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 .
Response to Amendment
This office action is in response to the reply filed on 11/20/2025, wherein claims 1, 7, 10-14, 18 were amended, claim 6 is cancelled. Claims 1-5 and 7-19 are pending.
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 1-5 and 7-19 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. Claim 1 and 13 state at least one groove longitudinally aligned with the vent hole. However, this exact relationship fails to be supported by the as filed disclosure. It is absent from the specification. Figures 8-9 show a cross section in which the grooves longitudinal axis (240) clearly does not align with the vent holes (146) longitudinal axis. Claims 2-5, 7-12, 14-19 directly or indirectly depend from claim 1 or 13 and are also rejected. For the same reasoning claims 7 and 14 are rejected as it reads “the first groove longitudinally aligned with the vent hole”.
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 1-5 and 7-19 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.
The term “at least one groove longitudinally aligned with the vent hole” in claim 1 and 13 is a relative term which renders the claim indefinite. The term “at least one groove longitudinally aligned with the vent hole” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Normally, this means that the longitudinal axis of each feature (the vent hole and the groove) extend along the same axis. However, Figures 8-9 show a cross section in which the grooves longitudinal axis (240) clearly does not align with the vent holes (146) longitudinal axis. It is unclear if there are any compliant proper interpretations and if one is being used. Claims 2-5, 7-12, 14-19 directly or indirectly depend from claim 1 or 13 and are also rejected. Claims 7 and 14 have similar language regarding the first groove that requires correction.
The term “includes a mounting structure dependinq from the inner surface of the lid body ” in claim 1is a relative term which renders the claim indefinite. The term “includes a mounting structure dependinq from the inner surface of the lid body” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What does depend mean in this context? The mounting structure is not part of the inner surface of the lid body, nor is it clear how it “depends” from the inner surface of the lid body. Normally, this could be used to describe a mounting structure that included a protrusion on the inner surface of the lid body. However, this is not the case for the present invention. This has a broad interpretation, such that any form of relation (even distant) can be considered “depending from the inner surface of the lid body”.
Claim 13 recites the limitation "the upper" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 7-10, and 13-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-13 and 15-19 of U.S. Patent No. 17/583320. Although the claims at issue are not identical, they are not patentably distinct from each other because
Limitations of claim 1 of the present invention correspond to claim 1 of the reference application. The current invention discloses a lid for an associated drinking container comprising: a lid body defining a longitudinal axis, the lid body includes an outer surface forming an exterior of the lid body and an inner surface of the lid body (inherent), the outer surface provided with a vent hole extended in a direction substantially parallel to the longitudinal axis; a poppet mouthpiece that seals against a first inner surface of the inner surface of the lid body via at least one annular seal ring provided on an exterior surface of the mouthpiece, the mouthpiece movable along the longitudinal axis between a closed position and an open position relative to the lid body, when in the open position the mouthpiece allows fluid from inside the associated drinking container to flow through the mouthpiece; and a resilient sealing member fitted on the lid body and adapted to sealingly engage the lid body to an open end of the associated drinking container, the sealing member includes an annular flange sealingly engaging a second inner surface of the inner surface of the lid body, the flange includes at least one groove extended in a direction substantially parallel to the longitudinal axis and longitudinally aligned with the vent hole, the at least one groove defines a predetermined location on the lid where ambient air flowing into the vent hole can enter an interior of the associated drinking container as fluid flows out of the associated drinking container through the mouthpiece in the open position. (limitations of lines 1-17 of claim 1 of the reference application)
Examiner Note: The vent hole is a 3-dimensional object/recess. It would inherently have extension in a direction substantially parallel to the longitudinal axis. This does not state that the longitudinal axes are aligned. Additionally with respect to “via at least one annular seal ring provided on an exterior surface of the mouthpiece” the reference application states “at least one annular seal ring provided on the mouthpiece”. The term “on” indicating exterior placement. Lastly, refer to 112a and 112b errors for “longitudinally aligned with the vent hole” as new matter and unclear. The reference application states communication between the two surfaces.
Limitations of claim 2 of the present invention correspond to claim 1 of the reference application. The current invention discloses wherein the sealing member includes an annular sealing body mounted to the lid body for sealingly engaging the open end of the associated drinking container, the flange depends from the sealing body. (limitations of lines 18-20 of claim 1 of the reference application)
Limitations of claim 3 of the present invention correspond to claim 3 of the reference application. The current invention discloses wherein the at least one groove is extended onto the sealing body with an opening of the at least one groove provided on the sealing body. (limitations of lines 1-3 of claim 3 of the reference application)
Limitations of claim 4 of the present invention correspond to claim 4 of the reference application. The current invention discloses wherein the sealing body includes an annular stepped section which at least partially defines an air pathway from the vent hole toward the opening of the at least one groove. (limitations of lines 1-3 of claim 4 of the reference application)
Limitations of claim 5 of the present invention correspond to claim 5 of the reference application. The current invention discloses wherein the air pathway is further defined by an upper wall of the lid body. (limitations of lines 1-2 of claim 5 of the reference application)
Limitations of claim 7 of the present invention correspond to claim 7 of the reference application. The current invention discloses wherein the at least one groove includes a first groove and a second groove circumferentially spaced relative to the longitudinal axis from the first groove, the first groove longitudinally aligned with the vent hole, each of the first and second grooves includes an open first end in communication with the vent hole and a closed second end, a section of the flange is extended beneath the closed second end and is sealing engaged to the second inner surface of the lid body. (limitations of lines 1-6 of claim 7 of the reference application)
Examiner Note: Refer to 112a and 112b errors for “longitudinally aligned with the vent hole” as new matter and unclear. The reference application states communication between the two surfaces.
