DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
All previous objections and 35 USC 112 rejections have been overcome.
Applicant's arguments filed 10/1/2025 in response to Office Action 6/6/2025 have been fully considered but they are not persuasive for at least the following reason:
Regarding claims 1 and 9, Applicant argues that Boon does not teach that the lid 11 is hollow, therefore its lid cannot include a hollow top and bottom portion as amended (pages 8 & 9). Specifically, Applicant argues that Boon’s Figure does not show 11 to be hollow. While examiner agrees that 11 being hollow is not shown in the drawings, examiner disagrees with the argument, pointing out that the cited specification of Boon discloses 11 as entirely hollow. In brief discussion of the citation, the “confectionary article [10 is] made from [a] hollow mass” (col 1 first two lines). Because 11 with 12 with 13 altogether define 10, each piece (11, 12, 13) of 10 therefore is hollow, namely the entirety of 11 which includes its bottom portion 14 and its top portion. In other words, 10 could not be a hollow mass, as disclosed, if even one piece of 10 were not hollow. The drawings merely show another option of solid mass, or in Figure 1 alone is silent.
Claim Objections
Claim 20 is objected to because of the following informalities. Appropriate correction is required.
Regarding claim 18, “the container” should read “a container” because it does not depend on claim 14.
Regarding claim 20, line 4 “a widest part” should read “the widest part” since it’s the widest.
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.
Claims 1-2 and 4-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The term “ice cream swirl” is a relative term which renders the claimed “swirl shape” indefinite. The term “ice cream swirl” as a shape is not defined by the claim, the specification does not provide a standard for ascertaining the requisite metes and bounds of the shape, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The metes and bounds are nebulous. How many times does “an ice cream swirl” type swirl wrap around? How many swirls should there be? Can the swirl or swirls be discontinuous? Does every ice cream when swirled always have a curled tip? What thickness/proportion does each swirl wrap around have? Can the swirl remain in a single plane (i.e. crafted of one thickness of ice cream in the perpendicular direction to this plane)? At what stage of time and temperature is the shape of this ice cream swirl assessed: in process, immediately after dispensing, or a few minutes later when melted just a little? Do all machines dispense a single common swirl shape for all ice cream swirls? Is there a difference in manually dispensing? Some swirl machines make the edges of the swirl all equal and not tapered from bottom to top.
Regarding claims 4 and 18, it is unclear if Applicant requires a mason jar or not by reciting “the container is a mason jar”. At least parent claim 1 recites “to fasten the edible lid to a container” which refers to the container only functionally. Since the size of the Applicant’s mason jar and size of the prior art’s edible lid are not disclosed, respectively, examiner interprets these claims also as intended use/functional language. Therefore, the prior art lid need only be – and is – “capable of” fastening to “a mason jar”.
Regarding claim 18, “the container” lacks antecedent basis.
Claims 2 and 4-8 and 10-21 are also rejected for depending upon their rejected parent claims.
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 is incorrect, any correction of the statutory basis 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.
Claims 1 and 20-21 are rejected under 35 U.S.C.103 as being unpatentable over US Pat 2698802 issued to Boon (hereinafter “Boon”) in view of US Pub 20150157041 by Sotolongo (hereinafter “Sotolongo”).
Regarding claim 1, Boon teaches an edible lid (Fig 1, 11 with 14) comprising:
a body, formed via a molding process, comprised of one or more primary ingredients, the one or more primary ingredients comprising at least chocolate, (Fig 1, col 1, lines 60-64, a body is “molded” chocolate bloom 11 with 14), the body comprising:
a top portion formed into a shape (Figs 1 & 3 shows the top portion of 11 is a tulip shape. Examiner notes that Boon’s edible lid 11 shape is necessarily easily released from a mold versus if it were to have overhangs or undercuts);
a base portion sized to fasten the edible lid to a container (Fig 1, a base portion of the body is 14 shown fastened by friction to a container which is stem 12); and
a hollow cavity (Fig 1, col 1, lines 15-19, the lid is entirely “hollow” because the whole confectionary article is disclosed entirely hollow; “confectionary article 10” includes all parts 11, 12 and 13, col 1, lines 58-59), configured to carry a secondary ingredient, formed by an interior of the edible lid (Fig 1, col 1, lines 15-19, the lid hollow is capable of carrying a secondary ingredient different than the lid ingredient (chocolate)).
