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 .
This action is written in response to application number 18/224,274 filed 07/20/2023
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 33-42 and 60 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. Applicant refers to an unclaimed inner container capable of receiving the sections of the collar. Appropriate action is required.
Claim 33 recites the limitation "inner walls of the inner container". There is insufficient antecedent basis for this limitation in the claim.
Claims 62-70 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. Applicant refers to an unclaimed barrier capable of isolating the insulative material with the outer contianer. Appropriate action is required.
Claims 62-63, 67 recites the limitation "a rectangular insert…fits inside the …outer container and on the barrier". There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
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 21, 28 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12 and 13 of U.S. Patent No. (application) 18/224,274. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the issued patent and the current application share similar claim limitations that have been deemed allowable. See the chart analysis below.
Issued Patent
Instant Application
1. A thermally insulating container, comprising: an outer container that is a box formed of a paper and having an outer floor, a plurality of outer walls, and a plurality of flaps extending from upper edges of the plurality of outer wall and foldable to close the box;
an inner container formed of a paper and having an inner floor and a plurality of inner walls and located within the outer container, a space between the plurality of inner walls and plurality of outer walls defining an outer cavity, and a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container;
a recyclable or compostable thermal insulation material formed primarily of plant fiber disposed in the outer cavity and around the inner container; and
four rectangular collar sections arranged in a rectangular ring with each collar section joined to and extending outwardly from an upper edge of a corresponding inner wall of the plurality of inner walls of the inner container so as to be substantially co-planar with a top of the inner container, each collar section extending to a corresponding outer wall of the plurality of outer walls and covering the thermal insulation material between the inner container and outer container, wherein the plurality of flaps are positioned such that when the box is closed the plurality of flaps extend over the collar sections; and
a plurality of first tabs, each first tab integrally joined to and extending downward from an outer edge of a collar section on an exterior side of the thermal insulation material.
21. A thermally insulating container, comprising:
an outer container that is a box formed of a paper and having an outer floor and a plurality of outer walls;
an inner container that is a box formed of a paper and having an inner floor and a plurality of inner walls, a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container;
a recyclable or compostable thermal insulation material formed primarily of plant fiber disposed between the inner walls and the outer walls; and
a barrier formed of paper positioned to cover the thermal insulation material between the inner walls and the outer walls, the barrier comprising a plurality of collar sections arranged in a horizontal rectangular ring substantially co-planar with a top of the inner container and below an upper rim of the plurality of outer walls of the outer container,
the barrier further comprising a flap extending downwardly from an inner edge of a collar section from one of the plurality of collar sections and along a corresponding inner wall from the plurality of inner walls.
12. The container of claim 1, wherein the collar is cardboard.
28. The container of claim 21, wherein the barrier is formed of cardboard.
13. The container of claim 1, wherein the plant fiber is formed from cotton fiber,
corn stalks, or coconut husk.
32. The container of claim 21, wherein the plant fiber is formed from
cotton fiber, corn stalks, or coconut husk.
Appropriate action 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 (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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 21-23, 25 and 28-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lantz (US 2012/0279896) in view of Bentley (US 2010/0258574) in view of Crane (US 2,941,708).
Claim 21. Lantz discloses a thermally insulating container, comprising:
an outer container that is a box formed of a paper and having an outer floor 126C/48 and a plurality of outer walls 130A,B;
an inner container that is a box formed of a paper and having an inner floor 126C/48 and a plurality of inner walls, a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container (fig. 7);
a compostable thermal insulation material 132A,B disposed between the inner walls and the outer walls (fig. 7); and
a barrier 30C formed of paper positioned to cover the thermal insulation material between the inner walls and the outer walls (fig. 2C);
the barrier further comprising a flap 30D extending downwardly from an inner edge of a collar section from one of the plurality of collar sections and along a corresponding inner wall from the plurality of inner walls ([0042]; fig. 2C, 12).
