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 .
Drawings/Specification
The amendment filed 8-21-26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The dashed-rectangular box and its associated label “239” added to Figure 27 are not originally supported and are new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
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 1-6 and 12 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.
With regards to claim 1 and the specification page 22 line 19, the phrase “first end…abuts against a joint between the main body and the handle” is unclear. The specification fails to provide any insight on the structure that defines the “joint”. Dictionary.com defines joint as: the place at which two things, or separate parts of one thing, are joined or united, either rigidly or in such a way as to permit motion; juncture. Since the specification fails to provide any structural insight about the joint, the definition listed is a reasonable interpretation. Figure 26 has been marked up in light of this definition as the dashed line is the place where the handle and the main body are joined or the dashed line represents the junction of the handle and the main body. Using marked up Figure 26, the tableware has a main body with tapered edges (left of the dashed line) and a handle portion with parallel edges (right of the dashed line) with the dashed line appearing to be where the main body joins the handle portion. Next the specification only discloses item 253 as the first end. There is no disclosure that 253 represents anything but this actual end shown in Figure 27. The first end 253 is clearly laying completely within the main body 230 away from the joint between the main body and the handle. In the response received 5-6-26, Applicant circled an area of the member (page 9) that can be the first end (which would be considered new matter because the specification fails to disclose any details of the first end). However, comparing the circled area in Figure 27 to Figure 26, the circled first end still appears to be within the main body and would not be abutted against a joint between the main body and the handle. There does not appear to be any structure where 253 engages 230 that defines a joint between the main body and the handle as 253 is clearly within the boundaries of main body. It is unclear how the joint abuts the first end when the joint appears to be spaced from the first end. The structure that the first end abuts is part of the main body.
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With regards to claim 1 and the specification, the disclosure that “the joint being a region at which the main body and the handle are connected, thereby reinforcing the environment-friendly tableware against bending at the region” is not supported by the specification and is new matter. The original specification does not include any structure details about the joint between the main body and the handle. Dictionary.com defines joint as: the place at which two things, or separate parts of one thing, are joined or united, either rigidly or in such a way as to permit motion; juncture. Since the specification fails to provide any structural insight about the joint, the definition listed is a reasonable interpretation. The dashed line above represents where the handle and the main body are joined and it is unclear how any other area can be included in that junction. There is no support this joint can more than the provided definition in light of the specification’s lack of a definition. There is no support the joint can be a region. It is unclear what structure allows for the joint to be a region that extends more into the main body than it does into the handle. Why does the main body make up more of the joint than the handle when the joint is the junction between the main body and the handle? There is no support that all portions within dashed box 239 are reinforced against bending. For example, edge portion A (see below) is now disclosed as being a part of the region associated with the joint. It is unclear how edge portion A can be considered part of the joint and how edge portion A is reinforced against bending.
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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 1-6 and 12 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.
With regards to claim 1, the joint is unclear. It is unclear what structure allows for the joint to be a region that extends more into the main body than it does into the handle. Why does the main body make up more of the joint than the handle when the joint is the junction between the main body and the handle? It is unclear how all portions within dashed box 239 are reinforced against bending. For example, edge portion A (see above) is now disclosed as being a part of the region associated with the joint. It is unclear how edge portion A can be considered part of the joint and how edge portion A is reinforced against bending
With regards to claim 1, the phrase “joint being a region at which the main body and the handle are connected” is unclear. Dictionary.com defines joint as: the place at which two things, or separate parts of one thing, are joined or united, either rigidly or in such a way as to permit motion; juncture. The dashed line in the Figure above is where the handle joins the main body. Since the specification fails to provide any structural details about the joint, the definition listed is a reasonable interpretation and is it unclear how the joint can be a region when the portions of the region are spaced from the actual place the handle joins the main body. The specification fails to disclose a region. It is unclear what structures define the region. Where does the region begin and end? Why does the region begin and end in those locations? What structure allows where 253 engages 230 to be in the region?
Claim Rejections - 35 USC § 103
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 1 is rejected, as best understood, under 35 U.S.C. 103 as being obvious over White (2017/0095100) in view of Lee (10,081,095).
