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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission has been entered.
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The Office notes that to expedite prosecution, that the Board stated:
“OPINION
Claims 1, 11, and 13-16: Dobson and Kutterer
The Examiner rejects claims 1, 11, and 13-16 under 35 U.S.C. § 103
as being unpatentable over Dobson in view of Kutterer. Final Act. 2. The
Examiner finds that Dobson discloses a receptacle including a neck and "a
solid insert that forms an inner seal
closing an end of the neck that opens
into an internal volume of the receptacle," but fails to disclose any specifics
regarding a cap. Final Act. 2 (citing Dobson Figs. 1, 2). The Examiner
relies on Kutterer for disclosing a receptacle with an inner seal and a cap that
ruptures the inner seal. Final Act. 2-3 (citing Kutterer Fig. 1). Based
thereon, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify Dobson view of Kutterer so as to "provide
a cap that is capable of rupturing the seal" of Dobson "so that the inner seal
may [be] ruptured as intended
by virtue of the punch extending below
the neck in the in use position" SO as to provide access to the container's
contents "while providing that the device may [be] sealed during transport."
Final Act. 3. We agree with the Examiner's obviousness conclusion and
address the Appellant's arguments below.
The Appellant correctly points out that "Kutterer does not teach or
suggest that 'when said cap is [] positioned in an in-use position, a distal end
of the punch extends below the neck and the inner seal has been cut and/or
pierced by said punch' as claimed," and instead, Kutterer's cap "is designed
to function with a receptacle having a seal at a top of the neck." Appeal Br.
8; see also id. at 9 (explaining same). This argument is unpersuasive
because the rejection does not bodily incorporate Kutterer's cap to the
container of Dobson, but rather, modifies the same such that the punch
member extends to the barrier member of Dobson, which is at the base of the
neck. Final Act. 2-3. See also In re Merck, 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references."); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
("The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references.") Ans. 5.
The Appellant argues that "Kutterer does not teach or suggest tubes
having seals at the bottom of the neck and hence recognizes no problems
with piercing such seals." Appeal Br. 9. Again, the Appellant
unpersuasively argues the references individually. Dobson, which is the
primary reference, discloses a seal (barrier member) at the bottom of the
neck. Dobson Fig. 2. Dobson also explicitly teaches that this seal is to be
pierced/ruptured "by some appropriate means." See Dobson, col. 4, 11. 12-
15. However, because Dobson does not provide any details with respect to a
cap, or how one would rupture the seal, it would have been obvious to apply
the teachings of Kutterer to utilize a cap with Dobson's container wherein
the cap includes a punch member that is dimensioned to rupture the seal at
the bottom of the neck. Final Act. 3. As the Examiner further explains, "it
would have been obvious to one of ordinary skill in the art at the time of the
invention to provide the appropriate[] size and length of the provided
punch/cutting means so that the device can function as intended." Ans. 4.
The Appellant also argues that, unlike Kutterer, Dobson's seal
membrane is neither a part of an insert nor does it "have a groove as required
by Kutterer against which the punch pierces the membrane," and "[t]he
claimed cap does not require an insert with a groove." Appeal Br. 9-10.
According to the Appellant, "[a]s the Kutterer cap is designed specifically
for the Kutterer seal, one skilled in the art would not have been motivated to
use the Kutterer cap to break a seal that is not formed as described by
Kutterer as an insert having a groove positioned at the top of the neck."
Appeal Br. 9.
This line of argument is also unpersuasive. Notwithstanding the fact
that nothing in claim 1 precludes a groove in the seal membrane, nothing
indicates that the cap of the type disclosed in Kutterer is unsuitable for
piercing or rupturing the seal member of Dobson without a groove. In that
regard, Dobson discloses that its seal member is "made up of outer and inner
thermoplastic layers
and a metallic foil interlayer" therebetween as
compared to Kutterer's membrane that is integrally molded with the tube
neck made of plastic, thereby requiring the noted grooves to facilitate cutting
thereof. Dobson, col. 3, 11. 44-46; Kutterer, col. 3, 11. 33-37, col. 4, 11. 1-2.
