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 information disclosure statement (IDS) submitted on 6/25/2025 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 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-11 of U.S. Patent No. 12,268,292 to Venditti. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-2, claim 1 of Venditti discloses the claimed elements.
Regarding claim 3, claim 2 of Venditti discloses the claimed elements.
Regarding claim 4, claim 3 of Venditti discloses the claimed elements.
Regarding claim 5, claim 5 of Venditti discloses the claimed elements.
Regarding claim 6, claim 7 of Venditti discloses the claimed elements.
Regarding claim 7, claim 4 of Venditti discloses the claimed elements.
Regarding claim 8, claim 8 of Venditti discloses the claimed elements.
Regarding claim 9, claim 9 of Venditti discloses the claimed elements.
Regarding claim 10, claim 10 of Venditti discloses the claimed elements.
Regarding claims 11-12, claim 11 of Venditti discloses the claimed elements.
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) 1 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kickstarter.com (“Kickstarter” – NPL cited by applicant) in view of DE 102014000021 to Wicki and US Patent 6,796,344 to Chen.
Regarding claim 1, Kickstarter discloses a backpack system comprising: a backpack comprising: a top panel extending between top portions of a rear panel, a front wall and first and second side walls (see photos throughout and video on Kickstarter page); a fastener for securing the top panel to the front wall and at least a portion of the first and second side walls such that the top panel is openable and closeable (zipper – see first photo, for example and video at 0:52); and a cooler insert (Kickstarter – pages 19-21) comprising a front wall, a rear wall and first and second side walls. Kickstarter fails to disclose the cooler insert having a top panel and corresponding fasteners on the top panel of the backpack and cooler insert to allow for simultaneous opening. However, Wicki discloses an insert for a carrier that includes a top panel having an exterior face that is connected to the lid for the carrier (page 6, 5th paragraph from the bottom). It would have been obvious to one of ordinary skill to have included a top panel on the backpack inserts to further secure the items within the insert when the insert is outside of the backpack while allowing the insert to automatically open/close when the backpack is opened/closed. To the extent the connection between the insert lid and the backpack lid is not clear, Chen also discloses an insert (38) for a carrier that has closure flaps secured to a pocket with magnets for simultaneous opening and closing (Figs. 1-2). It would have been obvious to one of ordinary skill to have secured the insert lid to the backpack lid using magnets on the interior face of the backpack lid and on the exterior face of the cooler insert lid in the combination because it would relieve the user from having to first open the pocket and then the insert. Alternatively, the modification only involves a simple substitution of one known, equivalent method for coupling an insert lid to a carrier lid for another to obtain predictable results. The combination fails to disclose how the insert top panel is secured. However, Kickstarter discloses a top panel (top panel of backpack) that extends between top portions of the front wall, the rear wall and the first and second side walls, the top panel comprising a fastener (zipper – see photos throughout and video) for securing the top panel to the front wall and at least a portion of the first and second side walls such that the top panel is openable and closeable. It would have been obvious to one of ordinary skill to have used a zipper to close the insert top panel because it would keep the items contained in the insert when it is not in the backpack. Further, with regard to the cooler insert, the modification would improve the temperature regulation within the insert.
Regarding claim 8, Kickstarter discloses wherein the fastener for securing the top panel comprises a zipper (see top zipper in photos throughout and video on kickstarter page).
Regarding claim 9, the combination from claim 1 discloses a method of using a cooler insert in a backpack, the method comprising: providing a backpack comprising: a backpack comprising: a top panel extending between top portions of a rear panel, a front wall and first and second side walls forming a cavity and the rear panel being openable and closeable (Kickstarter – photo on page 21, video at 0:56); a fastener for securing the top panel to the front wall and at least a portion of the first and second side walls such that the top panel is openable and closeable (Kickstarter – see zipper in first photo, for example, and video at 0:52); and at least one fastener (magnets – Wicki/Chen) positioned proximal an interior face of the top panel; and providing a cooler insert (Kickstarter – pages 19-21) comprising: a top panel (Wicki) having an exterior face and extending between top portions of a front wall, a rear wall and first and second side walls; a fastener for securing the top panel to the front wall and at least a portion of the first and second side walls such that the top panel is openable and closeable (see zipper in claim 1 modification based on Kickstarter); and at least one fastener (magnets – Wicki/Chen) positioned proximal the exterior face of the top panel, the at least one fastener positioned proximal the exterior face of the top panel of the cooler insert configured to engage the at least one fastener on the interior face of the top panel of the backpack to permit opening of the top panel of the cooler insert when opening the top panel of the backpack (Wicki); opening the rear panel of the backpack; inserting the cooler insert into the cavity of the backpack (Kickstarter – video at 1:39-1:50); engaging the at least one fastener on the top panel of the backpack with the at least one fastener of the top panel (Wicki/Chen) such that, when opening the top panel of the backpack, the top panel of the cooler insert opens (Wicki); and closing the rear panel of the backpack (Kickstarter, video at 0:56-1:02).
Regarding claim 10, the combination from claim 1 discloses opening the rear panel of the backpack and removing the cooler insert from the cavity of the backpack (Kickstarter – video at 0:56-1:02, 1:39-1:50).
Regarding claim 11, the combination from claim 1 discloses inserting a second insert into the cavity of the backpack and closing the rear panel of the backpack (Kickstarter – video at 1:39-1:50).
Regarding claim 12, the combination from claim 1 discloses inserting a computer sleeve insert having a front sleeve panel and a rear sleeve panel into the cavity of the backpack (Kickstarter pages 23-25) and closing the rear panel of the backpack (Kickstarter video at 2:02-2:04).
Allowable Subject Matter
Claims 2-7 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, and if the double patenting rejection is addressed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT T MCNURLEN whose telephone number is (313)446-4898. The examiner can normally be reached M-F 8am-5pm.
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 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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/SCOTT T MCNURLEN/Primary Examiner, Art Unit 3734
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