But does not explicitly teach a particular swirl shape.
Sotolongo, however, teaches an ice cream swirl shape (Figs 2-3 shows ice cream swirl shape of “pre-formed frozen frosting sticker disk 2000” [0027], and “top 2200 [of 2000] is swirl shape” [0019], with “flat bottom 2100”, and 2200 has a tip shown but is a “round tip” [0023]).
It would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date to make an aesthetic design change from a tulip to an “ice cream swirl shape” with a round tip, since it has been held that the configuration of the claimed container (e.g. claimed edible lid is a hollow container) was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04 IV-B.
Examiner notes in support of the rationale that Boon considers and accommodates aesthetic changes wherein “instead of the tulip [11] and flower pot [13] other flowers, statues and like upright and elongated articles may form the design for such composite confectionery or like article” (col 2, lines 15-17), and Sotolongo considers and accommodates a different “flower tip” shape [0023]. Therefore since each prior art allows for the other’s shape, a POSITA can obviously change shape.
Examiner notes that the resultant combination yields the claimed structure via an obvious shape change of the edible lid top portion of Boon to the ice cream swirl shape of Sotolongo.
(wherein related elements of Sotolongo’s shape are taught in light of dependent claim 20:
Fig 2, a top 2200 widest part is shown wider than base 2100, and the widest part of the top portion rests atop)
Regarding claim 4, Boon/Sotolongo further teaches the container (Boon, Fig 1, the disclosed hollow containers stem 12 or pot 13 in which 11 can fit into, see parent claim 1 for details) is a mason jar comprising a dessert item (capability need only be and is met).
Regarding claim 20, Boon/Sotolongo further teaches the base portion (Boon, Fig 1, 14) comprising a cylindrical sidewall (Boon, Fig 1, though shown tapered, 14 is disclosed as a “cylindrical projection” because in col 3, lines 9-15, “the projections and recesses hereinabove mentioned and referred to with respect to Fig. 3 may not necessarily be of tapered cross section but may be cylindrical… or any other suitable connecting formations may be employed to separably attach the head to the stem and the stem to the base or pot” and col 2, line 18, “Fig. 3 shows a confectionery similar to that of Fig. 1”, meaning this Figure 3 disclosure applies to Figure 1 because Fig 3 is similar to Fig 1) and a flat circular bottom surface (Boon, Fig 1, bottom surface of 14 is shown circular and flat; or Sotolongo, Fig 2, “flat bottom 2100”), wherein the base portion is puck shaped (Boon, Fig 1, 14 is puck shaped), wherein
the base portion fastens to the container via friction fit (Boon, Fig 1, 14 is capable of fastening to the container because 14 is “to separably attach” to the container, col 3, lines 13-14, necessarily in a friction fit due to the shown engagement occurring under gravitational force (i.e. contact of lid to rim means friction)), wherein the widest part of the top portion is adjacent to the base portion (Boon, Fig 1, the widest part of 11 is shown adjacent to 14 (wherein under broadest reasonable interpretation “adjacent” means next to, for example every element of the assembly is next to each other); or Sotolongo, Fig 2, top 2200 widest part is shown adjacent to and wider than 2100) and the widest part of the top portion is wider than the base portion (Boon, Fig 1, the widest part of 11 is wider than 14), wherein the widest part of the top portion rests atop the container (Boon, Fig 1, the widest part of the top portion of 11 rests atop the container 12, wherein see examiner annotated Boon and Sotolongo and Invention Figures, hereinafter “EAFBS121”; EAFBS121, shows that the prior art separately and/or in combination “rests atop” equivalently to the recitation of “rests atop” as claimed in plain meaning and as far as it is supported by the disclosure of the invention) and the base portion transverses an opening of the container (Boon, Fig 2, 14 is shown transversing and traversing an entire opening of container 12, and/or container pot 13, col 2, lines 12-13 “11 may be readily inserted and combined with the pot 13”). See details in the parent claim 1 rejection above, including the motivation for a person of ordinary skill in the art to modify.
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Additionally and in the alternative, if an argument may be made that Boon does not expressly disclose the cylindrical bottom portion shape claimed, then it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date to have modified the tapered shape of Boon to be cylindrical, as taught by Boon, since it has been held that the configuration of the claimed container portion was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04 IV-B.
