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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant now provides “consisting essentially of” in claim 9. However, Applicant has failed to provide an embodiment that is exclusively limited to the features of the above claims. Therefore, Applicant has now provided impermissible new matter that must be removed. Claims 10-16 is/are rejected as being dependent on the above rejected claim(s).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8, 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, Applicant now provides “wherein a contact between adjacent cups of like construction is provided that results in a stand-off height between adjacent curls of first and second stacked cups, the stand-off height being between approximately 0.20 and 1.0 inches”. However, Applicant has merely positively claimed a single cup. Applicant has failed to also make clear as to what adjacent cups refers to. Furthermore, the phrase "like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Claims 2-8 is/are rejected as being dependent on the above rejected claim(s).
In claim 1, Applicant now provides “wherein stacked cups of substantially the same construction comprise astand-off height between respective curled portions and wherein the stand-off height is between approximately 0.28 inches and 1.00 inches”. However, Applicant has merely positively claimed a container with a single cup and single piece. Applicant has failed to also make clear as to what stacked cups refers to. Furthermore, Applicant provides the limitation "the same construction”. There is insufficient antecedent basis for this limitation in the claim. Claims 18-20 is/are rejected as being dependent on the above rejected claim(s).
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) 1-8, 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferembal (FR1490636) in view of Cvacho (4134354) and Edwards (US 4040537 A).
With respect to formed from a single straight drawn preform of recycled or recyclable material and resulting from the shape and contact of a tool used to form the cup, the claims are being treated as product-by-process limitations 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). Furthermore, Cvacho discloses aluminum (col. 2: 55-60).
The Office notes the significant 112 rejections above. Nevertheless, Ferembal discloses:
1, 2. A tapered metallic cup (figs 1-4, metal in page 1, 3 paragraph down in right column) comprising: a single piece of recycled or recyclable material (metal on page 1, right column, paragraph 3 od which is either recycled or recyclable, as it may used again), the cup comprising
an upper end and a lower end (ends at top and bottom in fig 1 of a single cup), and a height extending between the upper end and the lower end (the element of side wall between a top and bottom); the upper end comprising a curled, partially curled, or throttled lip and an opening (curled at of fig 1 with space between being an opening); a plurality of tapered sections provided between the upper end and the lower end (sections such as adjacent 1, 2, 3), with a step provided between each of the tapered sections (indented portion between each section adjacent 1, 2, 3); and wherein each of the tapered sections comprises a substantially constant wall thickness and a tapered profile (as in fig 1 where the distance from outside to inside is substantially constant); and wherein adjacent tapered sections of the plurality of tapered sections comprise successively smaller diameters between the upper and lower end, and wherein the step provided between each of the tapered sections comprises a transition in diameter (as in fig 1 where distances circle edges is smaller and smaller, also where transitions more sharply inward between sections); wherein the lower end of the cup comprises an annular standing surface (at bottom of cup); wherein at least some of the tapered sections comprise an expansion angle (the angle at different sections expands from top at bottom and therefore at least some of the section provide an expansion angle; furthermore the prior art discloses that additional expansion is provided such as in figure 3) wherein a lowermost section of the tapered sections comprises a step at its upper end (such as shown at top of lowermost section as in fig 1); with the exception of the following which is disclosed by Cvacho: a domed portion is provided within the annular standing surface (domed portion adjacent 37/44), a radius of curvature at its lower end, the radius of curvature comprising a transition between the lowermost section of the tapered sections and the domed portion (as for example shown in figure 3, 6 where adjacent standing surface adjacent 32 includes transition such as adjacent 34 with domes portion adjacent 37/44; domed portion greater gauge/thickness than lowermost section as for example shown at the curvature of the dome in fig 3; though not required the Office merely notes in order to expedite prosecution that it is well within the skill of one of ordinary skill in the art to provide thicker thicknesses at areas that are more likely to be damaged such as for example in lower area such as domed portion as to prevent undesired puncturing). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Ferembal in view of Cvacho (by changing the shape of the bottom area in the above manner) in order to provide flexibility due to the load provided by the contents while also increasing volume. For example, the Office notes that the shape provided by the prior art above allows the bottom portion to move based on volume demands. Cavacho specifically states “it will be appreciated that the volume of the container is similarly correspondingly reduced whereby with the unique bottom wall 26 of this invention it is a simple matter to decrease the height 42 shown in FIG. 3 to the solid line position 46 illustrated in FIG. 6 to provide additional volume sufficient to meet customer requirements. With still further wear of the punch the precisely controlled distance 42 is reduced further to the position illustrated at 47 in FIG. 6. to provide additional volume” (Cvacho col. 3: 47-67). The Office notes the device includes pressure from contents regardless of whether or not that the top is open. Furthermore, the Office notes that a change in volume of the device may be desired regardless of the nature of the top of the device.