Lantz discloses collar sections but fails to disclose a barrier ring coplanar with the upper surface of the inner and outer containers. Bentley teaches the barrier comprising a plurality of collar sections arranged in a horizontal rectangular ring substantially co-planar with a top of the inner container and below an upper rim of the plurality of outer walls of the outer container ([0037], [0048]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the container of Lantz to include the cover of Bentley to assist in further protecting the stored contents.
Lantz-Bentley fails to disclose a plant fiber insulating material. Crane teaches a recyclable and compostable thermal insulation material formed primarily of plant fiber (col. 1, ll. 15-30; fig. 1, 2, 5). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the thermal insulation material of Lantz to include the plant fiber of Crane to assist in maintaining the integrity of the stored items.
Claim 22. Lantz-Bentley-Crane discloses the container of claim 21, wherein the barrier comprises a plurality of flaps, each respective flap of the plurality of flaps extending downwardly from a respective outer edge of a respective collar section and along a respective corresponding inner wall from the plurality of inner walls (Bentley; fig. 2C, 12).
Claim 23. Lantz-Bentley-Crane discloses the container of claim 22, wherein each flap extends partially but not entirely along a height of the corresponding inner wall (Lantz; fig. 12, 14).
Claim 25. Lantz-Bentley-Crane discloses the container of claim 21, wherein the flap extends partially but not entirely along the inner wall (Lantz; fig. 2C)
Claim 28. Lantz-Bentley-Crane discloses the container of claim 21, wherein the barrier is formed of cardboard (Lantz; [0040]).
Claim 29. Lantz-Bentley-Crane discloses the container of claim 28, wherein the inner container and outer container are cardboard or paperboard (Lantz; [0040]).
Claim 30. Lantz-Bentley-Crane discloses the container of claim 21, wherein the flap extends along an inner surface of the corresponding inner wall (Lantz; fig. 2C).
Claim 31. Lantz-Bentley-Crane discloses the container of claim 21, wherein the flap is secured to the inner wall (Lantz; fig. 2C).
Claim 32. Lantz-Bentley-Crane discloses the container of claim 21, wherein the plant fiber is formed from cotton fiber, corn stalks, or coconut husk (Lantz; [0052]).
Claim 59. Lantz-Schryver-Crane discloses the container of claim 21, comprising a rectangular insert 42that fits inside the plurality of outer walls and above the inner cavity and the plurality of collar sections, wherein the rectangular insert comprises a filler surrounded by sheets formed of a compostable or recyclable plant material (Lantz; [0050], fig. 1) and a recyclable and compostable thermal insulation material formed primarily of plant fiber (Crane; col. 1, ll. 15-30; fig. 1, 2, 5).
Claim(s) 58, 62, 64-66 and 68-70 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lantz (US 2012/0279896) in view of Schryver (US 10,307,761) in view of Crane (US 2,941,708).
Claim 58. Lantz discloses a thermally insulated container comprising:
an outer container that is a box formed of a paper and having an outer floor 126C/48 and a plurality of outer walls 130A,B;
an inner container that is a box formed of a paper and having an inner floor 126C/48 and a plurality of inner walls, a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container (fig. 7);
a compostable thermal insulation material 132A,B disposed between the inner walls and the outer walls (fig. 7).
Lantz fails to disclose a collar. Schryver teaches a thermally insulating container (col. 11, ll. 30-50), comprising:
an outer container 11 having an outer floor 3, a plurality of outer walls;
an inner container 4 having a plurality of inner walls and located within the outer container (fig. 2C), a space 13 between the plurality of inner walls and plurality of outer walls defining an outer cavity, and a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container (fig. 2C);
a collar 2 removably fit between the inner container and the outer container to cover the thermal insulation material between the inner container and outer container, the collar forming a rectangular ring extending between the plurality of inner walls and the plurality of outer walls and positioned to so as to be substantially co-planar with a top edge of the inner container (col. 8, ll. 49-67). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the container opening of Lantz to include the cover/collar of Schryver to assist in protecting the stored contents from environmental contamination.