Examiner notes this modification would also make the flat bottom surface claimed circular as claimed should circularity or flatness be disputed as well. Also the friction fit of lid bottom to container does not change with being cylindrical.
Regarding claim 21, Boon further teaches the base portion (Fig 1, 14) forms a seal with the container (Fig 1 shows 14 engaging the container 12 in a friction fit, thereby necessarily meaning fastening/making secure/sealing).
Claims 2, 5-6 and 9-15 and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat 2698802 issued to Boon (hereinafter “Boon”) in view of US Pub 20150157041 by Sotolongo (hereinafter “Sotolongo”) in view of NPL Rototyp (hereinafter “Rototyp”).
Regarding claim 2, Boon teaches the edible lid of claim 1 (see claim 1), but Boon does not explicitly teach a particular molding (Boon, col 1, lines 60-64, “molded”) process.
Rototyp, however, teaches a molding process (whole document) comprises steps of:
forming a liquid mixture via application of heat to the one or more primary ingredients (page 2 & 3, tempered chocolate liquid mixture shown, of white chocolate, page 11. Note that since the step is a tempered chocolate mixture, tempering means the mixture necessarily was heated beforehand. Applicant discloses this as common knowledge [0026] “Whereas a liquid mixture that is not tempered may not assume the desirable crystalline structure, thus rendering said mixture inadequate for molding”. But Boon is “molded” and Rototyp is too so the disclosed tempered chocolate liquid mixture of Rototyp must be adequate for molding because tempering is how it is suitable for molding);
pouring the liquid mixture into a first half and a second half of an unjoined mold (pages 2 & 4-5, both halves poured into);
joining the first half and the second half of the unjoined mold to form a joined mold (pages 2 & 6, unjoined mold halves are joined);
placing the joined mold into a rotocaster (pages 2 & 6, joined mold placed in rotocaster);
casting, via the rotocaster, the joined mold at a molding rate for a first period of time (pages 2 & 7-8, joined mold molding rate is 48 revolutions per minute, for/over a time period of about 5 to 10 minutes, manually; examiner notes that Applicant discloses 30 to 120 seconds [0009] but also [0031] wherein “the rotocaster… may be manually actuated for a period of time between 5 and 10 minutes” and “the first period of time may be any quantity of time sufficient to ensure the liquid mixture solidifies” and “sufficient to form a casted lid” – which Rototyp does);
removing the joined mold from the rotocaster, and allowing said mold to cool for a second period of time (pages 2 & 8 steps 2-3, joined mold is removed from rotocaster and put in fridge where it cools for a second period of time about 10 minutes); and
unjoining the joined mold and ejecting the edible lid (pages 2 & 9-10, joined mold is unjoined and the hollow part ejected).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen the molding process of Rototyp to make the chocolate hollow mold of Boon as it is no more than a simple substitution of one method of molding (i.e. Boon’s undisclosed method yet it is “molded” so has a method, col 1, lines 60-64) for another that is known in the art (i.e. Rototyp) for creating a hollow chocolate and would only produce the predictable results of a hollow chocolate. MPEP 2143 I-B. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation (the entire method is only functionally claimed because it lies within an apparatus claim, and [0050] “the processes described herein are not limited to the specific processing order described herein and, rather, process blocks may be re-ordered, combined, removed, or performed in parallel or in serial, as necessary, to achieve the results set forth herein”).
Also it has been held that 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 (i.e. a hollow lid of at least one ingredient capable of holding another ingredient). MPEP 2113.
Examiner notes that the resultant combination yields the claimed invention via Boon’s lid being rotocasted as taught by Rototyp, in the ice cream swirl shape as taught by Sotolongo, including the mold being rotated at the molding rate for a time period of 30 seconds to 120 seconds (no patentable distinction over end product).
Regarding claim 5, Boon/Sotolongo/Rototyp further teaches the molding rate is between 25 and 50 revolutions per minute (Rototyp, 48 revolutions per minute). See details in the parent claim 2 rejection above, including the motivation for a person of ordinary skill in the art to modify.
Regarding claim 6, Boon does not explicitly teach that the chocolate is a plurality of white chocolate wafers.