The Appellant also asserts that "[n]ot only would the cap of Kutterer
need to be modified to use on a container disclosed by Dobson, the neck
itself of Dobson would need to be modified to work with the Kutterer cap."
Appeal Br. 9-10. According to the Appellant, "simply extending the walls
in Kutterer's cap and applying to Dobson would not function without also
changing modifying the neck structure of Dobson to include an insert having
a groove." Appeal Br. 10; see also id. at 12-13.
As discussed above, while the rejection does modify the cap of
Kutterer, we discern no basis for the assertion that modification to the neck
of Dobson to have an insert like that of Kutterer would be required. Unlike
the container of Kutterer in which the cap threads are provided by the insert,
the container of Dobson already includes threads on which a cap may be
fastened. Compare Kutterer Fig. 1, with Dobson Fig. 1.
The Appellant further argues that in the modification proposed, "the
claimed cap is not simply changing size and proportions" but instead,
"[e]xtending the punch below the lower rim of the cap changes the
characteristics of the cap
from a short squat extension totally contained
within the confines of the cap to a much more elongated extension extending
beyond the confines of the cap." Appeal Br. 10. Although changing the
length of the punch is changing its length proportion relative to its diameter
and other dimensions of the cap, even if the Appellant's assertion is correct,
that does not establish non-obviousness, as size and dimensional changes are
well within the skill of one of ordinary skill in the art. See In re Rose, 220
F.2d 459, 463 (CCPA 1955) ("size of the article under consideration [] is not
ordinarily a matter of invention"); see also Gardner v. TEC Systems,
Inc., 725 F.2d 1338, 1346 (Fed. Cir. 1984); In re Kirke, 40 F.2d 765, 767
(CCPA 1930). As the Examiner explains,
it is well within the skill of one of ordinary skill in the art to
extend the length of the punch/cutting means in order to rupture
the inner seal. Depending on the location of the seal, it would
have been obvious to one of ordinary skill in the art at the time
of the invention to provide the appropriate size and length of
the provided punch/cutting means so that the device can
function as intended.
Ans. 7.
The Appellant also relies on a Declaration of Sylvain Defert²,³ to
argue that a person of ordinary skill in the art would not have been
motivated to extend the punch of the Kutterer because then the punch would
protrude outside of the cap thereby posing "a risk of injury with the sharp
part" that is no longer "protected" inside "the confines of the cap.' Appeal
Br. 10; see also id. at 12; Decl. Defert " 7,9. The Appellant further argues
that the protruding punch "complicates the installation of the cap on the neck
in stand-by position," which is "done by machine and a slight disturbance
for the centering and the alignment of the cap with respect to the neck can
cause a deterioration of the punch." Appeal Br. 11; see also id. at 12 (in
Kutterer, "there is no concern about aligning the cutting portion into the
neck."); Decl. Defert T 8.
However, "a given course of action often has simultaneous advantages
and disadvantages, and this does not necessarily obviate motivation to
2 Hereinafter "Decl. Defert."
The Appellant states that declarant Mr. Sylvain Defert is "an employee of
Albea Services and inventor of this patent application." Appeal Br. 10.
However, we note that Mr. Defert is not named as an inventor in the present
application.
combine." Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed.
Cir. 2006); see also Winner Int 'l Royalty Corp. V. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another."). Although the Appellant may be correct that the extended punch
may increase the risk of injury and require higher accuracy in positioning of
the cap during installation, the benefit of being able to pierce/rupture
Dobson's seal membrane is more paramount and fundamental since such
rupturing of the seal membrane is required for dispensing the contents of the
container, which is the fundamental purpose of Dobson's container. Dobson
col. 4, 11. 12-15; Fig. 2. Moreover, as the Examiner points out, the
Appellant's own invention poses "the same supposed risk" and the alleged
complication during installation. Ans. 7.
