DETAILED ACTION
This is a first reissue action of U.S. Patent No. 11,497,343 (hereafter “ the ‘343” patent and equivalent), filed 18 August 2023. For reissue applications filed on or after 16 September 2012, all references to 35 USC § 251 and 37 CFR §§ 1.172, 1.175 and 3.373 are to the current provisions.
The following is the status of the claims as presented, with status provided with respect to the claims as patented:
Claim 1 is amended; and
Claims 2-14 remain as patented.
Notice of Pre-AIA or AIA Status
The present application, filed on or after 16 March 2013, is being examined under the first inventor to file provisions of the AIA .
Original Disclosure - Definition
The present application is a reissue of US Patent No. 11,497,343, which issued from App. No. 16/100,204 having a filing date of 24 January 2019. Application No. 16/100,201 claims priority to Provisional Application No. 62/536,174, filed 24 July 2017.
Any subject matter added during either the examination of the present reissue application or the earlier concluded examination of the ‘204 application does not constitute part of the “original disclosure”.
Maintenance Fees
Review of the file indicates that no maintenance fees are due as of the date of this action. The 3.5 year fee has a window that opens 15 November 2025.
Information Disclosure Statement (IDS)
It is noted that an IDS has not been filed with the instant application that contains all the references listed in the issued patent. The absence of a list of these references could result in a reissue patent’s issuing without all the prior art documents listed on the original patent. Should applicant want any prior art documents listed in any resulting reissue, then applicant must submit an IDS listing the respective art unless the respective art is listed on an attached form PTO-892. See MPEP 1406.
Claim Rejection – 35 USC 251 Recapture
The following is a quotation of 35 USC §251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
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(c) APPLICABILITY OF THIS TITLE.— The provisions of this title relating to applications for patent shall be applicable to applications for reissue of a patent, except that application for reissue may be made and sworn to by the assignee of the entire interest if the application does not seek to enlarge the scope of the claims of the original patent or the application for the original patent was filed by the assignee of the entire interest.
Claims 1-8 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Step 1:
Independent claim 1, as amended and subject to reissue, and claims 2-8 by dependency are broader than claims 1-8, respectively of the claims as patented. Claim 1 as amended does not require “each respective ridge [of a plurality of ridges] radially oriented to extend between the bottom opening and an edge of the removable cap” (emphasis added). This language was deleted in amended claim 1.
Therefore step 1 of the three-step test is met for claims 1-8.
Step 2:
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘343 patent (See Application No. 16/100,204), the Examiner rejected claim 1, which did not contain the language at issue, under 35 USC 103 citing Adler (U.S. Patent 7,849,784 B2) in view of Banasik (U.S. Patent 8,663,724 B1) (see ‘204 Office Action dated 21 July 2020, beginning page 4). The Applicant’s response dated 02 October 2020, included an amendment to Independent Claim 1 to include the language at issue. In the following Office action dated 18 November 2020, Claim 1 was indicated as allowable (see page 5).
Therefore, the Patent Owner amended claim 1 to add the limitations directed to “a plurality of ridges disposed on the removable cap, each respective ridge radially oriented to extend between the bottom opening and an edge of the removable cap” and argued that the prior art did not include the amended limitations (response dated 19 October 2020: pages 10 and 11). Therefore, the newly presented claims must include the limitations of the argued limitation. Claim 1 and dependent claims 2-8 fail to disclose any of the limitations added to the claims to make them allowable.
Therefore, the limitations of Claim 1 directed to the radially extending plurality of ridges, as claimed, are limitations which are considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claim 1 is being broadened to omit the surrendered subject matter. Claim 1, as amended, does not include the details of the surrendered subject matter with respect to the direction of the extension of the ridges.
Therefore step 2 of the three-part test is met.
Step 3:
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
The third step in the recapture analysis is, to determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. The third step include two different types of analysis that must be performed.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Claim 1, as amended, deletes the details that the ridges radially extend as claimed.
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
In the language of amended patented Claim 1 under reissue, the deleted language was replaced with the following: “a plurality of standoff ridges disposed on the removable cap, the plurality of standoff ridges configured to support a filter at a minimum distance between the filter and a surface of the removable cap, the filter placed inside the removable cap”. While the language adds limitations directed to establishing a minimum distance between a filter and surface of the removable cap, it does not contain language directed to the radial orientation of the ridges.
Claims 1 and, via claim dependency, claims 2-8 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Amendments
The amendment to the claims filed on 03/02/15 is objected to as not complying with the requirements of 37 CFR 1.173(b)(2) and (d)(1)&(2) because each change relative to the ‘343 patent has not been properly marked. 37 CFR 1.173(b)(2) and (d)(1)&(2) state:
(b) Making amendments in a reissue application. An amendment in a reissue application is made either by physically incorporating the changes into the specification when the application is filed, or by a separate amendment paper. If amendment is made by incorporation, markings pursuant to paragraph (d) of this section must be used. If amendment is made by an amendment paper, the paper must direct that specified changes be made, as follows:
(2) Claims. An amendment paper must include the entire text of each claim being changed by such amendment paper and of each claim being added by such amendment paper. For any claim changed by the amendment paper, a parenthetical expression “amended,” “twice amended,” etc., should follow the claim number. Each changed patent claim and each added claim must include markings pursuant to paragraph (d) of this section, except that a patent claim or added claim should be canceled by a statement canceling the claim without presentation of the text of the claim.