Rototyp, however, teaches the chocolate is white chocolate (pages 2 & 11, white chocolate. Examiner notes that “wafers” as disclosed by the Applicant are melted in order to be an ingredient, so the terms “wafer” and “plurality” impart no structure, so is merely a type of chocolate being used in the single hollow lid end product).
It would have been obvious to a person of ordinary skill in the art having the teachings of Rototyp before them before the effective filing date, to have the chocolate be of white chocolate such as from a plurality of wafers, since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use (i.e. edibility) as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Regarding claim 9, Boon teaches an edible lid (Fig 1, 11 with 14) comprising:
a body, formed via a molding process, comprised of one or more primary ingredients (Fig 1, col 1, lines 60-64, a body is “molded” chocolate bloom 11 with 14), the body comprising:
a top portion formed into a shape (Figs 1 & 3 shows the top portion of 11 is a tulip shape. Examiner notes that Boon’s edible lid 11 shape is necessarily easily released from a mold versus if it were to have overhangs or undercuts), the shape configured to reduce undercut formation during the molding process (Fig 1, the tulip shape of 11 is necessarily capable of allowing reduced undercut/overhang formation during molding because of its rounded edges and obtuse angles);
a base portion (Fig 1, 14 shown fastened by friction to a container which is stem 12) comprising: a circular flat bottom surface (Fig 1, bottom surface of 14 is shown circular and flat); and a cylindrical sidewall disposed upon a circumference of the flat bottom surface (Fig 1, though shown tapered, 14 is disclosed as a “cylindrical projection” because in col 3, lines 9-15, “the projections and recesses hereinabove mentioned and referred to with respect to Fig. 3 may not necessarily be of tapered cross section but may be cylindrical… or any other suitable connecting formations may be employed to separably attach the head to the stem and the stem to the base or pot” and col 2, line 18, “Fig. 3 shows a confectionery similar to that of Fig. 1”, meaning the Figure 3 disclosure applies to Figure 1 because Fig 3 is similar to Fig 1);
a hollow cavity, defined within the top portion and the base portion (Fig 1, col 1, lines 15-19, the lid is entirely “hollow” because the whole confectionary article is disclosed entirely hollow (i.e. top and base portion); “confectionary article 10” includes all parts 11, 12 and 13, col 1, lines 58-59), configured to carry a secondary ingredient, formed by an interior of the edible lid (Fig 1, col 1, lines 15-19, the lid hollow is capable of carrying a secondary ingredient different than the lid ingredient (chocolate));
But does not explicitly teach a particular swirl shape.
Sotolongo, however, teaches an ice cream swirl shape (Figs 2-3 shows ice cream swirl shape of “pre-formed frozen frosting sticker disk 2000” [0027], and “top 2200 [of 2000] is swirl shape” [0019], with “flat bottom 2100”, and 2200 has a tip shown but is a “round tip” [0023]).
It would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date to make an aesthetic design change from a tulip to an “ice cream swirl shape” with a round tip, since it has been held that the configuration of the claimed container (e.g. claimed edible lid is a hollow container) was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04 IV-B.
Examiner notes in support of the rationale that Boon considers and accommodates aesthetic changes wherein “instead of the tulip [11] and flower pot [13] other flowers, statues and like upright and elongated articles may form the design for such composite confectionery or like article” (col 2, lines 15-17), and Sotolongo considers and accommodates a different “flower tip” shape [0023]. Therefore since each prior art allows for the other’s shape, a POSITA can obviously change shape.
Examiner notes that the resultant combination yields the claimed structure via an obvious shape change of the edible lid top portion of Boon to the ice cream swirl shape of Sotolongo.
Additionally and in the alternative, if an argument may be made that Boon does not expressly disclose the cylindrical bottom portion shape claimed, then it would have been an obvious matter of design choice to a person of ordinary skill in the art before the effective filing date to have modified the tapered shape of Boon to be cylindrical, as taught by Boon, since it has been held that the configuration of the claimed container portion was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04 IV-B.
Examiner notes this modification would also make the flat bottom surface claimed circular as claimed should circularity or flatness be disputed as well. Also the friction fit of bottom to container does not change with being cylindrical.
But Boon/Sotolongo does not explicitly teach a particular molding (Boon, col 1, lines 60-64, “molded”) process.
