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 .
Status of Claims
This office action is in response to applicant’s Amendment/Request for Reconsideration filed on 25 March 2026.
Claims 1 – 7 are pending.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 14 May 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected because of the following informalities:
Regarding claim 1, lines 6 – 7, the limitation, “the second card;”, should read, “the second card; and”, in order to link the last method step to the preceding ones in a cohesive way thereby making it clear it's part of the group and not separate.
Appropriate correction is required.
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 is incorrect, any correction of the statutory basis 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.
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[AltContent: textbox (Ocampo (US D649,886 S) – Annotated fig. 1)][AltContent: textbox (Sama (US 3,840,114 A) – fig. 3)]Claims 1 – 2 and 4 – 5 are rejected under 35 U.S.C. 103 as being unpatentable over Sama (US 3,840,114 A) in view of Ocampo (US D649,886 S).
Regarding claim 1, Sama discloses a method of assembling a product mailer comprising:
sealing a container (16, fig. 3) to a bottom surface of a first card (36, fig. 3);
sealing a container (16’, fig. 3) to a bottom surface of a second card (38, fig. 3);
positioning a product (Col. 2, ll. 23 – 29; “an article”) within a cavity defined by the container sealed to the first card (Col. 2, ll. 23 – 29 describes containers 16, 16’ each enclosing an article);
positioning a product (Col. 2, ll. 23 – 29; “an article”) within a cavity defined by the container sealed to the second card (Col. 2, ll. 23 – 29 describes containers 16, 16’ each enclosing an article); and
positioning the first card over the second card wherein the bottom surface of the first card contacts one or more of the containers sealed to the second card (Col. 3, ll. 2 – 16 describes dimension A across a spacer panel 40 corresponding to the height of containers 16, 16’ so that when card/panel 36 is positioned over card/panel 38, containers 16, 16’ provides reinforcing means. The examiner interprets when card/panel 36 is positioned over card/panel 38, containers 16, 16’ provides reinforcing means to mean the bottom surface of the card/panel 36 contacts the container 16’ sealed to the card/panel 38).
Sama does not explicitly disclose sealing a plurality of containers to a bottom surface of a first card; sealing a plurality of containers to a bottom surface of a second card; and positioning a product within a cavity defined by each of the containers sealed to the first card; and positioning a product within a cavity defined by each of the containers sealed to the second card.
However, Ocampo, in the same field of endeavor, teaches sealing a plurality of containers (A, A’, annotated fig. 1) to a bottom of a card (B, annotated fig. 1) and positioning a product (C, C’, annotated fig. 1) with a cavity defined by each of the containers sealed to the card (One having ordinary skill in the art would recognize that with the incorporation of the teachings of Ocampo with the invention of Sama, a first set of the plurality of containers A, A’ of Ocampo would replace the container 16 of Sama and be sealed to the bottom surface of the card/panel 36 of Sama and a second set of the plurality of containers A, A’ of Ocampo would replace the container 16’ of Sama and be sealed to the bottom surface of the card/panel 38 of Sama).
Ocampo is evidence that sealing a plurality of containers to a bottom of a card and positioning a product with a cavity defined by each of the containers sealed to the card was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success replacing the container 16 sealed to the bottom of the card/panel 36 and the container 16’ sealed to the bottom of the card/panel 38, as disclosed in Sama, with the containers A, A’ sealed to the bottom of the card/panel 36 of Sama and the containers A, A’ sealed to the bottom of the card/panel 38 of Sama, as taught by Ocampo. Moreover, the one having ordinary skill in the art would have been motivated replacing the container 16 sealed to the bottom of the card/panel 36 and the container 16’ sealed to the bottom of the card/panel 38, as disclosed in Sama, with the containers A, A’ sealed to the bottom of the card/panel 36 of Sama and the containers A, A’ sealed to the bottom of the card/panel 38 of Sama, as taught by Ocampo, in order to provide a user/customer with multiple products per card/panel benefiting the user/customer with convenience, perceived savings, reduced decision-making, and getting complementary items together. It also cuts operational costs for businesses by reducing individual packing, handling, and shipping expenses.
Regarding claim 2, Sama, as modified by Ocampo, discloses the invention as recited in claim 1.
