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 1 (Figures 1-5 and Claims 1-14) in the reply filed on 06/08/2026 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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12522420; claims 1-15 of U.S. Patent No. 12286286; and claims 1-15 of U.S. Patent No. 11718464 in view of Sollie et al. (US 2020/0148453 A1; hereinafter Sollie). U.S. Patents 12522420, 12286286, and 11718464 each claim an insulation wrap and blank for making; said blank comprising a hinged inner and outer portion with a ledge portion connecting therebetween. U.S. Patents 12522420, 12286286, and 11718464 lack teaching of an insulating plug (i.e. lid) for an outer box. Sollie teaches an insulated box assembly and temperature-regulating lid therefor comprising an insulated plug (i.e. lid; see Figures 18-33) comprising an outer panel (2120) and an insulated plug portion (2502); wherein the insulated plug portion is positioned within the insulated cavity of the insulation wrap and a portion of the outer panel is positioned on the top ledge of the insulation wrap (see Fig. 33). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify U.S. Patents 12522420, 12286286, and 11718464 to have an insulated plug type lid in order to further provide insulating characteristics to the shipping box (Sollie; Par. 0005-0008).
Claim Rejections - 35 USC § 102
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 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) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sollie et al. (US 2020/0148453 A1; hereinafter Sollie).
Regarding claims 1 and 7-11, Sollie discloses an insulated box assembly and temperature-regulating lid comprising an insulation wrap (610) comprising a top ledge (see Fig. 8; Examiner considers the top 616 of the wrap to define a ledge) defining a top opening of an insulated cavity defined by the insulation wrap (see Fig. 8); and an insulated plug (i.e. lid; see Figures 18-33) comprising an outer panel (2120) and an insulated plug portion (2502); wherein the insulated plug portion is positioned within the insulated cavity of the insulation wrap and a portion of the outer panel is positioned on the top ledge of the insulation wrap (see Fig. 33).
Regarding claim 2, Sollie discloses a box wherein the insulated plug portion comprises an insulation batt (see Par. 0142).
Regarding claim 3, Sollie discloses a box wherein the insulated plug further comprises an inner panel (2130) and the insulation batt is positioned between the outer panel and the inner panel (see Figures 25-29).
Regarding claim 4, Sollie discloses a box wherein the insulated plug further comprises a pair of opposed end panels (2138/2136) and a pair of opposed side panels (2140/2150), the end panels and the side panels (2140/2150) extending from the outer panel to the inner panel so that the insulation portion is enclosed in the insulated plug portion.
Regarding claim 5, Sollie discloses a box wherein the outer panel comprises a pair of opposed wing portions (2126/218) and the wing portions extend radially outward beyond the top ledge of the insulation wrap.
Regarding claim 6, Sollie discloses a box wherein each wing portion defines a finger notch (2629).
Allowable Subject Matter
Claims 12-14 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.
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
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