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 Office Action is in response to the applicant’s filing on 02/11/2025.
Applicant’s cancelation of claims 1-22 is acknowledged and require no further examining. Claims 23-42 are pending and examined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/28/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 23-33 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 8-14, and 18 of U.S. Patent No. 12,252,289 in view of reference Qaddoura (9,612,583).
Regarding claim 23, claim 1 of U.S. Patent No. 12,252,289 disclose most of the limitations. However, claim 1 of U.S. Patent No. 12,252,289 does not disclose the step of automatically dispensing packing elements.
Qaddorua discloses a method of packing a container, wherein the method comprises the steps of: obtaining packaging parameters; determining amount of packing elements to be dispensed based on the obtained parameters; and automatically dispensing the determined amount of packing elements. (Column 13 lines 48-67 through Column 14 lines 1-4)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified claim 1 of U.S. Patent No. 12,252,289 by incorporating the step of automatically dispensing the packing elements as taught by Qaddorua, since column 5 lines 53-56 of Qaddorua states such a modification would ensure the determined amount of packing elements is actually dispensed.
Regarding claim 24, claim 2 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 25, claim 3 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 26, claim 4 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 27, claim 8 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 28, claim 9 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 29, claim 10 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 30, claim 11 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 31, claim 12 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 32, claim 13 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 33, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Regarding claim 42, claim 18 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose all the limitations.
Claims 34-36 and 40 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,252,289 in view of reference Qaddoura (9,612,583) as applied to claim 33 above, and further in view of reference Cheich et al. (7,788,884)
Regarding claim 34, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose most of the limitations. However, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua do not disclose packing element volume requirement in the system comprises an angle rotation.
Cheich et al. disclose an automated dunnage filling system (12) comprising collection chamber (314, 354) that either: helps fold the dunnage onto itself in reciprocal motion prior to inserting the dunnage into the container, or helps circulate the dunnage in a rotary motion prior to inserting the dunnage into the container. (Figure 13, 20 and Column 11 lines 26-34, Column 13 lines 61-67 through Column 14 lines 1-5)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified claim 14 of U.S. Patent No. 12,252,289 to include the collection chamber (i.e. rotary packing element expander or reciprocating packing element expander) as taught by Cheich et al., since column 1 lines 35-42 of Cheich et al. states such a modification will ensure the dunnage properly fills the void around the articles.
Regarding claim 35, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua and Cheich et al. disclose all the limitations.
Regarding claim 36, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua and Cheich et al. disclose all the limitations.
Regarding claim 40, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua and Cheich et al. disclose all the limitations.
Claims 37-39 and 41 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,252,289 in view of reference Qaddoura (9,612,583) as applied to claim 33 above, and further in view of reference Corbett et al. (7,849,664)
Regarding claim 37, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua disclose most of the limitations. However, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua do not disclose at least one of a pre-contents requirement and a post-vibration requirement.
Corbett et al. disclose automated dunnage dispensing system comprising the steps of: supplying a container (12) with pre-supplied dunnage (11) and an article, filling the container (12) with dunnage (11), and vibrating the container (12). The step of vibrating the container is interrupted as the calculating the post-vibration requirement of the box. (Figures 4-6 and Column 5 lines 9-23, Column 8 lines 9-14)
It would have been obvious to the person of ordinary skill in the art, before the effective filing date of the applicant’s claimed invention, to have modified claim 14 of U.S. Patent No. 12,252,289 to include the step of vibrating the container (i.e. calculating the post-vibration requirement of the box) as taught by Corbett et al., since column 8 lines 9-14 of Corbett et al. states such modification will encourage the dunnage to settle into the container.
Regarding claim 38, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua and Corbett et al. disclose all the limitations.
Regarding claim 39, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua and Corbett et al. disclose all the limitations.
Regarding claim 41, claim 14 of U.S. Patent No. 12,252,289 modified by Qaddorua and Corbett et al. disclose all the limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK B FRY whose telephone number is (571)272-0396. The examiner can normally be reached on Mon-Thur 7am-4pm.
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/PATRICK B FRY/Examiner, Art Unit 3731 January 22, 2026
/SHELLEY M SELF/Supervisory Patent Examiner, Art Unit 3731