Further respect to recycled or recyclable material, though not required, the Office merely notes that it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to having a flat surface, Edwards discloses similar art and also discloses a flat surface (such as adjacent 52, and also adjacent shown in fig 8 stacked with element adjacent 70). 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 Edwards (by ensuring that a portion of the standing surface is flat) in order to both enhance the devices ability to stand on a flat surface such as table, while also enhancing the ability to stack such as by interacting with a cooperating stacking interface, which in turn prevents the contents from accidently spilling and further damage.
With respect to the ranges provided of approximately 0.0010 inches and 0.125 inches and approximately 0.010 and 0.250 inches, given that the prior art of Cvacho discloses “The semi-torroidal bead also has a radius indicated at 56 which for a typical twelve ounce container may range between 0.030-0.187 inch and usually is roughly 0.060 inch”, the prior art also discloses approximately the same dimensions as required by Applicant approximately. If there is any question to the device, the Office notes that depending on the desired contents and weight to be contained inside, it is well within the skill of one of ordinary skill in the art to modify dimensions to accommodate the desired internal contents. Further, though not required, the Office notes that he Office notes that 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.
The Office notes Applicant’s amendment to “wherein a contact between adjacent cups of like construction is provided that results in a stand-off height between adjacent curls of first and second stacked cups, the stand-off height being between approximately 0.20 and 1.0 inches” of which is subject to the extensive 112 rejections above. Nevertheless, the Office notes that Applicant has chosen to not positively claim an additional cup. The positively claimed cup is fully capable of interacting with another cup with similar construction such as providing another cup of similar construction that provides the above range. Furthermore, the Office notes that the prior art already provides a device with the same claimed features and therefore would provide the above same function. Furthermore, with respect to the range, the Office also notes that 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.
The Combined Reference discloses:
The tapered metallic cup of claim 1, wherein the height is between approximately 4.0 inches and approximately 7.0 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
4. The tapered metallic cup of claim 1, comprising at least three tapered sections (as in fig 1 o Ferembal).
5. The tapered metallic cup of claim 1, wherein a maximum inner diameter of the cup comprises a diameter of at least approximately 3.0 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
6. The tapered metallic cup of claim 1, wherein a minimum inner diameter of the cup comprises a diameter of not more than approximately 2.50 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
7. The tapered metallic cup of claim 1, wherein a minimum wall thickness of the plurality of tapered sections comprises a thickness of less than approximately 0.0070 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
8. The tapered metallic cup of claim 7, wherein domes portion comprises an inwardly extending portion comprising multiple radii of curvature (Cvacho discloses inward portion such as portion that extends towards 35 of which includes multiple radii of curvature such as but not limited to 40 to 35).