The Appellant further argues that the filed Declaration of Defert was
improperly dismissed. Appeal Br. 11-12. However, as the Examiner notes,
the declaration was "already addressed" previously in a prior Office Action
(Ans. 7) in which the Examiner determined that the declaration evidence
was insufficient because it
amount[ed] to an opinion of an expert with a vested interest in
the outcome of the application and fails to outweigh the
strength of the factual evidence of the prior art.
In the instant case, the strength of the opposing evidence, outweighs
the opinion evidence of the expert opinion
when all of the evidence is considered, the totality of the rebuttal evidence of
nonobviousness fails to outweigh the evidence of obviousness.
Non-Final Act. 16-17 (mailed Nov. 7, 2023).
Nonetheless, we observe that the declaration evidence was focused on
the above discussed potential risk of injury and complicating installation of
the cap. Decl. Defert " 7-9. Accordingly, in view of the above
considerations with respect to such evidence, we agree with the Examiner's
ultimate conclusion that the totality of the evidence of presented here
establishes obviousness, and affirm the rejection of independent claim 1.
The Appellant does not submit separate arguments directed to claims 11
and 13-16 that depend from claim 1. Hence, these claims fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 15 and 20-24: Dobson, Kutterer, and APA
The Examiner rejects claims 15 and 20-24 under 35 U.S.C. § 103 as
being unpatentable over Dobson, Kutterer and APA. Final Act. 6. The
Appellant does not submit separate arguments directed to this rejection.
Hence, the rejection of claims 15 and 20-24 is affirmed.
Claims 17-19: Dobson, Kutterer, and Laciacera
The Examiner rejects claims 17-19 under 35 U.S.C. § 103 as being
unpatentable over Dobson in view of Kutterer and Laciacera, relying on
Laciacera for disclosing "a removable spacing ring that is arranged SO as to
rest on the body of the receptacle around the neck in the stand-by position"
as required by these claims. Final Act. 8.
The Appellant argues that
Laciacera discloses two distinct parts closure assembly. Such
assembly is attached to the container after filling and ensures
that the cutting element is not accessible after removal of the
cap. Thus even if one skilled in the art modified Dobson and
Kutterer in view of Laciacera, one still would not arrive at the
instant claims.
Appeal Br. 14-15.
As discussed above, we find no deficiency in the Examiner's rejection
of claim 1 based on the combination of Dobson and Kutterer, and the
Appellant's argument is not responsive to the rejection of claims 17-19 in
which Laciacera was relied upon for disclosing a spacing ring. Therefore,
we affirm the rejection of claims 17-19.
Claims 1, 11, and 13 24: Further Relying on Casale
The Examiner alternatively rejects all of the claims on appeal by
mirroring the rejections addressed above, but further relying on Casale for
disclosing in a "similar art where the punch is long enough to cut the seal
and therefore when positioned in an in use position, a distal end of the punch
extend below the neck and the inner seal is cut." Final Act. 8 et seq. The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to further modify the combination of Dobson and Kutterer in view
of Casale to "provide a cap that is capable of rupturing the seal with ease in
order to access the contents while providing that the device may [be] sealed
during transport." Final Act. 10.
However, for the reasons discussed above, we are not persuaded of
any deficiency in the Examiner's rejections of these claims without Casale,
and we find Casale to be unnecessary in concluding the obviousness of these
claims. Accordingly, we affirm these rejections as well, but without explicit
reliance on Casale. The Appellant's arguments specifically directed to
Casale are moot. Appeal Br. 13-14.”
The Office notes that the Board has confirmed the modification of the punch extending below the neck. The Office notes that in the above the upper wall is an uppermost surface of the distal end of the punch is the lowermost surface.