(d) Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined, except for amendments submitted on compact discs (§§ 1.96 and 1.821(c)). Matter added by reissue on compact discs must be preceded with “<U>” and end with “</U>” to properly identify the material being added.
The claims presented in the amendment filed 03/02/15 do not include markings with respect to the original claims of the ‘343 patent. As provided, the amendments do not comply with 37 CFR 1.173(d)(1), as the language being deleted has been lined-through as opposed to enclosed in brackets.
These corrections should be submitted with the next correspondence.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
Fig. 1B: 125
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
While not necessarily an objection, the following is noted with respect to the figures provided 18 August 2023:
Figs. 3A and 3B appear to be upside-down as shown as opposed to an in-use orientation. This can result in confusion in interpretation of the invention in light of the disclosure.
Claim Rejections - 35 USC § 112
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 1-14 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.
Claim 1: the following is noted:
The language of lines 11-13 is indefinite with respect to the filter. Line 12 states “ridges configured to support a filter…”, which is functional language not positively claiming a filter. Line 13 states, “the filter placed…” which does positively claim the filter. As written, it is unclear if the filter is being positively claimed or is considered functional only. The examiner requests applicant to amend the language to either keep the filter as a functional limitation, or positively claim the filter so the scope of the invention is clear.
Claim 3: the following is noted:
“readily” (line 3) is indefinite as the metes and bounds of what constitutes “readily” cannot be determined based on the language of the claim or the disclosure as provided;
“the beverage container” (lines 2 and 3) lacks antecedent basis.
Claim 4: the following is noted:
“air-tight piston” (line 2) is indefinite as claimed, as it is directed to a piston, not a piston in combination with another feature to define what would be air tight as claimed (e.g., a cylinder). Further, the language with respect to the invention is indefinite, as it is unclear how the system could be air-tight, as a valve is present to permit release at a given pressure.
Claim 5: the following is noted:
“lowest point” (line 3) is indefinite, as “lowest” is a relative term, and no orientation is provided to determine what would constitute a “lowest point”.
Claim 6: the following is noted:
“each respective ridge” (line 1) lacks antecedent basis.
Claim 9: the following is noted:
“horizontally” (lines 2 and 9), “vertical” (lines 4 and 6) and “horizontal” (line 7) are indefinite as these is a directions with respect to the surface of the Earth and are constant regardless of the orientation of the device. In other words, the directions “horizontal” and “vertical” do not change regardless of how the remaining limitations are oriented;
“each respective standoff ridge” (lines 7 and 8) lacks antecedent basis;
“air-tight piston” (line 21) is indefinite for reasons provided in claim 4, which will not be repeated here for brevity.
Claim 11: the following is noted:
“air-tight” (line 16) is indefinite for reasons provided in claim 4, which will not be repeated here for brevity.
Claim 12: the following is noted:
“characteristic” (line 3) is indefinite, as the metes and bounds of what constitutes “characteristic” cannot be determined based on the language provided. It is a relative term subject to broad interpretation which could be beyond the scope of the disclosure provided;
“horizontally” (line 12) is indefinite for reasons provided in claim 9, which will not be repeated here for brevity.
Claim 14: the following is noted:
“liquid” (line 2) lacks antecedent basis.
Those claims listed under this heading but not directly addressed are rejected as being dependent from a rejected claim, either directly or indirectly.
Prior Art Rejections
The examiner has no art to cite against Claims 1-14 at this time; however, the claims are subject to rejections under 35 USC 112 and 251 as noted above. The claims will be subject to further consideration upon remedying these rejections along with any other matter raised in this Office action.
Continuing Obligations
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,497,343 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application. These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. For systems with similar features, see the following:
Kuempel (U.S. Publication 2012/0186456 A1)
Do (U.S. Patent 9,723,942 B2)
Brown (U.S. Patent 5,213,236 A)
Feeney (U.S. Patent 6,561,080 B1)
Geissler (U.S. Publication 2012/0312173 A1)
Cerroni (U.S. Publication 2010/0116143 A1)
Rolfes (U.S. Publication 2012/0260806 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM V GILBERT whose telephone number is (571)272-9055. The examiner can normally be reached M-F 0800-0430 Eastern.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eileen Lillis can be reached on 571.272.6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM V GILBERT/Reexamination Specialist, Art Unit 3993
Conferees:
/MATTHEW J KASZTEJNA/Reexamination Specialist, Art Unit 3993
/Patricia L Engle/SPRS, Art Unit 3993