The Office notes the significant 112 rejections above. Nevertheless, Ferembal discloses:
17. A metallic container (figs 1-4, metal in page 1, 3 paragraph down in right column) comprising a cup comprising a single piece of recycled or recyclable material (metal on page 1, right column, paragraph 3 of which is either recycled or recyclable, as it may used again); the cup comprising an upper end, a lower end (ends at top and bottom in fig 1 of a single cup) and a height (the element of side wall between a top and bottom); the upper end comprising a curled portion (curled at of fig 1 with space between being an opening); an opening provided at the upper end (curled at of fig 1 with space between being an opening); a plurality of tapered sections provided between the upper end and the lower end (sections such as adjacent 1, 2, 3), with a step provided between each of the tapered sections (indented portion between each section adjacent 1, 2, 3); and wherein each of the tapered sections comprises a substantially constant wall thickness and a tapered profile having an expansion angle (as in fig 1 where the distance from outside to inside is substantially constant; the angle at different sections expands from top at bottom and therefore at least some of the section provide an expansion angle; furthermore the prior art discloses that additional expansion is provided such as in figure 3); wherein adjacent tapered sections of the plurality of tapered sections comprise successively smaller diameters between the upper end and the lower end, and wherein the step provided between each of the tapered sections comprises a transition in diameter (as in fig 1 where distances circle edges is smaller and smaller, also where transitions more sharply inward between sections); and wherein the bottom portion comprises a flat annular standing surface (the lowermost portion is a surface capable of standing on a flat portion and therefore is a flat standing surface); with the exception of the following which is disclosed by Cvacho: domed portion (portion at 44/37 with a radius of curvature, transition as for example shown in figure 3, 6 where adjacent standing surface adjacent 32 includes transition such as adjacent 34 with domes portion adjacent 37/44). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Ferembal in view of Cvacho (by changing the shape of the bottom area in the above manner) in order to provide flexibility due to the load provided by the contents while also increasing volume. With respect to wherein the lower end comprises a bottom portion with an outer diameter of between approximately 1.50 and 3.50 inches and dimensions as well the radius between approximately 0.010 inches and 0.250 inches, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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. For example, the Office notes that the shape provided by the prior art above allows the bottom portion to move based on volume demands. Cavacho specifically states “it will be appreciated that the volume of the container is similarly correspondingly reduced whereby with the unique bottom wall 26 of this invention it is a simple matter to decrease the height 42 shown in FIG. 3 to the solid line position 46 illustrated in FIG. 6 to provide additional volume sufficient to meet customer requirements. With still further wear of the punch the precisely controlled distance 42 is reduced further to the position illustrated at 47 in FIG. 6. to provide additional volume” (Cvacho col. 3: 47-67). The Office notes the device includes pressure from contents regardless of whether or not that the top is open. Furthermore, the Office notes that a change in volume of the device may be desired regardless of the nature of the top of the device.
With respect to having a flat surface, Edwards discloses similar art and also discloses a flat surface (such as adjacent 52, and also adjacent shown in fig 8 stacked with element adjacent 70). 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 Edwards (by ensuring that a portion of the standing surface is flat) in order to both enhance the devices ability to stand on a flat surface such as table, while also enhancing the ability to stack such as by interacting with a cooperating stacking interface, which in turn prevents the contents from accidently spilling and further damage.
With respect to the ranges provided of approximately 0.0010 inches and 0.125 inches, given that the prior art of Cvacho discloses “The semi-torroidal bead also has a radius indicated at 56 which for a typical twelve ounce container may range between 0.030-0.187 inch and usually is roughly 0.060 inch”, the prior art also discloses approximately the same dimensions as required by Applicant approximately. If there is any question to the device, the Office notes that depending on the desired contents and weight to be contained inside, it is well within the skill of one of ordinary skill in the art to modify dimensions to accommodate the desired internal contents. Further, though not required, the Office notes that The Office notes that 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.
The Office notes Applicant’s amendment to “wherein stacked cups of substantially the same construction comprise a stand-off height between respective curled portions and wherein the stand-off height is between approximately 0.28 inches and 1.00 inches” of which is subject to the extensive 112 rejections above. Nevertheless, the Office notes that Applicant has chosen to not positively claim an additional cup. The positively claimed cup is fully capable of interacting with another cup with similar construction such as providing another cup of similar construction that provides the above range. Furthermore, the Office notes that the prior art already provides a device with the same claimed features and therefore would provide the above same function. Furthermore, with respect to the range, the Office also notes that 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.
18. The container of claim 17, wherein the bottom portion comprises a wall thickness of approximately 0.0090 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
19. The container of claim 17, wherein a minimum wall thickness of the plurality of tapered sections comprises a thickness of less than approximately 0.0070 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
20. The container of claim 17, wherein the height is between approximately 4.0 inches and approximately 7.0 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
Claim(s) 9-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ferembal (FR1490636) in view of Cvacho (4134354).
