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 .
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 “a packaging space … merges into a resiliently expandable closure part on upper side” and “locking knobs form a resiliently expandable closure gap” as in claim 1 and “one or more locking knobs are arranged in a transition region between the resiliently expandable closure and the packaging space” in claim 16, and “their entire length” in claim 10 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 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 1-16 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.
The specification as originally filed does not adequately describe how “a packaging space … merges into a resiliently expandable closure part on upper side” and “locking knobs form a resiliently expandable closure gap” as in claim 1 and “the packaging space having a resiliently expandable closure on an upper side” and “the locking knobs forming a resiliently expandable closure gap therebetween” in claim 16.
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 1-16 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.
The claims are replete with indefinite language too numerous to mention specifically, and should be revised carefully. For example only, in claim 1, the phrases “… merges into a resiliently expandable closure part on upper side” and “which locking knobs form a resiliently expandable closure gap” are vague and indefinite because these phrases have no clear meaning as to how a packaging space merges into a resiliently expandable closure part? and how the locking knobs form a resiliently expandable closure gap? In claim 1, the phrases “closure part” (two places) and “the packaged item” lack proper antecedent basis. In claim 1, “which locking knobs” should be replaced with --the one or more locking knobs--. In claim 2, the phrase “… is designed as …” is vague and indefinite because it is not clear as to how the packaging body is designed as a resiliently expandable, …? In claim 5, the phrase “the locking knobs” should be replaced with --the one or more locking knobs--. In claim 6, the phrases “a packaging space” and “a guide device” are double recitations. In claim 6, the phrases “the guide channel” and “the locking knobs” lack proper antecedent basis. In claim 8, the phrase “the locking knobs” lacks proper antecedent basis. In claim 11, the phrase “the transition from an oval packaging space into an oval neck region of the closure part … the oval packaging space” is vague, confusing and indefinite because there are insufficient structures in the claim to support such phrase. In claim 12, the phrase “the opening is resiliently expandable” is vague, confusing and indefinite because there are insufficient structures in the claim to support such phrase. In claim 13, the phrase “can be closed by …” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. In claim 14, the phrase “preferably a TPU plastics material” is unclear whether a TPU plastics material is positively recited in claim 14. In claim 15, the phrase “it consists of a plastics material …” is unclear the term “it” refers to which structure? In claim 16, the phrases “the packaging space having a resiliently expandable closure on an upper side” and “the locking knobs forming a resiliently expandable closure gap therebetween” are vague and indefinite because these phrases have no clear meaning as to how the packaging space having a resiliently expandable closure on an upper side? and how are the locking knobs forming a resiliently expandable closure gap? In claim 16, the phrases “the locking knobs” and “the packaged elongated items” lack proper antecedent basis.
The applicant is required to make corrections to the claims wherever appropriate in order to clarify same.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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(s) 1-6, 8 and 11-16 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by Roesler (2016/0272410; hereinafter Roesler'410) or, in the alternative, under 35 U.S.C. 103 as obvious over Roesler'410. To the extent that the Examiner can determine the scopes of the claims, Roesler'410 discloses an individual packaging/elastically expandable, sterilizable individual packaging (1; [0040] & [0043]) for elongated items (20; 30), the packaging comprising an oval packaging body (3-7, 10, 15, 12, 14; [0039]) open on one side (2) which has a packaging space (11, 13) closed at a bottom (14) and merges into a resiliently expandable closure part (5, 6, 7) on an upper side. Roesler'410 further discloses one or more locking knobs (5) are arranged in the transition region between the closure part and the packaging space, the one or more locking knobs form a resiliently expandable closure gap (Fig. 4 & [0043]) therebetween and in that a guide device (7) is arranged in the packaging space in vertical alignment with the closure gap for guiding the lower part of the elongated items in a position-secured manner (Figs. 1-11).
As to claim 2, Roesler'410 discloses the packaging body is designed as a resiliently expandable pocket-shaped plastics material body. To the extent that Roesler'410 fails to show the packaging body is designed as a flat body, 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 individual packaging of Roesler'410 so the packaging body is constructed as a resiliently expandable, flat, pocket-shaped plastics material body because the selection of the specific shape for the packaging body such as the packaging body comprises a flat body as claimed or the shaped as disclosed by Roesler'410 would have been an obvious matter of design choice inasmuch as the resultant structures will work equally well and because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results.
As to claim 3, Roesler'410 discloses the closure part is resiliently expandable by finger force (Figs. 2 & 4; [0044]).
As to claim 4, Roesler'410 further discloses at least two gripping ribs (4, 4) are arranged on the closure part and are arranged opposite one another on narrow sides of the packaging body which are resiliently deformable in a direction directed towards one another.
As to claim 5, Roesler'410 discloses the locking knobs for forming the closure gap (Figs. 2 & 4) are arranged in the space between the at least two opposing gripping ribs.
As to claim 6, Roesler'410 discloses the packaging space is designed to hold a single item (20; 30) which is held by a guide device, and there is a free space (11) in an axial distance between a guide channel and the one or more locking knobs.
