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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: There is lack of antecedent basis for the claim terms: first access opening portion; first access opening; second access opening portion; second access opening; first flap portion; second flap portion; first end of the access flap; and second end of the access flap.
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.
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 1-5, 7-9, and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 10, 12, and 13 of U.S. Patent No. 12,330,856. Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach:
An insulation system for beverage containers comprising: an outer container configured to receive an inner container wherein the inner container is configured to surround a plurality of cylindrical beverage containers in the inner container, wherein the inner container includes a handle; an outer container side panel included in the outer container defining a first access opening portion and a first access opening; a second access opening portion defined in the outer container at an upper area of the outer container, wherein the second access opening portion is configured to form a second access opening; an access flap affixed to the second access opening portion having a first flap portion configured to cover the first access opening portion and a second flap portion configured to cover the second access opening portion wherein the first flap portion is disposed along a first plane and the second flap portion is disposed along a second plane when the access flap is in a closed position.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12, 14, and 15 of U.S. Patent No. 11,160,556. Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach:
An insulation system for beverage containers comprising: an outer container configured to receive an inner container wherein the inner container is configured to surround a plurality of cylindrical beverage containers in the inner container, wherein the inner container includes a handle; an outer container side panel included in the outer container defining a first access opening portion and a first access opening; a second access opening portion defined in the outer container at an upper area of the outer container, wherein the second access opening portion is configured to form a second access opening; an access flap affixed to the second access opening portion having a first flap portion configured to cover the first access opening portion and a second flap portion configured to cover the second access opening portion wherein the first flap portion is disposed along a first plane and the second flap portion is disposed along a second plane when the access flap is in a closed position.
Claims 1, 5, 8, 10-14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-9, 14, and 15 of U.S. Patent No. 10,807,787. Although the claims at issue are not identical, they are not patentably distinct from each other because they both teach:
An insulation system for beverage containers comprising: an outer container configured to receive an inner container wherein the inner container is configured to surround a plurality of cylindrical beverage containers in the inner container, wherein the inner container includes a handle; an outer container side panel included in the outer container defining a first access opening portion and a first access opening; a second access opening portion defined in the outer container at an upper area of the outer container, wherein the second access opening portion is configured to form a second access opening; an access flap affixed to the second access opening portion having a first flap portion configured to cover the first access opening portion and a second flap portion configured to cover the second access opening portion wherein the first flap portion is disposed along a first plane and the second flap portion is disposed along a second plane when the access flap is in a closed position.
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) 13-16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by U.S. Patent No. 5,007,250 to Musielak (“Musielak”).
As to claim 13, Musielak teaches an insulation system for beverage containers comprising: an outer container (container 12) configured to receive an inner container (coolant 50) wherein the inner container surrounds a plurality of cylindrical beverage containers (cans 48 in recesses 52 of coolant 50) stacked in a prone configuration widthwise in the inner container; an outer container top panel included in the outer container (Musielak Fig. 5 shows the cans stacked in a prone configuration); an outer container end panel (top 34) included in the outer container configured to cover an opening (Musielak, col. 3, lines 21-24) defined in the outer container where the opening is configured to receive the inner container (Musielak, col. 3, lines 34-37).
As to claim 14, Musielak teaches the insulating system of claim 13 wherein the outer container end panel is hingeably attached to a bottom panel of the outer container (Musielak, col. 3, lines 21-24).
As to claim 15, Musielak teaches the insulating system of claim 13 wherein the outer container end panel is releasably attachable to the outer container top panel (Musielak, col. 3, lines 21-24).
As to claim 16, Musielak teaches the insulating system of claim 13 including a sealing member including at least one of a hook and loop fastener, a zipper (second zipper 20), a snap, or an elastic band.
Conclusion
Applicant is duly reminded that a complete response must satisfy the requirements of 37 C.F. R. 1.111, including: “The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. A general allegation that the claims “define a patentable invention” without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section. Moreover, “The prompt development of a clear Issue requires that the replies of the applicant meet the objections to and rejections of the claims.” Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP 2163.06 and MPEP 714.02. The ''disclosure'' includes the claims, the specification and the drawings.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. PGPUB 2025/0143426 A1 to Closs discloses a thermally insulated luggage system.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MADISON LYNN POOS whose telephone number is (571)270-7427. The examiner can normally be reached Mon-Thus 10-3 EST.
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/M.L.P/Examiner, Art Unit 3733
/NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733 28 July 2026
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