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 .
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.
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.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazzucchelli (US 9,504,598) in view of Lepinoy (US 5,009,318) and further in view of Baker (US 2011/0139668).
17: Mazzucchelli teaches an article for packing an object (article 1 for packing an unclaimed object 100), comprising: a retaining element (retaining element comprising 20 and 40), including an air valve (valve 43); and wherein the retaining element includes a plurality of sections (section formed by 33, each section separated by 32, Figure 1b) including internally separated interior chambers (chambers within 33 and 32); wherein the internally separated interior chambers include a plurality of packing materials (beads/filler particles in the form of beads 31); wherein the internally separated interior chambers limiting the gravitational flow of the plurality of microbeads within the internally separated interior chambers (walls 32, limits the flow of the packing materials 31); wherein the air valve (43) is operable to release air from within the retaining element (43 is capable of releasing air from within 40).
Mazzucchelli teaches the claimed invention as discussed above for Claim 1 and Mazzucchelli further teaches that the packing elements are filler particles but does not explicitly teach that the packaging elements are microbeads.
Lepinoy teaches beads/balls, which are granular filling material, that are the size of one to two millimeters, col. 5, ll. 20-27.
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 Mazzucchelli such that the packing element filler particles are of a beads in the size of one to two millimeters in order to provide and permit sufficient gripping pressure on an object that is to be packaged.
Mazzucchelli-Lepinoy teaches the claimed invention as discussed above except the internally separated interior chambers include one or more welds.
Baker teaches welds (9, 10, 11, 12 and 13) forming dividing portions along Figure 9.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mazzucchelli-Lepinoy such that the teaching of the internally separated interior chambers include one or more welds were applied since welding to attach elements or forming dividers in sheets were commonly known in the art to form fill pockets, cushions or dividers, as taught by Baker (paragraph 0029).
18: Mazzucchelli-Lepinoy-Baker teaches the claimed invention as discussed above for Claim 17 except that the plurality of microbeads are formed of polystyrene, expanded polyethylene, and/or polylactic acid.
Lepinoy teaches that the filler material are polystyrene balls, col. 1, ll. 60-66.
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 Mazzucchelli such that the teaching of the plurality of microbeads are formed of polystyrene, expanded polyethylene, and/or polylactic acid were applied in order to provide sufficient shock absorbing property and it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. In re Leshin, 125 USPQ 416.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazzucchelli (US 9,504,598) in view of Lepinoy (US 5,009,318) and further in view of Baker (US 2011/0139668) and Dickinson (US 7,106,202).
19: Mazzucchelli-Lepinoy-Baker teaches the claimed invention as discussed above for Claim 17 except the one or more welds are circular, hexagonal, and/or diamond-shaped.
Dickinson teaches that welds where panels 81 and 83 are secured are a matrix of spot welds, which are circular (see Figures 10 and 11, col. 9, ll. 58 – col. 10, ll. 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mazzucchelli-Lepinoy-Baker such that the teaching of the one or more welds are circular, hexagonal, and/or diamond-shaped were applied since spot welds are common means of welding in the art creating a circular weld spot and furthermore, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazzucchelli (US 9,504,598) in view of Lepinoy (US 5,009,318) and further in view of Baker (US 2011/0139668) and Judy (US 8,859,913).
20: Mazzucchelli-Lepinoy-Baker teaches the claimed invention as discussed above for Claim 17 except he retaining element includes at least one heat shield layer and/or at least one Faraday-shielding layer.
Judy teaches a Faraday-shielding layer (110) made of metalized fabric (col. 5, ll. 65-67) in combination with a protective layer (108).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Mazzucchelli-Lepinoy-Baker such that the teaching of a Faraday-shielding layer connected to the flexible bag and the Faraday-shielding layer is a textile layer formed from one or more metal materials were applied in order to protect stored electronic devices from electromagnetic interference, radiofrequency interference, and any other wireless signals (generally referred to as EMI) that may interfere with, modify, or otherwise, compromise information stored, received, or transmitted by the stored electronic device, as taught by Judy, col. 5, ll. 3-18.
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 1-17 of U.S. Patent No. 12,117,263. 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: an exterior container shell; at least one retaining element attached to at least one interior surface of the exterior container shell, wherein the at least one retaining element includes an interior chamber; a plurality of tubes attached to an interior surface of the interior chamber of the at least one retaining element; and a plurality of packaging elements within the plurality of tubes within the interior chamber of the at least one retaining element; wherein the at least one retaining element includes at least one valve configured to allow or restrict air flow into and out of the at least one retaining element; and wherein each of the plurality of tubes are substantially parallel; except that the ends of the plurality of tubes are welded shut.
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 prior patent such that omission of the plurality of tubes are welded shut were 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272 - 4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/King M Chu/Primary Examiner, Art Unit 3735
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