The Office notes that Applicant has cancelled claims 25 and 26. In order to expedite prosecution, the Office notes that the prior art still discloses: Re, claims 25, 26, the Office notes that punch has been extended as already provided above in claim 1. As provided in the below figure the prior art discloses the features of claim 25 where the partition is located as provided in the prior art and extension is provided as in the above as in claim 1. With respect to moving the location as provided below so that the first distance is less than the second distance, the Office notes that the positioning of the partition provides strength to different aspects of the device. If the user desired that cutting action required more control and strength, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the location of the partition closer to the bottom of the device so that the first distance is less and the new location of the partition would provide more resiliency as being closer to the cutting portion of the punch. The Office note that the partition being located more upward provided strength to the twisting action of the cap for example.
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Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dobson (3260411) in view of Kutterer (4723687).
All of the claims are being treated as product-by-process limitations (such as to “molded”) and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above).
Nevertheless, Dobson discloses:
1. A receptacle (figs 1-2) comprising a neck (13); a solid insert that forms an inner seal (20 with 24 and other portions) closing an end of the neck that opens into an internal volume of the receptacle and a cap (“appropriate means” col 4: 7-15). The Office notes the primary reference appears to be silent on the specifics of the cap. Kutterer discloses similar art with respect to receptacles with inners seals and further discloses: a peripheral wall (outside wall of 6), an upper wall (upper surface of device such as in fig 2) and a punch (punch that extends from upper wall and includes 7; where upper wall joining the peripheral wall and the punch as in fig 2), said punch comprising a barrel-shaped body extending radially from the upper wall and comprising a distal end comprising cutting means for cutting and/or piercing the inner seal (Kutterer as in fig 1, see below), a transverse partition connecting inner surfaces of the body and which separates an interior volume of the body into two cavities (Kutterer as in fig 1 with portion that separates cavity above cutting means and another cavity adjacent and below the cutting means) said punch and said peripheral wall each extend directly from the upper wall (wall between edge and punch in fig 1, 2), said cap peripheral wall, said punch, and said upper wall together being a single monolithic piece with the punch (as in fig 1), wherein said cap is positioned on said neck in a stand-by position in which the punch is in the neck while the inner seal remains unbroken and when said cap is positioned in-use position, the inner seal has been cut and/or pierced by said punch (capable of performing the above intended use, where the device is used in transport remains sealed and when the contents are desired the device is opened for use or consumption).
The Office notes Applicant’s limitation to “wherein said upper wall is an uppermost surface of the cap and the distal end of the body of the punch is a lower most surface of the cap…when said cap is positioned in an in-use position, a distal end of the punch extends below the neck”. The Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means (such as below the neck of the primary reference) in order to perform the intended purpose of cutting the seal. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Dobson view of Kutterer (by modifying the existing cap or replacing the existing cap so that the inner seal may ruptured as intended, such as by ensuring that the device performs as intended by cutting the seal by virtue of the punch extending below the neck in the in use position) in order to provide a cap that is capable of rupturing the seal with ease in order to access the contents while providing that the device may sealed during transport. The Office further notes that extending the body in the above manner would provide that the upper wall is an uppermost surface and the lowermost surface would be the distal end to ensure that the cap is capable of rupturing the seal as intended, as already described above and confirmed by the Board.
The Office again notes that punch has been extended as already provided above in claim 1. As provided in the below figure the prior art discloses the features (of former claim 25 and now within claim 1) where the partition is located as provided in the prior art and extension is provided as in the above as in claim 1. In order to expedite prosecution, the Office notes that with respect to moving the location as provided below so that the first distance is less than the second distance, the Office notes that the positioning of the partition provides strength to different aspects of the device. If the user desired that cutting action required more control and strength, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the location of the partition closer to the bottom of the device so that the first distance is less and the new location of the partition would provide more resiliency as being closer to the cutting portion of the punch. The Office note that the partition being located more upward provided strength to the twisting action of the cap for example.