As to claim 8, Roesler'410 discloses the locking knobs are arranged individually on inner sides of a front wall (a lower arrow 9 as shown in Fig. 4) and a rear wall (an upper arrow 9 as shown in Fig. 4) as claimed.
As to claim 11, Roesler'410 discloses the oval packaging body with an oval packaging space [0039]. To the extent that Roesler'410 fails to disclose the transition from an oval packaging space into an oval neck region of the closure part adjoining at the top is effected via an arched convex contour, so the oval neck region is reduced in width in cross section compared to the oval packaging space as claimed, 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 packaging body of Roesler'410 so the packaging body is constructed with the transition from an oval packaging space into an oval neck region of the closure part adjoining at the top is effected via an arched convex contour, so the oval neck region is reduced in width in cross section compared to the oval packaging space as claimed and because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results.
As to claim 12, the individual packaging of Roesler'410 as modified comprised of the neck region forms an upper opening which is defined by a peripheral edge and the opening is resiliently expandable.
As to claim 13, Roesler'410 further discloses a lid (27) for sealing the neck opening. To the extent that the individual packaging of Roesler'410 as modified fails to show the neck region can be closed by welding or gluing or sealing, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further modify the individual packaging of Roesler'410 as modified so the individual packaging is constructed with the neck opening can be closed by welding or gluing or sealing instead of the lid because the selection of the specific type of sealing such as the sealing comprises the lid as taught by Roesler'410 or welding or gluing or sealing would have been an obvious matter of design choice inasmuch as the resultant structures will work equally well.
As to claim 14, it appears that this claim is directed to a product-by-process because of the phrase “is manufactured in one piece using the blow molding process …” and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, Roesler'410 discloses the packaging body formed from a resilient plastics material ([0039]-[0040]). To the extent that Roesler'410 fails to discloses the resilient plastics material comprises a TPU plastics material, 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 packaging body of Roesler'410 so the packaging body is constructed from a TPU plastics material because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
As to claim 15, the packaging body of Roesler'410 formed from the plastics material [0039]. However, Roesler'410 fails to disclose the plastics material comprises a hardness in the range of 45 to 95 shore-A and particularly preferably has a hardness of 85 shore-A +/-5 as claimed. 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 packaging body of Roesler'410 so the packaging body is constructed from the plastics material with a hardness in the range of 45 to 95 shore-A and particularly preferably has a hardness of 85 shore-A +/-5 as claimed because the selection of the specific material for the specific situation would appear to have been an obvious matter of design choice based upon conventional design considerations, such as for better absorbing the shocks and also because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
As to claim 16, to the extent that the Examiner can determine the scopes of the claims, Roesler'410 discloses an individual packaging/elastically expandable, sterilizable individual packaging (1; [0040] & [0043]) for elongated items (20; 30), the packaging comprising a packaging body (3-7, 10, 15, 12, 14; [0039]) having an open first side (2), the packaging body forming packaging space (11, 13) closed at a bottom side (14), the packaging space having a resiliently expandable closure (5, 6, 7) on an upper side. Roesler'410 further discloses one or more locking knobs (5) are arranged in a transition region between the resiliently expandable closure and the packaging space, the one or more locking knobs forming a resiliently expandable closure gap therebetween (Fig. 4 & [0043]), and a guide device (7) is arranged in the packaging space in vertical alignment with the resiliently expandable closure for guiding a lower part of the elongated item in a position-secured manner (Figs. 1-11).
Claim(s) 7 and 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Roesler'410 in view of Roesler (5,979,649; hereinafter Roesler'649). Roesler'410 discloses the individual packaging as above having most of the limitations of the claims except for at least one bottom-side stop knob is arranged in the packaging space in an aligned extension of the guide channel of the guide device on which the stop knob the lower end of the item to be held rests. Roesler'649 teaches a packaging (1) for elongated items (3) comprising a packaging body having a closed bottom side with reinforced (21) which is considered equivalent to a bottom-side stop knob as claimed. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Roesler'649 to modify the packaging of Roesler'410 so the packaging body is constructed with at least one bottom-side stop knob which is arranged in the packaging space in an aligned extension of the guide channel of the guide device on which the stop knob the lower end of the item to be held rests for better protecting the elongated item disposed within the packaging.
As to claims 9 and 10, the packaging of Roesler'410 as modified further fails to show the guide device consists of two boundary ribs which are parallel to one another and form a mutual spacing from one another and which form therebetween a sleeve-like guide channel for longitudinal guidance of a part of the item in the packaging space. Roesler'649 further teaches a guide device (6) consists of two boundary ribs (Figs. 2 or 5) which are parallel to one another and form a mutual spacing from one another (Fig. 1 or 3). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention in view of Roesler'649 to modify the packaging of Roesler'410 as modified so the packaging body is constructed with the guide device consists of two boundary ribs which are parallel to one another and form a mutual spacing from one another and which form therebetween a sleeve-like guide channel for longitudinal guidance of a part of the item in the packaging space to facilitate inserting the elongated item.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LUAN K BUI whose telephone number is (571)272-4552. The examiner can normally be reached Generally M-F, 7-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached on 571-270-5531 or orlando.aviles-bosques@uspto.gov. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LUAN K BUI/
Primary Examiner, Art Unit 3736