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 .
Election/Restrictions
Applicant’s election without traverse of Species 3 (Figures 9-12 and claims 1-20) in the reply filed on 12/04/2025 is acknowledged.
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 1-13 and 22-23 of U.S. Patent No. 12415649; claims 1-18 of U.S. Patent No. 11247806; and claims 1-12 or U.S. Patent No. 11027875. Although the claims at issue are not identical, they are not patentably distinct from each other because each claim a telescoping insulated box assembly comprising an inner box and outer box wherein the outer box is formed from a blank defining a double wall construction (i.e. inner and outer wall panels) with a connecting strip connecting an inner side wall with an outer side wall; said inner side walls further comprising tabs; and a first connecting strip having an access tab blank extending therefrom.
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.
Claim(s) 1-2, 5, and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezich et al. (US 9635916 B2; hereinafter Bezich) in view of Jobe (US 2019/0367209 A1; hereinafter Jobe).
Regarding claims 1-2, 5, and 11-12, Bezich discloses a hybrid modular storage container comprising an outer box blank configured to define an outer box comprising a plurality of outer side walls (54/56; see Fig. 3), the outer box blank comprising a first outer side panel (56), a first inner side panel (68), and a first connecting strip (84), the first connecting strip joined to a top of the first outer side panel by a first fold line (70) and a top of the first inner side panel by a second fold line (74; see Fig. 3), the first outer side panel, the first inner side panel, and the first connecting strip configured to at least partially define a first outer sidewall defining a first insulation cavity within the first outer side wall (88; see Fig. 4A). Examiner notes that Bezich’s container comprises four inner panels with four connecting strips connecting each of four respective inner panels to a respective outer panel. Examiner considers paperboard to be repulpable. Bezich lacks an inner box formed from an associated inner box blank.
Jobe teaches a thermal insulation article with compostable panel and paper film comprising an outer box (20) with a smaller inner box (90) of similar construction telescoped within (see Fig. 8). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify Bezich’s hybrid container to comprise an inner box of smaller scale to that of Bezich’s outer box positioned inside of said outer box in order to provide further insulative characteristics for shipping (Jobe; see Par. 0096-0097).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bezich in view of Jobe as applied to claims above, and further in view of Wonnacott (GB 2400096 A).
Regarding claim 10, Bezich, as modified above, discloses the claimed invention except for inner bottom panels. Wonnacott teaches a cool box of folded material and a method of making wherein a blank for making further comprises an inner bottom panel (231-234) joined to an inner side panel (131-134) by a fold line (see Fig. 1). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to further modify Bezich’s container to include inner bottom panels foldably attached to inner side panels in order to further reinforce and insulate the container construction (Wonnacott; Page 5 line 30-Page 6 line 6).
Allowable Subject Matter
Claims 3-4 and 6-9 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.
Claims 13-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to disclose or suggest inner side panels with tabs [Claims 3-4, 6-7, and 13-20]; and access tab blanks extending from connecting strips [Claims 8-9].
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R DEMEREE whose telephone number is (571)270-1982. The examiner can normally be reached 9:00 am - 5:00 pm, Monday through Friday.
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 J 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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/CHRISTOPHER R DEMEREE/Primary Examiner, Art Unit 3734