Rototyp, however, teaches a molding process (whole document) comprising:
forming a liquid mixture via a tempering process (page 2 & 3, tempered chocolate liquid mixture shown, of white chocolate, page 11, necessarily means a tempering process occurred first before becoming liquid state);
pouring the liquid mixture into a first half and a second half of an unjoined mold (pages 2 & 4-5, both halves poured into), wherein the first and second halves of the unjoined mold correspond to a first half and a second half of the shape (pages 2 & 4-5, the shape is shown halved into the first and second mold half); joining the first half and the second half of the unjoined mold to form a joined mold (pages 2 & 6, unjoined mold halves are joined); placing the joined mold into a rotocaster (pages 2 & 6, joined mold placed in rotocaster); casting, via the rotocaster, the joined mold at 25-50 revolutions per minute for a first period of time (pages 2 & 7-8, joined mold molding rate is 48 revolutions per minute, for/over a time period of about 5 to 10 minutes, manually; examiner notes that Applicant discloses 30 to 120 seconds [0009] but also [0031] wherein “the rotocaster… may be manually actuated for a period of time between 5 and 10 minutes” and “the first period of time may be any quantity of time sufficient to ensure the liquid mixture solidifies” and “sufficient to form a casted lid” – which Rototyp does);
removing the joined mold from the rotocaster and allowing said mold to cool for a second period of time (pages 2 & 8 steps 2-3, joined mold is removed from rotocaster and put in fridge where it cools for a second period of time about 10 minutes); and unjoining the joined mold and ejecting the edible lid (pages 2 & 9-10, joined mold is unjoined and the hollow part ejected).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have chosen the molding process of Rototyp to make the chocolate hollow mold of Boon as it is no more than a simple substitution of one method of molding (i.e. Boon’s undisclosed method yet it is “molded” so has a method, col 1, lines 60-64) for another that is known in the art (i.e. Rototyp) for creating a hollow chocolate and would only produce the predictable results of a hollow chocolate. MPEP 2143 I-B. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation (the entire method is only functionally claimed because it lies within an apparatus claim, and [0050] “the processes described herein are not limited to the specific processing order described herein and, rather, process blocks may be re-ordered, combined, removed, or performed in parallel or in serial, as necessary, to achieve the results set forth herein”).
Also it has been held that 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 (i.e. a hollow lid of at least one ingredient capable of holding another ingredient). MPEP 2113.
Examiner notes that the resultant combination yields the claimed invention via Boon’s lid being rotocasted as taught by Rototyp, in the ice cream swirl shape from molds of the same shape as taught by Sotolongo, including the mold being rotated at the molding rate for a time period of 30 seconds to 120 seconds (no patentable distinction over end product).
Regarding claim 10, Boon/Sotolongo/Rototyp further teaches the tempering process (page 3 tempered chocolate means the tempering process occurred) comprises: placing the one or more primary ingredients into a receptacle; applying heat to the one or more primary ingredients to form the liquid mixture, the heat bringing the liquid mixture to a first temperature; cooling the liquid mixture to a second temperature; and reheating the liquid mixture to a third temperature (Rototyp, since the chocolate is “tempered”, and this is a product by process claim, the claimed tempering process is necessarily a met capability before the chocolate shown in page 3 for each of the three temperatures). See details in the parent claim 9 rejection above, including the motivation for a person of ordinary skill in the art to modify.
Regarding claim 11, Boon/Sotolongo/Rototyp further teaches the first temperature is between 100-120°F, the second temperature is between 80-85°F, and the third temperature is between 85-90°F (Rototyp, again since the end result of this claimed tempering process is the same of the prior art, capability is demonstrated, and the ranges are also met as the capability they are, and simultaneously have no patentable weight). See details in the parent claim 9 rejection above, including the motivation for a person of ordinary skill in the art to modify.
Regarding claim 12, Boon/Sotolongo/Rototyp does not explicitly teach the hollow cavity is configured to carry between 1-3 ounces of the secondary ingredient.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at a lid hollow carry capacity of a weight of 1-3 ounces, having also the teachings of Rototyp before them, recognizing that an increase in weight is directly correlated to increased user enjoyment of the secondary ingredient, which is a desirable characteristic, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Regarding claim 13, Boon/Sotolongo/Rototyp does not explicitly teach the circular flat bottom surface has a diameter of 2.2 inches.