The modified Sama discloses said positioning the product (Sama – Col. 2, ll. 23 – 29; “an article”, and Ocampo – C, C’, annotated fig. 1) within the cavity defined by each of the containers (Sama – 16, 16’, fig. 3; and Ocampo – A, A’, annotated fig. 1) sealed to the first card (Sama – 36, fig. 3; and Ocampo – B, annotated fig. 1) is prior to sealing the plurality of containers to the bottom surface of a first card (Both Sama and Ocampo discloses and teaches a product positioned within a cavity defined by each of the containers and then sealed to the bottom surface of a card. That is, one having ordinary skill in the art would recognize in Sama that the product must be positioned within the container prior to sealing the container to the card/panel because the drawings show no other opening to position the product within the container after the sealing. Similarly, one having ordinary skill in the art would recognize in Ocampo that the product must be positioned within the container prior to sealing the container to the card/panel because the opening shown in the drawings is too small to position the product within the container after the sealing).
Regarding claim 4, Sama, as modified by Ocampo, discloses the invention as recited in claim 1.
The modified Sama discloses offsetting the containers (Ocampo – A, A’, annotated fig. 1) sealed to the first card (Sama – 36, fig. 3) from the containers (Ocampo – A, A’, annotated fig. 1) sealed to the second card (Sama – 38, fig. 3).
[AltContent: arrow][AltContent: arrow][AltContent: textbox (C)][AltContent: textbox (C’)]
Regarding claim 5, Sama, as modified by Ocampo, discloses the invention as recited in claim 1.
The modified Sama discloses positioning an opening (Ocampo – D, D’, annotated fig. 2) defined by each of the containers (Ocampo – C, C’, annotated fig. 2) at an outer edge of the first card (Sama – 36, fig. 3; and Ocampo – B, annotated fig. 2).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Sama (US 3,840,114 A), in view of Ocampo (US D649,886 S), in further view of Dimmig (US 3,088,587 A).
Regarding claim 3, Sama, as modified by Ocampo, discloses the invention as recited in claim 1.
The modified Sama does not explicitly disclose forming a plurality of perforated tabs on the first card aligned with one of the respective containers sealed to the first card.
However, Dimmig, in the same field of endeavor, teaches a plurality of perforated tabs (24, 26, fig. 1) on the first card (12, fig. 1) aligned with one of the respective containers (20, fig. 1) sealed to the first card, wherein the perforated tabs are defined by a crease line (26, fig. 1) and a pair of perforated line segments (24, fig. 1) extending inward from a leading edge of the first card.
Dimmig is evidence that forming a plurality of perforated tabs on the first card aligned with one of the respective containers sealed to the first card wherein the perforated tabs are defined by a crease line and a pair of perforated line segments extending inward from a leading edge of the first card was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the first card of the modified Dimmig with forming a plurality of perforated tabs on the first card aligned with one of the respective containers sealed to the first card wherein the perforated tabs are defined by a crease line and a pair of perforated line segments extending inward from a leading edge of the first card, as taught by Dimmig. Moreover, the one having ordinary skill in the art would have been motivated to modify the first card of the modified Sama with forming a plurality of perforated tabs on the first card aligned with one of the respective containers sealed to the first card wherein the perforated tabs are defined by a crease line and a pair of perforated line segments extending inward from a leading edge of the first card, as taught by Dimmig, in order to more easily remove the product within the container improving convenience for the user/customer.
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[AltContent: arrow][AltContent: textbox (E)][AltContent: textbox (Ocampo (US D649,886 S) – Annotated fig. 2)][AltContent: oval][AltContent: oval]
Regarding claim 7, Sama, as modified by Ocampa, as further modified by Snape, discloses the invention as recited in claim 3.’
Sama does not disclose the leading edge having one or more curved regions associated with the plurality of containers of the first card.
However, Ocampa, in the same field of endeavor, teaches the leading edge (E, annotated fig. 3) has one or more curved regions (the curved area about the product as shown in fig. 3) associated with the plurality of containers (A, A’, annotated fig. 1) of the first card (B, annotated fig. 1) (Sama – 36, fig. 3; and Ocampo – B, annotated fig. 2).
Ocampa is evidence that the leading edge having one or more curved regions associated with the plurality of containers of the first card was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the first card of the modified Sama with the leading edge having one or more curved regions associated with the plurality of containers of the first card, as taught by Ocampa. Moreover, the one having ordinary skill in the art would have been motivated to modify the first card of the modified Sama with the leading edge having one or more curved regions associated with the plurality of containers of the first card, as taught by Ocampa, in order to easily accommodate irregularly shaped products within the container.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sama (US 3,840,114 A), in view of Ocampo (US D649,886 S), in further view of Smart (US 2013/0105351 A1).