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The Combined Reference further discloses:
13. Receptacle according to claim 1, wherein said neck has an internal diameter Di and said barrel-shaped body has an external diameter De such that the ratio De/Di is greater than 0.8 or 0.9 (see the above; the Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means in order to perform the intended purpose of cutting the seal). Further, respect to the above It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. And it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
14. Receptacle according to claim 1, wherein the solid insert has a resilient deformation capacity, wherein in the in-use position, said barrel-shaped body is configured for penetrating said internal volume, at a distance h that is greater than a distance required in order to deform the solid insert in a manner that goes beyond the resilient deformation capacity of said solid insert (see the above; the Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means in order to perform the intended purpose of cutting the seal). Further, respect to the above it would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. And it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
15. Receptacle according to claim 1, wherein said neck has an external diameter De, wherein said solid insert is a multi-layered insert comprising a barrier layer having faces, of which each of the faces are covered with one or more protective layer (multiple layer of Dobson as in fig 2), and a penetration distance h of the barrel-shaped body into the receptacle is such that the ratio h/De is greater than 0.6 or 0.7 (see the above; the Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means in order to perform the intended purpose of cutting the seal). Further, respect to the above It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. And it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
16. Receptacle according to claim 1, wherein said solid insert is joined onto an inner wall of a body of said receptacle (Dobson fig 1).
Claim 15, 20-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1 above, and further in view of Applicant’s Admitted Prior Art (AAPA)
Applicant has not traversed Examiner’s assertion of Official Notice, the fact that is it well known to provide that wherein said said neck has an external diameter DE, wherein said insert is a multi-layered insert comprising a barrier layer, of which each of the faces are covered with one or more protective layers, and the penetration distance h of the barrel/body into the receptacle is such that the ratio h/De is greater than 0.6 or 0.7 is taken to be admitted prior art. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made in view of Applicant's admitted prior art to provide wherein said said neck has an external diameter DE, wherein said insert is a multi-layered insert comprising a barrier layer, of which each of the faces are covered with one or more protective layers, and the penetration distance h of the barrel/body into the receptacle is such that the ratio h/De is greater than 0.6 or 0.7 in order to to provide a more secure seal while also providing known relative dimensions to ensure full penetration of the cutting means to ensure that the more secure seal is broken in a manner that permits desired use of the device such as access to the contents therein.
Applicant has not traversed Examiner’s assertion of Official Notice, the fact that is it well known to provide that with respect to wherein said neck has an inner wall comprising at least one region that is inclined with respect to a longitudinal axis of the neck; wherein the receptacle has an inside and an outside, wherein said inclined region is located on a side of an end of the neck that opens towards the outside of the receptacle; wherein said inclined region gets closer to the longitudinal axis from the end of the neck that opens towards the outside of the receptacle in a direction of the end of the neck that opens into an internal volume of the receptacle; wherein the neck has an internal height, wherein said inclined region extends over less than 1/8 of the internal height of the neck, or over less than 1/10; wherein said inclined region forms a cone. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made in view of Applicant's admitted prior art to provide all of the above for guiding purposes as well as to prevent undesired damage via inclined guiding surfaces. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made in view of the Official Notice to wherein said neck has an inner wall comprising at least one region that is inclined with respect to a longitudinal axis of the neck; wherein the receptacle has an inside and an outside, wherein said inclined region is located on a side of an end of the neck that opens towards the outside of the receptacle; wherein said inclined region gets closer to the longitudinal axis from the end of the neck that opens towards the outside of the receptacle in a direction of the end of the neck that opens into an internal volume of the receptacle; wherein the neck has an internal height, wherein said inclined region extends over less than 1/8 of the internal height of the neck, or over less than 1/10; wherein said inclined region forms a cone in order to guiding purposes as well as to prevent undesired damage to the cap or neck via inclined guiding surfaces. The Office notes that a flat surface that is more likely to get caught and therefore an inclined surface is provided in the above by AAPA in order to promote the cap downward into the device in a more efficient and safe manner.
