that counts as part of the abstract.
Conclusion
Examiner has cited particular paragraphs and/or columns and line numbers in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested of the applicant, in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or prior art(s) disclosed by the Examiner (in the attached PTO-892 form).
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 RAFAEL A. ORTIZ whose telephone number is (571)270-5240. The examiner can normally be reached Monday - Friday 9am - 6pm.
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, Orlando E. Aviles can be reached at 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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RAFAEL A. ORTIZ
Primary Examiner
Art Unit 3736
/RAFAEL A ORTIZ/Primary Examiner, Art Unit 3736