Regarding claim 6, Sama, as modified by Ocampo, discloses the invention as recited in claim 1.
The modified Sama does not explicitly disclose positioning the first card and the second card within an envelope.
However, Smart, in the same filed of endeavor, teaches positioning a blister pack (22, fig. 3) within an envelope (24, fig. 4) (One having ordinary skill in the art would recognize that with the incorporation of the teachings of Smart with the invention of the modified Sama, the blister pack of the modified Sama comprising the first card 36 and the second card 38 would be positioned within the envelope 24 of Smart).
Smart is evidence that positioning the blister pack within an envelope was known and within the skill of one having ordinary skill in the art before the effective filing date of the claimed invention. Therefore, the one having ordinary skill in the art would have had a reasonable expectation of success modifying the method of assembling a product mailer such that the blister pack of the modified Sama comprising the first card 36 and the second card 38 is positioned within the envelope 24 of Smart, as taught by Smart. Moreover, the one having ordinary skill in the art would have been motivated modifying the method of assembling a product mailer such that the blister pack of the modified Sama comprising the first card 36 and the second card 38 is positioned within the envelope 24 of Smart, as taught by Smart, in order to enhanced privacy and security for sensitive goods and to provide better customer engagement through personalization of the envelope (i.e., logos or unique windows).
Response to Arguments
The drawings were received on 25 March 2026. These drawings are acceptable.
Applicant’s amendments and arguments, filed 25 march 2026, with respect to the objections to the Specification have been fully considered and are persuasive. The objections to the Specification have has been withdrawn.
Applicant’s arguments, filed 25 march 2026, with respect to the objections to claim 1 have been fully considered but is not persuasive. No amendment is shown in the record to correct the claim objection of claim 1 cited in the Office action filed 5 January 2026.
Applicant’s arguments, filed 25 march 2026, with respect to the rejection of claim 1 under 35 USC 103 have been fully considered but is not persuasive. Applicant argues:
Regarding claim 1, the Examiner asserts that it would have been obvious to modify the method of Sama with the teachings of Ocampo. Specifically, the Examiner contends that Sama fails to explicitly disclose sealing a plurality of containers to each card and that Ocampo provides this missing element. Applicant submits that this combination is improper due to impermissible hindsight, as the references solve different problems and, in fact, teach away from one another.
The fundamental purpose of Applicant's invention, as described in the application as filed, is to provide a product mailer that is economical and, crucially, flexible enough to be shipped through standard mail systems in an envelope (see Application at page 1, lines 18-24). The claimed method results in a package with "sufficient flexibility during processing by equipment used for sorting envelopes and packages" (Application at page 7, lines 23-25).
In stark contrast, the stated purpose of Sama is to create a rigid, protective, box-like package. Sama's invention is a "U-shaped cell" (Abstract) that is folded into a "box-like form" (Col. 4, line 18) and utilizes reinforcing tabs (48', 48") to maintain the package in a "rectangular hollow form" (Col. 3, lines 15-16). The entire structure is designed to be self-supporting and protect the contents from being "easily damaged in shipment" (Col. 1, lines 20-22). The objective of Sama is rigidity and protection, which is the antithesis of the flexibility required by Applicant's invention. A person of ordinary skill in the art, when seeking to create a flexible mailer for an envelope, would not have been motivated to start with Sama's rigid, box-like structure. Indeed, making Sama's structure flexible would defeat its primary stated purpose. Therefore, Sama teaches away from the present invention. Furthermore, Ocampo is a design patent that discloses only the ornamental appearance of a package for a shaving razor. It provides no technical disclosure or motivation related to package flexibility, mailability, or the structural requirements for processing through automated mail sorting equipment.
The Examiner's motivation for the combination-"to provide a user/customer with multiple products per card/panel"-is a general business objective, not a technical reason to combine these specific references. There is no teaching or suggestion in Sama or Ocampo that combining their features would result in a package having the specific flexibility required for automated mail sorting, which is the problem solved by Applicant's claimed method. The proposed combination constitutes impermissible hindsight, as it uses Applicant's own disclosure as a blueprint to piece together unrelated elements from the prior art. For these reasons, Sama, either alone or in combination with Ocampo, fails to render claim 1 obvious.
