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 .
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 “substantially flat surface” in line 5 of Claim 1, the “common surface” in Page 42, line 4 of Claim 9, and the “two compartments sit flush with each other” in Page 42, line 4 of Claim 17 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 § 102
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) 1, 4-8, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lepinoy (US 5,009,318).
1: Lepinoy teaches an article (article generally shown in Figure 4) for packing an unclaimed object, comprising: a flexible bag (bag 10 with valve 16), including an air valve; wherein the flexible bag comprises at least two compartments (compartments 11 and 12); wherein two compartments of the at least two compartments share a common substantially flat surface (surface of 11 and 12 when folded to face each other); wherein the flexible bag includes a sealed interior chamber (chamber within 11 or 12) containing packaging material (granular material, col. 4, ll. 19-40); wherein the air valve is operable to release air from within the flexible bag (capable of drawing air out through 16, col. 4, ll. 16-40); wherein the release of the air from within the flexible bag causes the packaging material to be displaced and compact around an object placed on top of the flexible bag (when air is evacuated, granular material condenses around object placed within opening 13, above a top of 12); wherein the compaction of the packaging material around the object causes an impression in the shape of the object to form on a top surface of the flexible bag; and wherein the flexible bag retains the impression of the object after the object is removed (since the bag and particles becomes rigid in the in the shape formed about the object after air is evacuated, the shape is retained after the object is moved/removed).
4: Lepinoy teaches the claimed invention as discussed above for Claim 1 and Lepinoy further teaches that the flexible bag is operable to conform to the interior surface of a bottom component of a case (since flexible bag is operable to condense around the surrounding object, the bag is capable of conforming to a bottom of an unclaimed case).
5: Lepinoy teaches the claimed invention as discussed above for Claim 1 and Lepinoy further teaches that the packaging material includes materials made from polystyrene and/or polylactic acid (polystyrene balls, col. 3, ll. 43-45).
6: Lepinoy teaches the claimed invention as discussed above for Claim 1 and Lepinoy further teaches that the flexible bag is operable to be connected to and inflated by a pump (capable of being inflated by an unclaimed pump via component 16).
7: Lepinoy teaches the claimed invention as discussed above for Claim 1 and Lepinoy further teaches that the flexible bag substantially covers the interior surface of a bottom component of a case (capable of covering, the unclaimed interior surface).
8: Lepinoy teaches the claimed invention as discussed above for Claim 1 and Lepinoy further teaches that the unclaimed object is a firearm, a sporting good, a musical instrument, a camera, a scientific instrument, equipment, or art (capable of accommodating an unclaimed object).
17: Lepinoy teaches an article (article generally shown in Figure 4) for packing an unclaimed object, comprising: a retaining element (element 10 shown in Figure 4), including an air valve; wherein the retaining element comprises at least two compartments (compartments 11 and 12); wherein the at least two compartments sit flush with each other (surface of 11 and 12 when folded to face each other, the surface around the object are flushed with each other); wherein the retaining element includes packaging material (granular material, col. 4, ll. 19-40); wherein the air valve is operable to release air from within the retaining element (capable of drawing air out through 16, col. 4, ll. 16-40); and wherein the release of the air from within the retaining element causes the packaging material to be displaced and compact around an object placed on top of the retaining element (when air is evacuated, granular material condenses around object placed within opening 13, above a top of 12).
18-19: Lepinoy teaches the claimed invention as discussed above for Claim 17 and Lepinoy further teaches that the compaction of the packaging material around the object causes an impression in the shape of the object to form on a top surface of the retaining element and the retaining element retains an impression of the unclaimed object after the unclaimed object is removed (since the bag and particles becomes rigid in the in the shape formed about the object after air is evacuated, the shape is retained after the object is moved/removed).
20: Lepinoy teaches the claimed invention as discussed above for Claim 17 and Lepinoy further teaches that the unclaimed object is a firearm, a sporting good, a musical instrument, a camera, a scientific instrument, equipment, or art (capable of accommodating an unclaimed object).
Claim Rejections - 35 USC § 103
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) 2, 9-10, and 12-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lepinoy (US 5,009,318) in view of Bender (US 5,351,830).
2: Lepinoy teaches the claimed invention as discussed above for Claim 1 except that the flexible bag is attached to an interior surface of a bottom component of a case.
Bender teaches that element 12 is attached to the bottom component of a case via 50, see Figure 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lepinoy such that the teaching of a shock absorption element being placed in case and secured to a component at a bottom of a case was applied to Bender in order to permit a case to provide ease of shipping and containing both the shock absorption element and the object to be protected together.
9-10: Lepinoy teaches a system (system generally shown in Figure 4) for packing an unclaimed object, comprising: a flexible bag (bag 10 with valve 16), including an air valve (bag 10 with valve 16); wherein the flexible bag comprises at least two compartments (compartments 11 and 12); wherein the at least two compartments are connected by a common surface (11 and 12 are connected by a hinge area between 11 and 12, Figure 4); wherein the flexible bag is operable to be positioned in the case (capable of being positionable in a case); wherein the flexible bag includes a sealed interior chamber (chamber within 11 or 12) containing packaging material (granular material, col. 4, ll. 19-40); wherein the air valve is operable to release air from within the flexible bag (capable of drawing air out through 16, col. 4, ll. 16-40); wherein the packaging material is operable to rearrange around an object placed on top of the flexible bag (when air is evacuated, granular material condenses around object placed within opening 13, above a top of 12), creating an impression in the shape of the object to form on a top surface of the flexible bag; and wherein the flexible bag retains the impression of the object after the object is removed (since the bag and particles becomes rigid in the in the shape formed about the object after air is evacuated, the shape is retained after the object is moved/removed) except for a case in combination and the flexible bag is attached to an interior surface of a bottom component of the case.
