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 .
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 1-23, are rejected on the ground of nonstatutory double patenting as being unpatentable over issued claim of U.S. Patent No. 12434898. Although the claims at issue are not identical, they are not patentably distinct from each other because from a basic review the parent issued claims define all of the current claim structure.
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) 2-10,15-20,25-28,30, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hall (USPN 8,763,886).
With respect to claim 2, Hall shows a thermal insulation article (fig. 1) for placement in a shipping container (20) to hold an item, comprising: a flexible thermally insulating pad (10) shaped to be positioned in a cavity of a rectangular prism shipping container (20) to be adjacent to and cover from two to five out of a floor, four side walls and cover of the container while leaving an interior space to receive the item, wherein the thermally insulating pad comprises: a flexible panel (52) that holds together as a single unit and is formed primarily of paper fiber; and a flexible film (160) secured to the panel along at least a portion of opposite surfaces of the panel (52), wherein the thermal insulating pad is recyclable (paper base column 4 line 32).
With respect to claim 3, Hall shows wherein the flexible film (160) comprises a first paper sheet (176) and a second paper sheet (174) that sandwich and are directly secured to the flexible panel (52). (see figs. 6-9)
With respect to claim 4, Hall shows wherein the first paper sheet (176) is positioned on an opposite external surface of the flexible panel (52) than the second paper sheet (174).
With respect to claim 5, Hall shows wherein the flexible panel (52) is formed of a material sufficiently soft to be manually folded. (paper based, shown as corrugated cardboard in fig. 1, but can be other materials see column 4 paragraphs 2-5)
With respect to claim 6, Hall shows wherein the flexible panel (52) is formed primarily of plant fiber (cellulose fiber disclosed column 4 line 26).
With respect to claim 7, Hall shows wherein the plant fiber comprises fibers from wood (paper is made from wood).
With respect to claim 8, Hall shows wherein the flexible panel (52) has a thickness between about inch and about 1 inch. ( 0.2 - 2 inches column 10 line 55)
With respect to claim 9, Hall shows wherein the flexible film (160) comprises paper (column 4 line 10).
With respect to claim 10, Hall shows wherein the flexible film (160) comprises a water- resistant or water-proof coating (plastic or foil, paragraph 4 line 13) on a surface facing the flexible panel (52).
With respect to claim 15, Hall shows a thermal insulation article (fig. 1) for placement in a shipping container (20) to hold an item, comprising: a flexible thermally insulating pad (10) shaped to be positioned in a cavity of a rectangular prism shipping container (20) to be adjacent to and cover from two to five out of a floor, a plurality of side walls and cover of the container while leaving an interior space to receive the item, wherein the thermally insulating pad comprises: a flexible panel (52) that holds together as a single unit and is formed primarily of paper fiber (paper based col 4 line 10) ; and a flexible paper film (160, column 4 line 13 discloses paper) forming a pocket (fig. 8) enclosing the flexible panel (52) and providing both an interior surface of the pad to face the interior space and an exterior surface of the pad to face the respective floor (see fig.1 ), the plurality of side walls, or the cover, wherein the thermal insulating pad is recyclable (column 4 line 29).
With respect to claim 16, Hall shows wherein the flexible paper film (160) comprises a first paper sheet (176) and a second paper sheet (174) that sandwich and are directly secured to the flexible panel (52).
With respect to claim 17, Hall shows wherein the flexible paper film comprises a first paper sheet (176) and a second paper sheet (174), and wherein one or more edges of the first paper sheet (176) and one or more edges of the second paper sheet (174) are sealed together. (fig. 8)
With respect to claim 18, Hall shows wherein the flexible panel (52) has a thickness between about .25 inch and about 1 inch. ( 0.2 - 2 inches column 10 line 55)
With respect to claim 19, Hall shows wherein the flexible paper film (160) comprises a water-resistant or water-proof coating(foil and plastic disclosed column 4 line 13) on a surface facing the flexible panel (52).
With respect to claim 20, Hall shows wherein the flexible panel (52) sits loose inside the pocket such that the flexible panel (52) can slide inside the pocket relative to the flexible paper film (160) (fig. 8 show panel being slid into pocket).
With respect to claim 25, Hall shows a thermal insulation article (fig. 1) for placement in a shipping container (20) to hold an item, comprising: a flexible thermally insulating pad (10) shaped to be positioned in a cavity of a rectangular prism shipping container (20) while leaving an interior space to receive the item, wherein the thermally insulating pad comprises: a flexible panel (52) that holds together as a single unit and is formed primarily of organic fiber (cellulose fiber column 4 line 26); and a flexible paper film (160) positioned on the panel along at least a portion of opposite surfaces of the panel, wherein the thermal insulating pad is recyclable (column 4 line 29).
With respect to claim 26, Hall shows wherein the flexible paper film (160) comprises a first paper sheet (176) and a second paper sheet (174) that sandwich and are directly secured to the flexible panel (52).
With respect to claim 27, Hall shows wherein the flexible paper film comprises a first paper sheet (176) and a second paper sheet (174), and wherein one or more edges of the first paper sheet (176) and one or more edges of the second paper sheet (174) are sealed together thereby enclosing the flexible panel (52) in a pocket. (fig. 8 shows pocket being filled by the panel sliding into a sealed pocket)
With respect to claim 28, Hall shows wherein the flexible panel (52) sits loose inside the pocket such that the flexible panel (52) can slide inside the pocket relative to the flexible paper film (160) (see again fig. 8).
With respect to claim 30, Hall shows wherein the flexible paper film (160) comprises a water-resistant or water-proof coating (plastic or foil column 4 line 13) on a surface of the flexible paper film facing the flexible panel (52).
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) 11-12,21-23,29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hall.
Hall discloses the invention substantially as claimed. Hall shows voids in the corrugated panel (50) in (fig. 1), but it cannot be compared or determined how much they occupy.
However Hall does not disclose claim 11,21,, wherein the flexible panel (52) comprises pores or voids that occupy 50% to 75% of the volume of the flexible panel (52),claim 12,22, wherein the flexible panel (52) comprises pores or voids that occupy 25% to 50% of the volume of the flexible panel (52), claims 13,23,29, wherein the flexible panel (52) comprises pores or voids that occupy 25% to 75% of the volume of the flexible panel (52).
It would have been obvious to one having ordinary skill in the art before the effective filing date that It would have been an obvious matter of design choice to choose the amount of voids to occupy, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Denser less voids would be trougher and more impact resistant for heavier content and vis versa.
Claims 14,24 and 31, are rejected under 35 U.S.C. 103 as being unpatentable over Hall.
Hall discloses the invention substantially as claimed.
However Hall does not disclose wherein the
Youngs modulus is a stress strain measurement and Hall is silent on this claimed property and applicant has not defined that this property is critical or novel in the specific ion. It is the office’s view that this claimed property is interpreted as inherent to the many disclosed materials of Hall. See MPEP 2112.01 copied below.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN M BRADEN whose telephone number is (571)272-8026. 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, Orlando E Aviles-Bosques can be reached at 571 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAWN M BRADEN/Primary Examiner, Art Unit 3736
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