The Office notes the significant 112 rejections above. Nevertheless, Ferembal discloses:
9. A tapered metallic cup (figs 1-4, metal in page 1, 3 paragraph down in right column) comprising a cup comprising a single piece f recycled or recyclable material / A container / cup formed from a single blank of recycled or recyclable material (metal on page 1, right column, paragraph 3 of which is either recycled or recyclable, as it may used again); an upper end and a lower end (ends at top and bottom in fig 1 of a single cup), and a height extending between the upper end and the lower end (the element of side wall between a top and bottom); the upper end comprising a curled portion / a curled portion provided at the upper end and an opening at least partially defined by a circumference of the curled portion (curled at of fig 1 with space between being an opening); a plurality of tapered sections provided between the upper end and the lower end (sections such as adjacent 1, 2, 3), with a step provided between each of the tapered sections (indented portion between each section adjacent 1, 2, 3); and wherein each of the tapered sections comprises a substantially constant wall thickness and a tapered profile (as in fig 1 where the distance from outside to inside is substantially constant); and wherein adjacent tapered sections of the plurality of tapered sections comprise successively smaller diameters, and wherein the step provided between each of the tapered sections comprises a transition in diameter (as in fig 1 where distances circle edges is smaller and smaller, also where transitions more sharply inward between sections); bottom portion with the exception of the following which is disclosed by Cvacho: a dome and a radius of curvature, wherein the radius of curvature comprises a transition between the dome and the lower most tapered section (as for example shown in figure 3, 6 where adjacent standing surface adjacent 32 includes transition such as adjacent 34 with domes portion adjacent 37/44; as for example but not limited to figures 3, 6). It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Ferembal in view of Cvacho (by changing the shape of the bottom area in the above manner) in order to provide flexibility due to the load provided by the contents while also increasing volume. For example, the Office notes that the shape provided by the prior art above allows the bottom portion to move based on volume demands. Cavacho specifically states “it will be appreciated that the volume of the container is similarly correspondingly reduced whereby with the unique bottom wall 26 of this invention it is a simple matter to decrease the height 42 shown in FIG. 3 to the solid line position 46 illustrated in FIG. 6 to provide additional volume sufficient to meet customer requirements. With still further wear of the punch the precisely controlled distance 42 is reduced further to the position illustrated at 47 in FIG. 6. to provide additional volume” (Cvacho col. 3: 47-67). The Office notes the device includes pressure from contents regardless of whether or not that the top is open. Furthermore, the Office notes that a change in volume of the device may be desired regardless of the nature of the top of the device.
Further respect to recycled or recyclable material, though not required, 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 material because it has been held that selection of a known material on the basis of its suitability for the intended use was an obvious extension of the prior teaching. In re Leshin, 125 USPQ 416.
With respect to the dome comprises a convex feature toward the interior of the cup and at a greater gauge that the lower most tapered section (domed portion greater gauge/thickness than lowermost section as for example shown at the curvature of the dome in fig 3; though not required the Office merely notes in order to expedite prosecution that it is well within the skill of one of ordinary skill in the art to provide thicker thicknesses at areas that are more likely to be damaged such as for example in lower area such as domed portion as to prevent undesired puncturing and further being convex such as being 34s which project toward interior).
The Office notes that Applicant’s new amendment to “consisting essentially of” and the significant 112 rejections above. Nevertheless, in order to expedite prosecution for Applicant, if there is any question to additional features provides by the prior art, it would have been obvious to one of ordinary skill in the art to omit an element because omission of an element and its function is obvious if the function of the element is not desired, Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989).
10: Cvacho discloses aluminum (col. 2: 55-60).
11. The tapered metallic cup of claim 9, wherein the height is between approximately 4.0 inches and approximately 7.0 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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.