However, would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at a bottom diameter of 2.2 inches, having also the teachings of Rototyp before them, recognizing that the diameter is directly correlated to the mouth size of the container thereby the container’s size (e.g. smaller diameter for less secondary ingredient and a more easily handled corresponding lidded container), which is a desirable characteristic, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Regarding claim 14, Boon further teaches that the cylindrical sidewall of the base portion forms a seal with an opening of a container via friction fit (Fig 1 shows 14 engaging the container 12 in a friction fit, thereby necessarily meaning fastening/making secure/sealing).
Regarding claim 15, Boon/Sotolongo/Rototyp does not explicitly teach a lid height of 4.5 inches; and a lid weight between 1.5 and 3.0 ounces.
However, would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at a lid height of 4.5 inches, having also the teachings of Rototyp before them, recognizing that the height is directly correlated to ease of breaking (e.g. taller is more vulnerable, shorter is less vulnerable), which is a desirable characteristic, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
And it would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at a lid weight of 1.5 and 3.0 ounces, having also the teachings of Rototyp before them, recognizing that an increase in weight is directly correlated to increased shell strength around the hollow to not break before the user handles the contents, which is a desirable characteristic, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Regarding claim 18, Boon/Sotolongo/Rototyp further teaches the container (Boon, Fig 1, the disclosed hollow containers stem 12 or pot 13 in which 11 can fit into, see parent claim 1 for details) is a mason jar comprising a dessert item (capability need only be and is met).
Regarding claim 19, Boon/Sotolongo/Rototyp further teaches the step of unjoining the joined mold and ejecting the edible lid further comprising treating the joined mold with cold to shrink the edible lid (Rototyp includes putting the mold with the lid into a refrigerator at minute 1:43, which necessarily shrinks the lid since its chocolate (i.e. which assists/facilitates ejection)). See details in the parent claim 9 rejection above, including the motivation for a person of ordinary skill in the art to modify.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat 2698802 issued to Boon (hereinafter “Boon”) in view of US Pub 20150157041 by Sotolongo (hereinafter “Sotolongo”) in view of US Pub 20110189370 by McLeod et al. (hereinafter “McLeod”).
Regarding claim 7, Boon/Sotolongo does not explicitly teach that the chocolate edible lid of claim 1 (see claim 1) having a melting point between 17.3°C and 36.3°C.
McLeod, however, teaches a chocolate melting point of between 17.3°C and 36.3°C ([0038], white chocolate/chocolate, [0048], the chocolate shell material is deposited at a temperature of from 28°C to 35°C).
It would have been obvious to one having ordinary skill in the art before the effective filing date to use the claimed range implicitly, since it has been held that it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. MPEP 2144.01. By example in this MPEP section, at a temperature of "about 750-830°C" was found to be met by a reference which expressly taught the same process at 700°C because the reference recognized the possibility of using temperatures greater than 750°C. This matches the scenario at hand since a higher and lower temperature are similarly disclosed by McLeod ([0048] from 25°C to 40°C), so 36.3°C is clearly implicit by inclusion in the range disclosed, and 17.3°C is as well since lower than cited is disclosed. Also, the claimed range is prima facie obvious since the claimed range "overlap[s] or lie[s] inside ranges disclosed by the prior art". MPEP 2144.05. Also, it has been held that 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 (i.e. a same hollow lid of at least one ingredient capable of holding another ingredient). MPEP 2113.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat 2698802 issued to Boon (hereinafter “Boon”) in view of US Pub 20150157041 by Sotolongo (hereinafter “Sotolongo”) in view of US 4992283 issued to Shorey (hereinafter “Shorey”) and evidenced by US D798731 issued to Huang (hereinafter “Huang”).
Regarding claim 8, Boon/Sotolongo further teaches a tip disposed at a top of the edible lid (Boon, Fig 1, the lid 11), wherein the tip does curl (Sotolongo, Figs 2-3, “round tip” [0023]). See details in claim 1 rejection above, including the motivation for a person of ordinary skill in the art to modify.
But does not explicitly teach that the tip does not curl.
