DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The claim recites the gripping band integral with a plastic cup; however, a plastic cup is not part of the gripping band and thus the claims fail to limit the parent claim which is directed to a gripping band. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 10-13, 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0321460 to Kim in view of US 2008/0078824 to Spriegel et al. (Spriegel).
Regarding claim 10, Kim discloses a gripping band (1) for a cup to increase user grip (intended use) comprising a plurality of outwardly embossed gripping projections (3) formed in an array, wherein the gripping projections have diameters of less than .2 inches (€0023), wherein the embossed gripping projections (3) are formed in a pattern of offset horizontal circumferential rows (Fig 3). Kim does not teach teaches the band further including at least one logo area including an embossed logo. However, Spriegel discloses that it was known in the art to incorporate an embossed logo (204, Fig 2, €0027) to a gripping band and one of ordinary skill in the art would have found it obvious to incorporate an embossed logo to Kim as suggested by Spriegel in order to provide information or advertisement on the band. In particular, the immediate area surrounding the logo can be considered the logo area.
Regarding claim 11, Kim further discloses wherein the embossed gripping projections are formed in eight rows (Fig 3) but does not teach formed by thermoforming. However, Spriegel further discloses sleeves (110) with gripping projections (118) made of thermoplastic (€0025) and one of ordinary skill in the art would have found it obvious to manufacture the band of Kim out of plastic as suggested by Spriegel in order to facilitate insulation since it has been held that selection of a known plastic to make a container of a type of material prior to invention was held to be obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Furthermore, the modified Kim would be capable of being formed by thermoforming since it has the structure as recited. Note that product by process limitations are given little patentable weight.
Regarding claim 12, Kim discloses the band of claim 11 but does not teach each projection having a semi-spherical shape. However, Spriegel discloses a gripping band (110, Fig 1) and in particular discloses gripping projections (118) being of semi-spherical shape (€0025). One of ordinary skill in the art would have found it obvious to change the shape of the Kim projections to semi-spherical as suggested by Spriegel to facilitate insulation.
Regarding claim 13, the modified Kim teaches the band of claim 12 but does not teach the specific dimension of the projection as recited. However, Kim discloses the suggested range of diameter for each projection (€0023) and one of ordinary skill in the art would have found it obvious to change the dimensions of each diameter to be less or greater than the range disclosed such as about .06 inch depending on the size of the band and size of the container for the band to go around in order to facilitate gripping and insulation of the band since it has been 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. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984).
Regarding claim 15, as best understood, the modified Kim teaches the band of claim 14 and further teaches the band capable of being integrated with a cup as recited since it has the structure as recited.
Regarding claim 16, the modified Kim teaches the band of claim 14 but does not teach the band integral with a silicon ring sized to receive a cup. However, Spriegal further discloses the gripping band (110) integral with a silicon ring to receive a convention conical disposable cup (102) (Fig 1, €0025) and one of ordinary skill in the art would have found it obvious to manufacture the Kim band out of silicon to form an integral silicon ring as suggested by Spriegal in order to facilitate insulation (Spriegal, €0025) since it has been held that selection of a known material to make a container of a type made of the material prior to the invention was held to be obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Regarding claim 17, Kim discloses a band (1, Fig 2) for holding a cup to increase user grip (intended use) comprising a ring band body (2) and a plurality of outwardly embossed gripping projections (3) formed in an array on the ring band body (2), wherein the gripping projections have effective diameters of less than .2 inches (€0023), wherein the embossed gripping projections (3) are formed in a pattern of offset horizontal circumferential rows (Fig 3). Kim does not teach the band made of silicon material. However, Spriegal discloses a gripping band (110) made of silicon to receive a convention conical disposable cup (102) (Fig 1, €0025) and one of ordinary skill in the art would have found it obvious to manufacture the Kim band also out of silicon as suggested by Spriegal in order to facilitate insulation (Spriegal, €0025) since it has been held that selection of a known material to make a container of a type made of the material prior to the invention was held to be obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Kim does not teach teaches the band further including at least one logo area including an embossed logo. However, Spriegel further discloses that it was known in the art to incorporate an embossed logo (204, Fig 2, €0027) to a gripping band and one of ordinary skill in the art would have found it obvious to incorporate an embossed logo to Kim as suggested by Spriegel in order to provide information or advertisement on the band. In particular, the immediate area surrounding the logo can be considered the logo area.
Regarding claim 18, Kim further discloses wherein the embossed gripping projections are formed in eight rows (Fig 3) but does not teach formed by thermoforming. However, Spriegel further discloses sleeves (110) with gripping projections (118) made of thermoplastic (€0025) and one of ordinary skill in the art would have found it obvious to manufacture the band of Kim out of plastic as suggested by Spriegel in order to facilitate insulation since it has been held that selection of a known plastic to make a container of a type of material prior to invention was held to be obvious. In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Furthermore, the modified Kim would be capable of being formed by thermoforming since it has the structure as recited. Note that product by process limitations are given little patentable weight.
Regarding claim 19, the modified Kim teaches the band of claim 18 but does not teach each projection having a semi-spherical shape. However, Spriegel discloses a gripping band (110, Fig 1) and in particular discloses gripping projections (118) being of semi-spherical shape (€0025). One of ordinary skill in the art would have found it obvious to change the shape of the Kim projections to semi-spherical as suggested by Spriegel to facilitate insulation.
Regarding claim 20, the modified Kim teaches the band of claim 19 but does not teach the specific dimension of the projection as recited. However, Kim discloses the suggested range of diameter for each projection (€0023) and one of ordinary skill in the art would have found it obvious to change the dimensions of each diameter to be less or greater than the range disclosed such as about .06 inch depending on the size of the band and size of the container for the band to go around in order to facilitate gripping and insulation of the band since it has been 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. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Spriegel and US 2013/0213987 to Drutz.
Regarding claim 14, the modified Kim teaches the band of claim 13 but does not teach the logo area being oval. However, Drutz discloses a gripping band (10) and in particular discloses a logo area (at 80) on the band, the logo area being oval. One of ordinary skill in the art would have found it obvious to incorporate an oval logo area to the modified Kim as suggested by Drutz in order to facilitate display of the logo.
Response to Arguments
Applicant's arguments filed 9/16/2025 have been fully considered but they are not persuasive. Applicant first argues the rejection of 35 USC 112, fourth paragraph. Applicant argues that there is support in the original disclosure for a gripping band integral with a cup. This is not persuasive because the rejection states that claim 15 does not limit the parent claim which is directed to a gripping band. Claim 15 recites that the gripping band is integral with a plastic cup; however, a plastic cup is not part of a gripping band and thus the claim limitation fails to limit the parent claim, which is directed to a gripping band. Note that parent claim is not directed to a combination of a gripping band and cup.
Applicant argues that prior art does not teach outwardly embossed gripping portions. This is not persuasive because Kim explicitly discloses the gripping portions (31) that are outwardly embossed (€0021). Applicant argues that dimples (3) comprise both outwardly (31) and inwardly embossed components. Since the claims do not limit the dimples to only be outwardly embossed components, Kim meets the claim limitation.
In response to applicant's argument that the dimples of the prior art are not designed as gripping elements, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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, both Kim and Spriegel teach container sleeves. Kim discloses a sleeve without a logo area and Spriegel discloses embodiments where a sleeve has projections (Fig 1) and a sleeve with a logo (Fig 2). One of ordinary skill in the art would have found it obvious to combine the features such that the Kim sleeve with projections also have a logo in order to provide advertisement for the sleeve.
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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/ROBERT POON/Examiner, Art Unit 3735