Claim 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1 above, and further in view of Laciacera (6279779)
The Combined Reference discloses the claimed invention above with the exception of the following which is disclosed by Laciacera: also discloses a removable spacing ring that is arranged so as to rest on the body of the receptacle around the neck in the stand-by position (capable of performing the above intended use, such as if the device is arranged to have 37), wherein said spacing ring comprises a plurality of ribs that are suitable for centering the spacing ring around the neck (protruding portions of 37; further the Office notes that It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the device such as with multiple ribs because it has been held that the duplication of parts on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), wherein said spacing ring is formed independently of said cap such that said cap can be removed from said receptacle without said ring also being removed (as in fig 5). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Laciacera (by either extending the existing ring and adding ribs or replacing the existing ring with another with ribs) in order to enhanced securement of the ring to the device such as to prevent unintentional dislodgement of the elements.
Claim(s) 1, 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dobson (3260411) in view of Kutterer (4723687) and Casale (7484641).
All of the claims are being treated as product-by-process limitations (such as to “molded”) and the determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above).
Nevertheless, Dobson discloses:
1. A receptacle (figs 1-2) comprising a neck (13); a solid insert that forms an inner seal (20 with 24 and other portions) closing an end of the neck that opens into an internal volume of the receptacle and a cap (“appropriate means” col 4: 7-15). The Office notes the primary reference appears to be silent on the specifics of the cap. Kutterer discloses similar art with respect to receptacles with inners seals and further discloses: a peripheral wall (outside wall of 6), an upper wall (upper surface of device such as in fig 2) and a punch (punch that extends from upper wall and includes 7; where upper wall joining the peripheral wall and the punch as in fig 2), said punch comprising a barrel-shaped body extending radially from the upper wall and comprising a distal end comprising cutting means for cutting and/or piercing the inner seal (Kutterer as in fig 1, see below), a transverse partition connecting inner surfaces of the body and which separates an interior volume of the body into two cavities (Kutterer as in fig 1 with portion that separates cavity above cutting means and another cavity adjacent and below the cutting means) said punch and said peripheral wall each extend directly from the upper wall (wall between edge and punch in fig 1, 2), said cap peripheral wall, said punch, and said upper wall together being a single monolithic piece with the punch (as in fig 1), wherein said cap is positioned on said neck in a stand-by position in which the punch is in the neck while the inner seal remains unbroken and when said cap is positioned in-use position, the inner seal has been cut and/or pierced by said punch (capable of performing the above intended use, where the device is used in transport remains sealed and when the contents are desired the device is opened for use or consumption).
The Office notes Applicant’s limitation to “wherein said upper wall is an uppermost surface of the cap and the distal end of the body of the punch is a lower most surface of the cap…when said cap is positioned in an in-use position, a distal end of the punch extends below the neck”. The Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means (such as below the neck of the primary reference) in order to perform the intended purpose of cutting the seal. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Dobson view of Kutterer (by modifying the existing cap or replacing the existing cap so that the inner seal may ruptured as intended, such as by ensuring that the device performs as intended by cutting the seal by virtue of the punch extending below the neck in the in use position) in order to provide a cap that is capable of rupturing the seal with ease in order to access the contents while providing that the device may sealed during transport. The Office further notes that extending the body in the above manner would provide that the upper wall is an uppermost surface and the lowermost surface would be the distal end to ensure that the cap is capable of rupturing the seal as intended, as already described above and confirmed by the Board. If there is any question to a distal end of a punch being below the neck and cutting the inner seal, the Office notes Casale discloses similar art where the punch is long enough to cut the seal and therefore when positioned in an in use position, a distal end of the punch extend below the neck and the inner seal is cut. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Casale (by by modifying the existing cap or replacing the existing cap so that the inner seal may ruptured as intended, such as by ensuring that the device performs as intended by cutting the seal by virtue of the punch extending below the neck in the in use position) in order to in order to provide a cap that is capable of rupturing the seal with ease in order to access the contents while providing that the device may sealed during transport.
