DETAILED ACTION
Response to Arguments
1. Applicant’s arguments with respect to claims 1-3 are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Rejections - 35 USC § 112
2. 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.
3. Claims 6-11 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.
Regarding each of claims 6 and 7, the claims are indefinite because of a conflict between the express limitations of “no additional features” and the preamble of parent claim 1, which uses the transitional phrase “comprising”. Examiner notes the proper way to create a limitation which is closed to unrecited elements is the use of the phrase “consisting of”. See MPEP 2111.03(III), third paragraph.
Further regarding each of claims 6 and 7, the phrase “the flat surface” lacks proper antecedent basis in the claims.
Regarding each of claims 8 and 9, the claims are indefinite because the word “may” does not explicitly state what the lid comprises.
Regarding each of claims 10 and 11, the phrase “the composition” lacks proper antecedent basis in the claims.
Claim Rejections - 35 USC § 102
4. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
5. Claims 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,678,720 (Van Melle).
Regarding claim 4, Van Melle teaches a lid comprising two or more rims of different sizes (46 and 56) ascendingly layered as tiers to fit the openings of multiple sizes of containers from large to small (see Figures 1 and 2; explicitly stated in col. 5, lines 35-41).
Regarding claim 6, the flat surface of the lid has no additional features (Examiner notes the flat upper surface 2 of Rozenberg has no additional features as seen in Figure 2).
Claim Rejections - 35 USC § 103
6. The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
7. Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,097,974 (Rozenberg) in view of US 2005/0224446 (Perrin).
Regarding claim 5, lid (5) with two or more rims (see annotated Figure 2 below showing reading of rims) of different sizes ascendingly layered as tiers to fit the openings of multiple sizes of containers (clearly shown to increase in diameter from top to bottom, noting that 10a is an arrow and not representative of the overall rim diameter, and which secure to container collars 6a, 11a, and 20 of progressively larger diameter from top to bottom) comprising a line of perforations (not disclosed; instead discloses lines of weakness 4a and 19) and a pull tab (16) with which to separate and remove the lowest rim layer (col. 5, lines 28-30; Examiner notes removal of skirt 3a will invariably remove skit 18).
Perrin, analogous to closures with tearable sections, teaches it is obvious to replace a line of weakness with perforations (para. [0030]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the lines of weakness of Rozenberg, forming them as perforations, as taught by Perrin, motivated by an obvious substitution of a known tearing mechanism for another, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
PNG
media_image1.png
511
903
media_image1.png
Greyscale
Regarding claim 7, the flat surface of the lid has no additional features (Examiner notes the flat upper surface 2 of Rozenberg has no additional features as seen in Figure 2).
8. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,678,720 (Van Melle) as applied above under 35 USC 102(a)(1) to claim 4, in view of US 2024/0092541 (Takano).
Regarding claim 8, Van Melle as applied above fails to teach the surface of the lid may contain features comprising one or more of the following: slits for straw insertion, a straw-type mouthpiece, a drink-through mouthpiece or sip holes, flavor indicator push buttons, pressure equalization valve, logos or wording.
Takano, analogous to lids for containers, teaches it is known to provide either a lid (1) with no sip hole (Figure 1; analogous to the structure of Van Melle) or one with a sip hole (24; Figures 9-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the lid of Van Melle with a sip hole as taught to be known by Takano, motivated by the benefit of providing a means to dispense the contents without removal of the lid, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Furthermore, regarding the physical combination, the question is not whether the prior art devices can be physically combined, but whether a person of ordinary skill in the art would have found it obvious to combine different features or elements of known devices in a predictable way. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983): "There is a distinction between trying to physically combine the two separate apparatus disclosed in two prior art references on the one hand, and on the other hand trying to learn enough from the disclosures of the two references to render obvious the claims in suit. ...Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference." See MPEP 2145(III).
9. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,097,974 (Rozenberg) in view of US 2005/0224446 (Perrin) as applied above to claim 5, and further in view of US 2024/0092541 (Takano).
Regarding claim 9, Rozenberg in view of Perrin as applied above fails to teach the surface of the lid may contain features comprising one or more of the following: slits for straw insertion, a straw-type mouthpiece, a drink-through mouthpiece or sip holes, flavor indicator push buttons, pressure equalization valve, logos or wording.
Takano, analogous to lids for containers, teaches it is known to provide either a lid (1) with no sip hole (Figure 1; analogous to the structure of Rozenberg) or one with a sip hole (24; Figures 9-10).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the lid of Rozenberg in view of Perrin with a sip hole as taught to be known by Takano, motivated by the benefit of providing a means to dispense the contents without removal of the lid, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Furthermore, regarding the physical combination, the question is not whether the prior art devices can be physically combined, but whether a person of ordinary skill in the art would have found it obvious to combine different features or elements of known devices in a predictable way. See Orthopedic Equip. Co. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983): "There is a distinction between trying to physically combine the two separate apparatus disclosed in two prior art references on the one hand, and on the other hand trying to learn enough from the disclosures of the two references to render obvious the claims in suit. ...Claims may be obvious in view of a combination of references, even if the features of one reference cannot be substituted physically into the structure of the other reference." See MPEP 2145(III).
10. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,678,720 (Van Melle) as applied above under 35 USC 102(a)(1) to claim 4, in view of US 2022/0089862 (Johnson).
Regarding claim 10, Van Melle as applied above teaches that the composition is polymeric (col. 4, lines 43-46) but fails to teach the material including recycled, compostable, PLA or biodegradable material in which the lid is made by thermoforming or injection molding.
Johnson, analogous to polymer container and closures, teaches use of a biodegradable polymer in compression molding of containers and closures (see paras. [0001] and [0020]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the lid of Van Melle of a biodegradable polymer as taught by Johnson, motivated by the benefit of preventing long-term waste in landfills, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
11. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,097,974 (Rozenberg) in view of US 2005/0224446 (Perrin) as applied above to claim 5, and further in view of US 2022/0089862 (Johnson).
Regarding claim 11, Rozenberg in view of Perrin as applied above teaches that the composition is polymeric (see molded plastic in the Abstract) but fails to teach the material including recycled, compostable, PLA or biodegradable material in which the lid is made by thermoforming or injection molding.
Johnson, analogous to polymer container and closures, teaches use of a biodegradable polymer in injection molding of containers and closures (see paras. [0001] and [0020]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the lid of Rozenberg of a biodegradable polymer as taught by Johnson, motivated by the benefit of preventing long-term waste in landfills, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES N SMALLEY/Examiner, Art Unit 3733