Lantz-Schryver fails to disclose a plant fiber insulating material. Crane teaches a recyclable and compostable thermal insulation material formed primarily of plant fiber (col. 1, ll. 15-30; fig. 1, 2, 5). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the thermal insulation material of Lantz to include the plant fiber of Crane to assist in maintaining the integrity of the stored items.
Claim 62. Lantz discloses a thermally insulated container comprising:
an outer container that is a box formed of a paper and having an outer floor 126C/48 and a plurality of outer walls 130A,B;
an inner container that is a box formed of a paper and having an inner floor 126C/48 and a plurality of inner walls, a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container (fig. 7);
a compostable thermal insulation material 132A,B disposed between the inner walls and the outer walls (fig. 7);
a rectangular insert 40, 42 of insulative material that fits inside the four sidewalls of the outer container and on the barrier and above the inner cavity [0050].
Lantz fails to disclose a collar. Schryver teaches a thermally insulating container (col. 11, ll. 30-50), comprising:
an outer container 11 having an outer floor 3, a plurality of outer walls;
an inner container 4 having a plurality of inner walls and located within the outer container (fig. 2C), a space 13 between the plurality of inner walls and plurality of outer walls defining an outer cavity, and a space interior to the plurality of inner walls defining an inner cavity to hold a product for shipping in the container (fig. 2C);
a collar 2 removably fit between the inner container and the outer container to cover the thermal insulation material between the inner container and outer container, the collar forming a rectangular ring extending between the plurality of inner walls and the plurality of outer walls and positioned to so as to be substantially co-planar with a top edge of the inner container (col. 8, ll. 49-67). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the container opening of Lantz to include the cover/collar of Schryver to assist in protecting the stored contents from environmental contamination.
Lantz-Schryver fails to disclose a plant fiber insulating material. Crane teaches a recyclable and compostable thermal insulation material formed primarily of plant fiber (col. 1, ll. 15-30; fig. 1, 2, 5). Therefore, it would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the invention to modify the thermal insulation material of Lantz to include the plant fiber of Crane to assist in maintaining the integrity of the stored items.
Claim 64. Lantz-Schryver-Crane discloses the container of claim 62, wherein the outer container includes one or more flaps 30C extending from the upper rim of the sidewalls 30A of the outer container, the one or more flaps foldable to cover the rectangular insert and close the shipping container (Lantz; fig. 2C, 12).
Claim 65. Lantz-Schryver-Crane discloses the container of claim 62, wherein the rectangular collar completely covers the top surface of the thermal insulation material disposed in the outer cavity (Schryver; fig. 2C).
Claim 66. Lantz-Schryver-Crane discloses the container of claim 62, wherein the outer container is cardboard (Lantz; [0040]).
Claim 68. Lantz-Schryver-Crane discloses the container of claim 62, wherein the thermal insulation material disposed in the outer cavity abuts at least a portion of the sidewalls of the outer container without an intervening wall (Lantz; fig. 4).
Claim 69. Lantz-Schryver-Crane discloses the container of claim 68, wherein the thermal insulation material disposed in the outer cavity abuts at least a portion of the sidewalls of the inner container without an intervening wall (Lantz; fig. 4).
Claim 70. Lantz-Schryver-Crane discloses the container of claim 62, wherein the thermal insulation material disposed in the outer cavity sits above the floor of the outer container without an intervening floor (Lantz; fig. 5).
Allowable Subject Matter
Claims 43-57, 61 are allowed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAVEN COLLINS whose telephone number is (571)270-1672. The examiner can normally be reached Monday-Friday 8:30am to 5:00pm EST.
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/RAVEN COLLINS/ Examiner, Art Unit 3735
/Anthony D Stashick/ Supervisory Patent Examiner, Art Unit 3735