The Office again notes that punch has been extended as already provided above in claim 1. As provided in the below figure the prior art discloses the features (of former claim 25 and now within claim 1) where the partition is located as provided in the prior art and extension is provided as in the above as in claim 1. In order to expedite prosecution, the Office notes that with respect to moving the location as provided below so that the first distance is less than the second distance, the Office notes that the positioning of the partition provides strength to different aspects of the device. If the user desired that cutting action required more control and strength, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the location of the partition closer to the bottom of the device so that the first distance is less and the new location of the partition would provide more resiliency as being closer to the cutting portion of the punch. The Office note that the partition being located more upward provided strength to the twisting action of the cap for example.
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The Combined Reference further discloses:
13. Receptacle according to claim 1, wherein said neck has an internal diameter Di and said barrel-shaped body has an external diameter De such that the ratio De/Di is greater than 0.8 or 0.9 (see the above; the Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means in order to perform the intended purpose of cutting the seal). Further, respect to the above It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. And it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
14. Receptacle according to claim 1, wherein the solid insert has a resilient deformation capacity, wherein in the in-use position, said barrel-shaped body is configured for penetrating said internal volume, at a distance h that is greater than a distance required in order to deform the solid insert in a manner that goes beyond the resilient deformation capacity of said solid insert (see the above; the Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means in order to perform the intended purpose of cutting the seal). Further, respect to the above it would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. And it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
15. Receptacle according to claim 1, wherein said neck has an external diameter De, wherein said solid insert is a multi-layered insert comprising a barrier layer having faces, of which each of the faces are covered with one or more protective layer (multiple layer of Dobson as in fig 2), and a penetration distance h of the barrel-shaped body into the receptacle is such that the ratio h/De is greater than 0.6 or 0.7 (see the above; the Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means in order to perform the intended purpose of cutting the seal). Further, respect to the above It would have been obvious to one of ordinary skill in the art at the time of the invention to provide a specific range because it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges was an obvious extension of the prior teachings. In re Aller, 105 USPQ 233. And it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the size/proportion because it has been held that a change in size proportion on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) In Gardnerv.TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
16. Receptacle according to claim 1, wherein said solid insert is joined onto an inner wall of a body of said receptacle (Dobson fig 1).
Claim 15, 20-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1 above, and further in view of Applicant’s Admitted Prior Art (AAPA)
Applicant has not traversed Examiner’s assertion of Official Notice, the fact that is it well known to provide that wherein said said neck has an external diameter DE, wherein said insert is a multi-layered insert comprising a barrier layer, of which each of the faces are covered with one or more protective layers, and the penetration distance h of the barrel/body into the receptacle is such that the ratio h/De is greater than 0.6 or 0.7 is taken to be admitted prior art. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made in view of Applicant's admitted prior art to provide wherein said said neck has an external diameter DE, wherein said insert is a multi-layered insert comprising a barrier layer, of which each of the faces are covered with one or more protective layers, and the penetration distance h of the barrel/body into the receptacle is such that the ratio h/De is greater than 0.6 or 0.7 in order to provide a more secure seal while also providing known relative dimensions to ensure full penetration of the cutting means to ensure that the more secure seal is broken in a manner that permits desired use of the device such as access to the contents therein.
Applicant has not traversed Examiner’s assertion of Official Notice, the fact that is it well known to provide that with respect to wherein said neck has an inner wall comprising at least one region that is inclined with respect to a longitudinal axis of the neck; wherein the receptacle has an inside and an outside, wherein said inclined region is located on a side of an end of the neck that opens towards the outside of the receptacle; wherein said inclined region gets closer to the longitudinal axis from the end of the neck that opens towards the outside of the receptacle in a direction of the end of the neck that opens into an internal volume of the receptacle; wherein the neck has an internal height, wherein said inclined region extends over less than 1/8 of the internal height of the neck, or over less than 1/10; wherein said inclined region forms a cone. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made in view of Applicant's admitted prior art to provide all of the above for guiding purposes as well as to prevent undesired damage via inclined guiding surfaces. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made in view of the Official Notice to wherein said neck has an inner wall comprising at least one region that is inclined with respect to a longitudinal axis of the neck; wherein the receptacle has an inside and an outside, wherein said inclined region is located on a side of an end of the neck that opens towards the outside of the receptacle; wherein said inclined region gets closer to the longitudinal axis from the end of the neck that opens towards the outside of the receptacle in a direction of the end of the neck that opens into an internal volume of the receptacle; wherein the neck has an internal height, wherein said inclined region extends over less than 1/8 of the internal height of the neck, or over less than 1/10; wherein said inclined region forms a cone in order to guiding purposes as well as to prevent undesired damage to the cap or neck via inclined guiding surfaces. The Office notes that a flat surface that is more likely to get caught and therefore an inclined surface is provided in the above by AAPA in order to promote the cap downward into the device in a more efficient and safe manner.