12. The tapered metallic cup of claim 9, wherein the cup comprises at least three tapered sections (as in fig 1).
13. The tapered metallic cup of claim 9, wherein a maximum inner diameter of the cup comprises a diameter of at least approximately 3.0 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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. The tapered metallic cup of claim 9, wherein a minimum inner diameter of the cup comprises a diameter of not more than approximately 2.50 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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. The tapered metallic cup of claim 9, wherein a minimum wall thickness of the plurality of tapered sections comprises a thickness of less than approximately 0.0070 inches. With respect to the dimensions, 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 above distances in order to accommodate a specific quantity of liquid therein, provide necessary structural rigidity to protect the contents without wasting material or providing too much weight, etc. 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 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. The tapered metallic cup of claim 15, wherein the lower end of the cup comprises an annular standing surface, and wherein the domed portion is provided within the annular standing surface (see the 112 rejection above; nevertheless, Cvacho as for example shown in figure 3, 6 where adjacent standing surface adjacent 32 includes transition such as adjacent 34 with domes portion adjacent 37/44).
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive. Applicant states “all of the elements of the claims (at least as amended) cannot be found in the cited references, whether those references are considered alone or in combination.” The above rejection includes all Applicant’s elements. Applicant states that the new amendments are not provided. Claims 9-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Applicant now provides “consisting essentially of” in claim 9. However, Applicant has failed to provide an embodiment that is exclusively limited to the features of the above claims. Therefore, Applicant has now provided impermissible new matter that must be removed. Claims 10-16 is/are rejected as being dependent on the above rejected claim(s). Claims 1-8, 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In claim 1, Applicant now provides “wherein a contact between adjacent cups of like construction is provided that results in a stand-off height between adjacent curls of first and second stacked cups, the stand-off height being between approximately 0.20 and 1.0 inches”. However, Applicant has merely positively claimed a single cup. Applicant has failed to also make clear as to what adjacent cups refers to. Furthermore, the phrase "like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Claims 2-8 is/are rejected as being dependent on the above rejected claim(s). In claim 1, Applicant now provides “wherein stacked cups of substantially the same construction comprise astand-off height between respective curled portions and wherein the stand-off height is between approximately 0.28 inches and 1.00 inches”. However, Applicant has merely positively claimed a container with a single cup and single piece. Applicant has failed to also make clear as to what stacked cups refers to. Furthermore, Applicant provides the limitation "the same construction”. There is insufficient antecedent basis for this limitation in the claim. Claims 18-20 is/are rejected as being dependent on the above rejected claim(s). The Office notes Applicant’s amendment to “wherein a contact between adjacent cups of like construction is provided that results in a stand-off height between adjacent curls of first and second stacked cups, the stand-off height being between approximately 0.20 and 1.0 inches” of which is subject to the extensive 112 rejections above. Nevertheless, the Office notes that Applicant has chosen to not positively claim an additional cup. The positively claimed cup is fully capable of interacting with another cup with similar construction such as providing another cup of similar construction that provides the above range. Furthermore, the Office notes that the prior art already provides a device with the same claimed features and therefore would provide the above same function. Furthermore, with respect to the range, the Office also notes that 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. The Office notes Applicant’s amendment to “wherein stacked cups of substantially the same construction comprise a stand-off height between respective curled portions and wherein the stand-off height is between approximately 0.28 inches and 1.00 inches” of which is subject to the extensive 112 rejections above. Nevertheless, the Office notes that Applicant has chosen to not positively claim an additional cup. The positively claimed cup is fully capable of interacting with another cup with similar construction such as providing another cup of similar construction that provides the above range. Furthermore, the Office notes that the prior art already provides a device with the same claimed features and therefore would provide the above same function. Furthermore, with respect to the range, the Office also notes that 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. The Office notes that Applicant’s new amendment to “consisting essentially of” and the significant 112 rejections above. Nevertheless, in order to expedite prosecution for Applicant, if there is any question to additional features provides by the prior art, it would have been obvious to one of ordinary skill in the art to omit an element because omission of an element and its function is obvious if the function of the element is not desired, Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). 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
THIS ACTION IS MADE FINAL. 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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/ANDREW D PERREAULT/Primary Examiner, Art Unit 3735
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