Bender teaches that element 12 is attached to the bottom component of a case 40 via 50, see Figure 8.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Lepinoy such that the teaching of a shock absorption element being placed in case and secured to a component at a bottom of a case was applied to Bender in order to permit a case to provide ease of shipping and containing both the shock absorption element and the object to be protected together.
12: Lepinoy-Bender teaches the claimed invention as discussed above for Claim 9 and Lepinoy further teaches that the flexible bag is operable to conform to the interior surface of a bottom component of a case (since flexible bag is operable to condense around the surrounding object, the bag is capable of conforming to a bottom of an unclaimed case).
13: Lepinoy-Bender teaches the claimed invention as discussed above for Claim 9 and Lepinoy further teaches that the packaging material includes materials made from polystyrene and/or polylactic acid (polystyrene balls, col. 3, ll. 43-45).
14: Lepinoy-Bender teaches the claimed invention as discussed above for Claim 9 and Lepinoy further teaches that the flexible bag is operable to be connected to and inflated by a pump (capable of being inflated by an unclaimed pump via component 16).
15: Lepinoy-Bender teaches the claimed invention as discussed above for Claim 9 and Lepinoy further teaches that the flexible bag substantially covers the interior surface of a bottom component of a case (capable of covering, the unclaimed interior surface).
16: Lepinoy-Bender teaches the claimed invention as discussed above for Claim 9 and Lepinoy further teaches that unclaimed object is a firearm, a sporting good, a musical instrument, a camera, a scientific instrument, equipment, or art (capable of accommodating an unclaimed object).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lepinoy (US 5,009,318) in view of Perkins (US 8,783,776).
3: Lepinoy teaches the claimed invention as discussed above for Claim 1 except rotation of the air valve allows air to flow into the flexible bag or prevents air from flowing into the flexible bag.
Perkins teaches that rotating the nozzles 43 to enable air to flow through the and inflate each inflatable pillow 40 as desired; deflating each pillow assembly 20, 25 as desired via opening the pillow nozzles 43, col. 5, ll. 17-33.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lepinoy such that that the teaching of rotation of the air valve allows air to flow into the flexible bag or prevents air from flowing into the flexible bag was applied to Lepinoy in order to permit inlet or outlet of air according to a user’s choice in order to permit ease of use.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lepinoy (US 5,009,318) in view of Bender (US 5,351,830) and further in view of Perkins (US 8,783,776).
11: Lepinoy-Bender teaches the claimed invention as discussed above for Claim 1 except rotation of the air valve allows air to flow into the flexible bag or prevents air from flowing into the flexible bag.
Perkins teaches that rotating the nozzles 43 to enable air to flow through the and inflate each inflatable pillow 40 as desired; deflating each pillow assembly 20, 25 as desired via opening the pillow nozzles 43, col. 5, ll. 17-33.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Lepinoy-Bender such that that the teaching of rotation of the air valve allows air to flow into the flexible bag or prevents air from flowing into the flexible bag was applied to Lepinoy in order to permit inlet or outlet of air according to a user’s choice in order to permit ease of use.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,222,189. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to An article for packing an object, comprising: a flexible bag, including an air valve; wherein the flexible bag comprises at least two compartments; wherein two compartments of the at least two compartments share a common substantially flat surface; wherein the flexible bag includes a sealed interior chamber containing packaging material; wherein the air valve is operable to release air from within the flexible bag; wherein the release of the air from within the flexible bag causes the packaging material to be displaced and compact around an object placed on top of the flexible bag; wherein the compaction of the packaging material around the object causes an impression in the shape of the object to form on a top surface of the flexible bag; and wherein the flexible bag retains the impression of the object after the object is removed except that the two compartments are stacked vertically.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the US Patent such that the teaching of the two compartments stacked vertically are omitted from the current invention since omission of an element and its function is obvious if the function of the element is not desired, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,435,161 and Claims 1-19 of U.S. Patent No. 11,635,278. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to a system for packing an object, comprising: a case; and a flexible bag, including an air valve; wherein the flexible bag is operable to be positioned in a case; wherein the flexible bag includes a sealed interior chamber containing packaging material; wherein the air valve is operable to release air from within the flexible bag, causing the packaging material to compact; wherein the release of the air from within the flexible bag causes the packaging material to be displaced and condense around an object placed on top of the flexible bag; wherein the condensing of the packaging material around the object causes an impression in the shape of the object to form on a top surface of the flexible bag; and wherein the flexible bag retains the impression of the object after the object is removed except for the functional inclusion of a pump, and Bender et al. (Bender US 5,351,830) teaches the inclusion of a pump, and It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the previous patents such that the functional limitation of the pump was omitted since omission of an element and its function is obvious if the function of the element is not desired, In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KING M CHU whose telephone number is (571)270-7428. The examiner can normally be reached Monday - Friday 10AM - 6PM EST.
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/King M Chu/Primary Examiner, Art Unit 3735