In view of at least these reasons, Applicant submits that any arguable combination of Sama, and Ocampo fail to render Claims 1 unpatentable under 35 U.S.C. §103(a). Claims 2 and 4-5 depend from claim 1 and are therefore also allowable for at least the same reason as independent claim 1. Applicant therefore respectfully requests reconsideration and withdrawal of the rejection under 35 U.S.C. §103(a).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "sufficient flexibility during processing by equipment used for sorting envelopes and packages") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Applicant’s argument seems to be directed to the issue that the combination of Sama and Ocampa does not read on applicant’s invention as stated in the specification. However, that is irrelevant. The combination of Sama and Ocampa reads on applicant’s claimed invention of claim 1.
In response to applicant's argument that the references teach away from one another, the applicant cites “[t]he objective of Sama is rigidity and protection, which is the antithesis of the flexibility required by Applicant's invention”, and thus Sama teaches away from applicant’s invention. That is not how “teaching away” works thus the argument is moot.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Lastly, in response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine the teachings of Ocampa with the invention of Sama is found in the knowledge generally available to one of ordinary skill in the art. Please note, the motivation to combine references does not have to be the same motivations as applicant thus applicant’s argument that “[t]here is no teaching or suggestion in Sama or Ocampo that combining their features would result in a package having the specific flexibility required for automated mail sorting, which is the problem solved by Applicant's claimed method” is irrelevant.
Applicant further argues:
Regarding claim 6, the claim depends from claim 1 and further recites "positioning the first card and the second card within an envelope." For the reasons previously set forth with respect to claim 1, the base combination of Sama and Ocampo is improper. Sama teaches a rigid, protective, box-like structure which teaches away from the flexible mailer for envelopes that is the subject of Applicant's invention. As the primary combination is flawed, the further addition of Smart cannot render the claim obvious.
Even assuming, arguendo, that a person of ordinary skill in the art (POSA) would combine Sama and Ocampo, there would be no motivation to further combine this with the teaching of Smart for several reasons. First, the fundamental purpose of Sama is to create a rigid, self- supporting, U-shaped cell that forms a "box-like" package (Col. 4, line 18) to protect its contents from being crushed during shipment (Col. 1, lines 20-22). It is designed to function as a robust shipping container on its own. Smart teaches placing a blister pack within a mailing envelope. A POSA would not be motivated to take Sama's rigid, protective, standalone box structure and place it inside another container like an envelope. Such a combination would be redundant and inefficient. The very purpose of Sama's rigid structure is to obviate the need for an external protective container. Therefore, Sama teaches away from the proposed combination with Smart.
Second, the Examiner's stated motivation to "lower shipping costs for lightweight items" would not be achieved by the proposed combination. Placing the rigid "modified Sama" package into an envelope would increase material costs and weight compared to either reference alone. More importantly, the resulting package would be a rigid, inflexible item within an envelope. As stated in Applicant's own specification, such inflexible items cannot be successfully processed by the current sorting equipment for standard envelopes (Application as filed, p. 1, 11. 18-24). The proposed combination would thus fail to achieve the primary technical advantage of Applicant's invention-creating a package with sufficient flexibility for automated mail sorting. A POSA would recognize that combining the references as proposed would not yield the predictable result of a mailable, flexible package but would instead create a package unsuitable for the intended purpose.
The Examiner's proposed combination is a classic example of impermissible hindsight, using Applicant's invention as a roadmap to piece together incompatible elements from the prior art to arrive at the claimed invention. The references, when combined, teach away from Applicant's invention and would not result in a package that meets the flexibility requirements for standard mail systems.
In response to applicant’s argument that Sama teaches away from the proposed combination with Smart, “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant” (In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)), however, Sama does not criticize or discredit placing the product mailer of Sama within a mailing envelope. Thus, Sama does not teach away from Smart. While applicant states “[s]uch a combination would be redundant and inefficient”, one having ordinary skill in the art may be motivated to combine for enhancing privacy and security for sensitive goods, and providing better customer engagement through personalization of the envelope (i.e. logos or unique windows). In other words, the one having ordinary skill in the art may be motivated to pursue the desirable properties taught by Smart even if that meant the combination may allegedly be redundant and inefficient.
In response to applicant’s argument that the motivation to "lower shipping costs for lightweight items" would not be achieved by the proposed combination, the examiner provides other motivations that are not challenged. Thus, the examiner rescinds that particular motivation and thus, applicant’s argument is moot.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, as stated earlier, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
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 DAVID G SHUTTY whose telephone number is (571) 272-3626. The examiner can normally be reached 7:30 am - 5:30 pm, Monday - Friday.
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, SHELLEY SELF can be reached on 571-272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID G SHUTTY/Examiner, Art Unit 3731
27 July 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731
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