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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 cooling system” in claim 6 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 Objections
Claim 4 is objected to because of the following informalities:
Claim 4 recites “concentration of the PEG-4000” which appears to be a typographical error and is interpreted to recite -- a concentration of the PEG-4000 --.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “the cooling system” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 6 further recites the limitations “to display the current temperatures of the cooling solution by connecting with the cooling system” The term “system” invokes a claim interpretation governed under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph), which requires a review of the specification to determine the appropriate structure, material or act to carry out the claimed limitation. However, the specification as originally filed, fails to describe a corresponding structure or technique by which a system cools. A mere restatement of the function does not suffice as a statement of structure. Thus, it does not appear that applicant had possession of the claimed invention because the specification does not disclose a structure which is capable of cooling. When a description of the structure, material or act is not provided or is not sufficient to perform the entire claimed function, or no association between the structure and the claimed function can be found in the specification, the written description fails to clearly define the boundaries of the claim
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.
Claim 6 is 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.
Claim 6 recites “to display the current temperatures of the cooling solution by connecting with the cooling system” which renders the claim indefinite because a cooling system is not described in the specification and therefore a search for patentability could not be conducted.
Claim limitation “the cooling system” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification does not disclose a structure which is capable of cooling.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 5, 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mowery et al (US 20200290790) as in view of Tarantino et al (US 10876780).
Regarding claim 1, Mowery teaches a thermostable system (fig. 1) for cold-chain (paragraph 0051) comprising: an insulation container (1, paragraph 0054) for storage and shipment of goods (temperature sensitive material, paragraph 0054) at low temperature ranges (paragraph 0051), wherein the said container is made up of polyurethane (polyurethane, paragraph 0054) and is coated with at least one layer of a damp-proof coating (plastic coating, paragraph 0054); a cooling situation (cooling layer, paragraph 0068) prepared by dissolving Polyethylene Glycol (PEG)-4000 in water (water with additives, propylene glycol, paragraph 0068, Romero et al (US 20100022697 teaches it is known to use PEG 4000 along with propylene glycol, paragraph 0071, 0074), to offer the low temperature ranges required for storing and/or shipment (paragraph 0068) but fails to explicitly teach a double-walled trough, having at least one trough-hole on the top surface of one of its side, to hold the goods to be stored/shipped, wherein the trough is designed such that it can be placed inside the said insulation container of the goods.
However, Tarantino teaches a double-walled trough (1) , having at least one trough-hole (10) on the top surface of one of its side (fig. 1), to hold the goods to be stored/shipped (60), wherein the trough is designed such that it can be placed inside the said insulation container of the goods (figs. 6-7) to maintain the beverage containers in a cold condition until consumption of a beverage in the containers.
Therefore, it would have been obvious to a person skilled in the art before the effective filing date to modify the thermostable system of Mowery to include a double-walled trough, having at least one trough-hole on the top surface of one of its side, to hold the goods to be stored/shipped, wherein the trough is designed such that it can be placed inside the said insulation container of the goods in view of the teachings of Tarantino to maintain the beverage containers in a cold condition until consumption of a beverage in the containers.
Regarding claim 2, the combined teachings teach the said cooling solution (14 of Tarantino) is filled into the trough via the trough-hole (Col. 4, lines 20-32 of Tarantino).
Regarding claim 3, the combined teachings teach the trough is designed to have collapsible handles (67 of Tarantino)) on the top of two of its sides opposite to each other.
Regarding claim 5, the combined teachings teach the insulation container has a top lid (3 of Mowery) fastened to it by means of a plurality of hinges (hinges, paragraph 0054 of Mowery) and wherein the said lid can be opened or closed using one or more latches (fasteners, paragraph 0054 of Mowery) provided on the front sides of the lid and the insulation container.
Regarding claim 8, the combined teachings teach the damp-proof coating is a commercially sourced lightweight and food-grade coating (understood the plastic would be food grade since food grade sources are taught by Mowery in paragraph 0068).
Regarding claim 9, the combined teachings teach a temperature range of 2°C to 15°C (.05-8 degree C, paragraph 0011 of Mowery) is maintained inside the insulation container for a period of 60 to 100 hours (48 to 72 hours, paragraph 0011 of Mowery).
Claim(s) 4, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mowery et al (US 20200290790) as in view of Tarantino et al (US 10876780) as applied to claim 1 and in further view of Wauters et al (US 20060150637).
Regarding claim 4, the combined teachings teach the invention as described above but fails to explicitly teach a concentration of the PEG-4000 in the cooling solution is 30 grams per liter of water.
However, Wauters teaches a concentration of the PEG-4000 in the cooling solution is 30 grams per liter of water (1.5 liters of water and 5% glycol, paragraph 0048) to allow for efficient freezing.
Therefore, it would have been obvious to a person skilled in the art before the effective filing date to modify the thermostable system of the combined teachings to include a concentration of the PEG-4000 in the cooling solution is 30 grams per liter of water in view of the teachings of Wauters to allow for efficient freezing.
Regarding claim 10, it is noted that although the preamble of claim 10 is directed towards a method, the structure of the combined teachings disclose all the structure being provided in the method steps, thus the method is also anticipated by the combined teachings. If a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated or rendered obvious by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently or obviously perform the claimed process. Thus, the method, as claimed, would necessarily result from the normal operation of the apparatus. See MPEP 2112.02. See rejections of claims 1, 4 and 9.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mowery et al (US 20200290790) as in view of Tarantino et al (US 10876780) as applied to claim 5 and in further view of Bloedow et al (US 20140150464).
Regarding claim 6, the combined teachings teach the invention as described above but fails to explicitly teach the lid is equipped with a sensor display screen to display the current temperatures of the cooling solution by connecting with the cooling system via a wire, wherein the said wire is inserted into the trough through the trough-hole.
However, Bloedow teaches the lid is equipped with a sensor display screen (display, paragraph 0035, claim 89) to display the current temperatures of the cooling solution by connecting via a wire (a wire connector, paragraph 0060), wherein the said wire is inserted into the trough through the trough-hole (understood a wire that is capable of being inserted phase change material unit would also be capable of being inserted through 10 of Mowery) to efficiently monitor the temperature of the phase change material.
Therefore, it would have been obvious to a person skilled in the art before the effective filing date to modify the thermostable system of the combined teachings to include the lid is equipped with a sensor display screen to display the current temperatures of the cooling solution by connecting via a wire, wherein the said wire is inserted into the trough through the trough-hole in view of the teachings of Bloedow to efficiently monitor the temperature of the phase change material.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mowery et al (US 20200290790) as in view of Tarantino et al (US 10876780) as applied to claim 1 and in further view of Bienert et al (DE 102005032839).
Regarding claim 7, the combined teachings teach the invention as described above but fails to explicitly teach the insulation container has a wall-thickness of 50 mm.
However, Bienert teaches the insulation container has a wall-thickness of 50 mm (20 to 80 mm thick, pg. 3, last paragraph) to provide for optimized transport of temperature sensitive drugs.
Therefore, it would have been obvious to a person skilled in the art before the effective filing date to modify the thermostable system of the combined teachings to include the insulation container has a wall-thickness of 50 mm in view of the teachings of Bienert to provide for optimized transport of temperature sensitive drugs.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH J MARTIN whose telephone number is (571)270-3840. The examiner can normally be reached 8:30-3:00 CT pm M-F.
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, Jerry-Daryl Fletcher can be reached at (571) 270-5054. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH J MARTIN/Primary Examiner, Art Unit 3763
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