Shorey, however, teaches an edible cap tip that does not curl (Fig 1, ice cream 12 is a shell around with a not curled tip, col 5, lines 30-36, like a nipple).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tip of Boon/Sotolongo/Rototyp to be not curled as taught by Shorey in order to advantageously be “more easily taken into the foremouth of a toddler but generally restrict ingestion to the first few centimeters” (Shorey, col 5, lines 30-36) keeping the kid safer. Also it is no more than a simple substitution of one edible lid tip for another that is known in the art for eating and would only produce the predictable results of looking like a round tip as in Applicant Figure 1 (as further evidenced by Huang’s ice cream swirl lid not curled tip). MPEP 2143 I-B. Also it has been held that the configuration of the claimed container (i.e. hollow lid) was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04 IV-B.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat 2698802 issued to Boon (hereinafter “Boon”) in view of US Pub 20150157041 by Sotolongo (hereinafter “Sotolongo”) in view of NPL Rototyp (hereinafter “Rototyp”) in view of US Pub 20110189370 by McLeod et al. (hereinafter “McLeod”).
Regarding claim 16, Boon/Sotolongo/Rototyp does not explicitly teach the chocolate edible lid of claim 9 (see claim 9) having a melting point between 17.3°C and 36.3°C.
McLeod, however, teaches a chocolate melting point of between 17.3°C and 36.3°C ([0038], white chocolate/chocolate, [0048], the chocolate shell material is deposited at a temperature of from 28°C to 35°C).
It would have been obvious to one having ordinary skill in the art before the effective filing date to use the claimed range implicitly, since it has been held that it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. MPEP 2144.01. By example in this MPEP section, at a temperature of "about 750-830°C" was found to be met by a reference which expressly taught the same process at 700°C because the reference recognized the possibility of using temperatures greater than 750°C. This matches the scenario at hand since a higher and lower temperature are similarly disclosed by McLeod ([0048] from 25°C to 40°C), so 36.3°C is clearly implicit by inclusion in the range disclosed, and 17.3°C is as well since lower than cited is disclosed. Also, the claimed range is prima facie obvious since the claimed range "overlap[s] or lie[s] inside ranges disclosed by the prior art". MPEP 2144.05. Also, it has been held that 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 (i.e. a same hollow lid of at least one ingredient capable of holding another ingredient). MPEP 2113.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over US Pat 2698802 issued to Boon (hereinafter “Boon”) in view of US Pub 20150157041 by Sotolongo (hereinafter “Sotolongo”) in view of NPL Rototyp (hereinafter “Rototyp”) in view of US 4992283 issued to Shorey (hereinafter “Shorey”) and evidenced by US D798731 issued to Huang (hereinafter “Huang”).
Regarding claim 17, Boon/Sotolongo/Rototyp further teaches a tip (Sotolongo, Figs 2-3, “round tip” [0023]) disposed at a top of the edible lid (Boon, Fig 1, lid 11). See details in the parent claim 9 rejection above, including the motivation for a person of ordinary skill in the art to modify.
But does not explicitly teach that the tip does not curl.
Shorey, however, teaches an edible cap tip that does not curl (Fig 1, ice cream 12 is a shell around with a not curled tip, col 5, lines 30-36, like a nipple).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tip of Boon/Sotolongo/Rototyp to be not curled as taught by Shorey in order to advantageously be “more easily taken into the foremouth of a toddler but generally restrict ingestion to the first few centimeters” (Shorey, col 5, lines 30-36) keeping the kid safer. Also it is no more than a simple substitution of one edible lid tip for another that is known in the art for eating and would only produce the predictable results of looking like a round tip as in Applicant Figure 1 (as further evidenced by Huang’s ice cream swirl lid not curled tip). MPEP 2143 I-B. Also it has been held that the configuration of the claimed container (i.e. hollow lid) was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant. MPEP 2144.04 IV-B.
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.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. See attached PTO-892.
US 20120058218 – a filled shell lid held in a receptacle (Fig 1)
US 20110223292 – seal friction fit to a container (Fig 1)
Lowcarblove NPL – mason jar with dessert inside sealed by partially edible lid
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC C BALDRIGHI whose telephone number is (571)272-4948. The examiner can normally be reached M-F 7:30-5:00 EST.
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/ERIC C BALDRIGHI/Examiner, Art Unit 3733
/DON M ANDERSON/Primary Examiner, Art Unit 3733