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 .
Election/Restrictions
Applicant's election with traverse of Claims 13-27 and 32 in the reply filed on 09/14/2026 is acknowledged. The traversal is on the ground(s) that the method claims read like a product claim. This is not found persuasive and the Restriction Requirement dated 07/14/2026 is hereby withdrawn.
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 13-27 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11214428; claims 1-20 of U.S. Patent No. 11597581; claims 1-11 of U.S. Patent No. 11919700; and claims 1-11 of U.S. Patent No. 12269665. Although the claims at issue are not identical, they are not patentably distinct from each other because each claim a folded box comprising four sides extending from a bottom panel; a top panel including a closure tab; an opposing securing panel for securing the top panel by inserting the closure tab through cuts, or slots, on the securing panel; and said cuts further subdivide the securing panel into two distinct subpanels.
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.
Claim(s) 13-15, 22-24, and 28-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mittelstaedt (US 7673787 B2).
Regarding claims 13-15, 22-24, and 28-30, Mittelstaedt discloses a storage container and blank for making comprising a storage portion, including a bottom panel (102; see Fig. 1), a pair of end panels (116), and a pair of side panels (104/106); a top panel (110) comprising a tab (128), the top panel being attached to one of the pair of side panels and pivotable relative thereto about a fold line (124; see Fig. 1); and a securing panel (108) for securing the box in a closed position, the securing panel being attached to the other one of the pair of side panels and pivotable relative thereto about a fold line (130; see Fig. 1); wherein the securing panel defines an opening (136) through which the tab of the top panel extends (see Fig. 3) when the box is in the closed position and the securing panel is folded over the top panel.
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.
Claim(s) 16, 25, and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mittelstaedt in view of Westerman et al. (US 6736309 B1; hereinafter Westerman).
Regarding claims 16, 25, and 31, Mittelstaedt discloses the claimed invention except for a water-resistant coating. Westerman teaches a quick erecting foldable portable cooler wherein a waterproof or water-resistant coating is applied to a sheet of material for forming the portable cooler (Col 4 lines 1-15). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify Mittelstaedt’s container to have a coating in order to protect and preserve the container, as taught by Westerman.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mittelstaedt in view of Gullickson (US 3193176 A).
Regarding claim 17, Mittelstaedt discloses the claimed invention except for a collapsed configuration. Gullickson teaches a collapsible reusable carton with reinforced end panel hand holes (see Figure 1-6). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify Mittelstaedt’s container to be collapsible in order to allow for the container to be re-used multiple times and take up minimal storage space while not in use (Gullickson; Col 1 lines 9-20).
Allowable Subject Matter
Claims 18-21, 26-27, and 32 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R DEMEREE whose telephone number is (571)270-1982. The examiner can normally be reached 9:00 am - 5:00 pm, Monday through 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, NATHAN J NEWHOUSE can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R DEMEREE/Primary Examiner, Art Unit 3734
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