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 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 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bostock (2,917,220). Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ethridge (2,004,197). Each discloses a method of using a box, the box (C; defined box structure; respectively) comprising a first side panel (one 12; one 12) defining a top side end, a bottom side end, a first side end and a second side end, a second side panel (other 12; other 12 connected to 18) a top side end, a bottom side end, a first side end and a second side end, a third side panel (one 13; 13 between the two 12s) joining the second side end of the first side panel and the first side end of the second side panel and defining a first handle opening (one 21; 19 therein), the third side panel defining a top side end, a bottom side end, a first side end and a second side end, a fourth side panel (other 13; other 13 with a free edge) extending from the second side panel and defining a second handle opening (other 21; 19 therein), the fourth side panel defining a top side end, a bottom side end, a first side end and a second side end, a plurality of bottom flaps comprising a first bottom flap (one 11a; one 17), a second bottom flap (other 11a; other 17), a third bottom flap (one 11b; one 16), and a fourth bottom flap (other 11b; other 16), wherein the first bottom flap, the second bottom flap, the third bottom flap and the fourth bottom flap extend from the first side panel, the second side panel, the third side panel and the fourth side panel, respectively, a plurality of top flaps comprising a first top flap (one 20; one 14), a second top flap (other 20; other 14), a third top flap (one 27; one 15), and a fourth top flap (other 27; other 15), wherein the first top flap, the second top flap, the third top flap and the fourth top flap of the plurality of top flaps extend from the first side panel, the second side panel, the third side panel, and the fourth side panel, respectively, wherein the third top flap (one 27; one 15) defines a third handle opening (one 29; one 19 therein), the third handle opening being substantially aligned with the first handle opening in the third side panel when the third top flap is in a folded condition and the fourth top flap (other 27) defines a fourth handle opening (other 29; other 19 therein), the fourth handle opening substantially aligned with the second handle opening when the fourth top flap is in a folded condition (see Figures 1 and 5; see Figures 2 and 5), and a connecting panel (14; 18) extending from one of the first side panel, the second side panel, the third side panel and the fourth side panel, the connecting panel joining adjacent side panels of the first side panel, the second side panel, the third side panel and the fourth side panel, wherein the method comprises obtaining the box, extending one hand of a user’s two hands though each of the third handle opening and the fourth handle opening to grip and lift the box.
As to claim 2, each discloses that by the disposition of the first handle opening (one 21; 19 therein) and the third handle opening (one 29; one 19 therein) in adjacency, and the disposition of the second handle opening (other 21; 19 therein) and the fourth handle opening (other 29; other 19 therein) in adjacency in the box configuration, the user’s hands simultaneously grip the handle openings in the claimed method.
As to claim 3, each discloses, in the box configuration, a surface of the third side panel (one 13; 13 between the two 12s) contacting with a surface of the third top flap (one 27; one 15), an outer surface of the third side panel contacting an outer surface of the third top flap or an inner surface of the third side panel contacting an inner surface of the third top flap, and a surface of the fourth side panel (other 13; other 13 with a free edge) contacting with a surface of the fourth top flap (other 27; other 15), an outer surface of the fourth side panel contacting an outer surface of the fourth top flap or an inner surface of the fourth side panel contacting an inner surface of the fourth top flap.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over either one of Bostock and Ethridge in view of Porter (909,664). Bostock and Ethridge each disclose handle openings, but not provided with handle flaps therewith. However, Porter discloses handle openings (defined by 7) provided with handle flaps (8). 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 box handle openings of either one of Bostock and Ethridge with handle flaps in the manner of Porter as claimed, as such a modification would predictably provide a reinforcing and more protective hand hold as suggested by Porter.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over either one of Bostock and Ethridge in view of Skolik et al. (8,770,468). Bostock and Ethridge each disclose the connecting panel (14; 18), but not provided with a pair of tabs. However, Skolik et al. disclose a similar blank including a connecting panel (6) provided with a pair of tabs (15, 16) serving as dust flaps. 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 blank connecting panel of either one of Bostock and Ethridge with tabs in the manner of Skolik et al. as claimed, as such a modification would predictably provide dust flaps to the connected condition of the blank as suggested by Skolik et al..
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 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-21, respectively of U.S. Patent No. 11,760,531. Although the claims at issue are not identical, they are not patentably distinct from each other because the now claimed subject matter of each of claims 1-5 may be clearly wholly derived from claims 17-21, respectively.
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-Bosques, 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