Claim 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over the Combined Reference as applied to claim 1 above, and further in view of Laciacera (6279779)
The Combined Reference discloses the claimed invention above with the exception of the following which is disclosed by Laciacera: also discloses a removable spacing ring that is arranged so as to rest on the body of the receptacle around the neck in the stand-by position (capable of performing the above intended use, such as if the device is arranged to have 37), wherein said spacing ring comprises a plurality of ribs that are suitable for centering the spacing ring around the neck (protruding portions of 37; further the Office notes that It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the device such as with multiple ribs because it has been held that the duplication of parts on the basis of its suitability for the intended use was an obvious extension of the prior teachings. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), wherein said spacing ring is formed independently of said cap such that said cap can be removed from said receptacle without said ring also being removed (as in fig 5). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the Combined Reference in view of Laciacera (by either extending the existing ring and adding ribs or replacing the existing ring with another with ribs) in order to enhanced securement of the ring to the device such as to prevent unintentional dislodgement of the elements.
Response to Arguments
Applicant's arguments filed 08/18/2026 have been fully considered but they are not persuasive. Applicant states that the prior art provides overall solidity of the cap. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Furthermore, inasmuch as the prior art provides an issue, the same issue would exist in Applicant’s own device. Applicant states there is no reason to change the middle position. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, The Office notes that it is well within the skill of one ordinary skill in the art to extend the length of the body and/or the cutting means (such as below the neck of the primary reference) in order to perform the intended purpose of cutting the seal. It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Dobson view of Kutterer (by modifying the existing cap or replacing the existing cap so that the inner seal may ruptured as intended, such as by ensuring that the device performs as intended by cutting the seal by virtue of the punch extending below the neck in the in use position) in order to provide a cap that is capable of rupturing the seal with ease in order to access the contents while providing that the device may sealed during transport. The Office further notes that extending the body in the above manner would provide that the upper wall is an uppermost surface and the lowermost surface would be the distal end to ensure that the cap is capable of rupturing the seal as intended, as already described above and confirmed by the Board. The Office again notes that punch has been extended as already provided above in claim 1. As provided in the below figure the prior art discloses the features (of former claim 25 and now within claim 1) where the partition is located as provided in the prior art and extension is provided as in the above as in claim 1. In order to expedite prosecution, the Office notes that with respect to moving the location as provided below so that the first distance is less than the second distance, the Office notes that the positioning of the partition provides strength to different aspects of the device. If the user desired that cutting action required more control and strength, it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the location of the partition closer to the bottom of the device so that the first distance is less and the new location of the partition would provide more resiliency as being closer to the cutting portion of the punch. The Office note that the partition being located more upward provided strength to the twisting action of the cap for example.
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Applicant states that there are issues within the prior art of moving the partition location. No issues exist as already provided above. The Office again notes that inasmuch as the prior art provides an issue, the same issue would exist in Applicant’s own device. Accordingly, Applicant/Appellant has not demonstrated error in the factual findings or reasoning set forth by the Office and the Office maintains the 103 rejection.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW D PERREAULT whose telephone number is (571)270-5427. The examiner can normally be reached Monday - Friday 7:00am-5:30pm.
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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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/ANDREW D PERREAULT/Primary Examiner, Art Unit 3735
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