With regards to claim 1, White discloses the invention including an environment-friendly tableware (100, Fig. 1) made of pulp or plant fibers (paragraph [0004]) having a handle (Fig. 1) and a main body (Fig. 1) both of which are made of pulp or plant fibers (paragraph [0004]), the main body is located at one end of the handle (Fig. 1), an integral detachable reinforcing member (106, paragraph [0062] discloses the ribs (106) provide addition strength and support and the ribs (106) are repositionable according to user needs. In order to be repositioned, the rib (106) needs to be integral and detachable), a first end of the reinforcing member abuts against a joint between the main body and the handle where the joint is a region at which the main body and the handle are connected thereby reinforcing the tableware against bending at the joint (Fig. 1 and paragraph [0062] discloses the ribs provide addition strength and support and the ribs are repositionable according to user needs).
However, with regards to claim 1, White fails to disclose the handle has a recess that forms a hollow portion that extends along a longitudinal axis of the handle and the reinforcing member is mounted in the hollow portion.
Lee teaches it is known in the art of tableware handles to incorporate a recess that forms a hollow portion (Fig. 4) that extends along a longitudinal axis of the handle (Fig. 3) and the reinforcing member is mounted in the hollow portion (2 in Figs. 3 and 4). Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to have provided both White with recess/hollow portion, as taught by Lee, because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results.
Claims
It is to be noted that claims 2-6 and 12 have not been rejected over prior art. It may or may not be readable over the prior art but allowability cannot be determined at this time in view of the issues under 35 USC § 112. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In reSteele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant's arguments directed at the rejections of the “joint” limitation filed 8-21-26 have been fully considered but they are not persuasive. On page 7 of the arguments, Applicant lists the 112(a) rejection as “for non-enablement”. This is not the case as the rejection is 112(a) written description.
There is no support in the original specification defining the joint as a region, there is no special definition provided in the original specification for the term joint being a region, and the original specification fails to provide any structural details of the joint. Without any of these items, one skilled in the art would interpret the term “joint” using of the definition provided above. The box representing the joint/region in Figure 27 is not supported as it does not correspond with the definition. There is no support the area in its entirety is the joint and is reinforced against bending (see portion A discussion above). The issue is the term “joint”. Since there is nothing in the specification defining what the joint can and cannot be, the Examiner can only use an accepted and reasonable definition when interpreting the term “joint” and Figures 26 and 27 do not correspond with the accepted and reasonable definition used. The abutment of 253 is with a portion of the main body as this is what is clearly shown in Figures 26 and 27. The claims need to correspond to what is shown because the specification does not provide any additional structural details of the joint. Applicant has provided an “arrowed” line on page 8, if this arrowed line is pointing to where 253 abuts the main body, this location is not the joint as discussed above. There is also no support in the original specification for the “arrowed” line or its placement. While Applicant’s can be their own lexicographer, this needs to be done in the original specification. In this case, the “region” has been amended into the specification and is not supported by the original specification and is new matter. The Examiner disagrees that “Applicant’s use of joint is not contrary to its regular accepted meaning”. The dash-box or region extends beyond the place at which two things, or separate parts of one thing, are joined or united, either rigidly or in such a way as to permit motion.
In order to overcome the issue, claim 1 and the specification need to be amended to disclose the abutment is between the first end of the reinforcing member and the main body (i.e. “a first end of the of the reinforcing member abuts against a portion of the main body”) because this is what is shown in Figures 26 and 27 and this is what is supported.
With regards to the rejection of White in view of Lee, paragraph [0062] of White discloses the ribs (106) provide addition strength and support and the ribs (106) are repositionable according to user needs. In order to be repositioned, the rib (106) needs to be integral and detachable. The Modified White has the repositionable/detachable and integral rib in the recess taught by Lee. The rejection has been made as best understood.
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 JASON DANIEL PRONE whose telephone number is (571)272-4513. The examiner can normally be reached Monday-Friday: 7:00 am-3:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer D Ashley can be reached on (571)272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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03 September 2026
/Jason Daniel Prone/
Primary Examiner, Art Unit 3724
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