Limitations of claim 8 of the present invention correspond to claim 8 of the reference application. The current invention discloses wherein the at least one groove further includes a third groove circumferentially spaced relative to the longitudinal axis from the first groove and the second groove, wherein the sealing member is adapted such that suction applied to the mouthpiece in the open position causes ambient air to flow through the vent hole and collect in each groove, the flange is adapted to maintain sealed engagement with the second inner surface until air pressure in at least one of the grooves exceeds a predetermined pressure wherein the flange at least partially separates from the second inner surface at the location of the at least one groove allowing ambient air flowing into the vent hole to enter an interior of the associated drinking container as fluid flows out of the associated drinking container through the mouthpiece. (limitations of lines 1-11 of claim 8 of the reference application)
Limitations of claim 9 of the present invention correspond to claim 9 of the reference application. The current invention discloses wherein the at least one groove is defined by a bulge section formed on the flange. (limitations of lines 1-2 of claim 9 of the reference application)
Limitations of claim 10 of the present invention correspond to claim 10 of the reference application. The current invention discloses wherein the first inner surface of the lid body is defined by a first inner sleeve extended parallel to the longitudinal axis, and the lid body includes a mounting structure depending from the inner surface of the lid body for the mouthpiece connected to the first inner sleeve. (limitations of lines 1-3 of claim 10 of the reference application)
Examiner Note: a first inner sleeve “extended parallel to the longitudinal axis” as a 3-dimensional object, the feature can be considered as extending in a multitude of directions, including an axis that is parallel to the longitudinal axis. The phrase “depending from the inner surface of the lid body” is taught by “connected to” the first inner sleeve.
Limitations of claim 13 of the present invention correspond to claim 13 of the reference application. The current invention discloses lid for an associated drinking container comprising: a lid body defining a longitudinal axis, the lid body includes an upper wall an outer surface forming an exterior of the lid body, an outer side wall extending downwardly from the upper wall, and an inner surface forming an interior of the lid body, the upper provided with a vent hole extended in a direction substantially parallel to the longitudinal axis; a mouthpiece movable between a closed position and an open position relative to the lid body, when in the open position the mouthpiece allows fluid from inside the associated drinking container to flow through the mouthpiece; and a resilient sealing member fitted on the lid body, the sealing member adapted to sealingly engage the lid body to an open end of the associated drinking container, the sealing member includes an annular flange sealingly engaging the inner surface, the flange includes at least one groove longitudinally aligned with the vent hole and having an open end in communication with the vent hole and a closed end, wherein the sealing member is adapted such that suction applied to the mouthpiece in the open position causes ambient air to flow through the vent hole and collect in the at least one groove, until air pressure in the at least one groove exceeds a predetermined pressure wherein the sealing member is adapted to allow allowing ambient air flowing into the vent hole to enter an interior of the associated drinking container as fluid flows out of the associated drinking container through the mouthpiece. (limitations of lines 1-21 of claim 13 of the reference application)
Examiner Note: The vent hole is a 3-dimensional object/recess. It would inherently have extension in a direction substantially parallel to the longitudinal axis. This does not state that the longitudinal axes are aligned. Lastly, refer to 112a and 112b errors for “longitudinally aligned with the vent hole” as new matter and unclear. The reference application states communication between the two surfaces.
Limitations of claim 14 of the present invention correspond to claim 13 of the reference application. The current invention discloses wherein the at least one groove includes a first groove and a second groove circumferentially spaced relative to the longitudinal axis from the first groove, the first groove longitudinally aligned with the vent hole, each of the first and second grooves has an open end in communication with the vent hole and a closed end, and each of the first and second grooves defines a predetermined location on the lid where ambient air flowing into the vent hole can enter the interior of the associated drinking container as fluid flows out of the associated drinking container through the mouthpiece in the open position. (limitations of lines 21-27 of claim 13 of the reference application)
Examiner Note: Refer to 112a and 112b errors for “longitudinally aligned with the vent hole” as new matter and unclear. The reference application states communication between the two surfaces.
Limitations of claim 15 of the present invention correspond to claim 15 of the reference application. The current invention discloses wherein a section of the flange is extended beneath the closed end and is sealing engaged to the inner surface of the lid body. (limitations of lines 1-3 of claim 15 of the reference application)
Limitations of claim 16 of the present invention correspond to claim 16 of the reference application. The current invention discloses wherein the sealing member includes an annular sealing body mounted to the lid body for sealingly engaging the open end of the associated drinking container, the flange depends from the sealing body. (limitations of lines 1-3 of claim 16 of the reference application)
Limitations of claim 17 of the present invention correspond to claim 17 of the reference application. The current invention discloses wherein the sealing body includes an annular stepped section which together with the lid body defines an air pathway from the vent hole toward the open end of the at least one groove. (limitations of lines 1-3 of claim 17 of the reference application)
Limitations of claim 18 of the present invention correspond to claim 18 of the reference application. The current invention discloses wherein the mouthpiece is configured as a poppet mouthpiece that seals against the inner surface via at least one annular seal ring provided on an exterior surface of the poppet mouthpiece, the poppet mouthpiece movable along the longitudinal axis between the closed position and the open position relative to the lid body. (limitations of lines 1-4 of claim 18 of the reference application)
Examiner Note: With respect to “via at least one annular seal ring provided on an exterior surface of the mouthpiece” the reference application states “at least one annular seal ring provided on the mouthpiece”. The term “on” indicating exterior placement.
Limitations of claim 19 of the present invention correspond to claim 19 of the reference application. The current invention discloses wherein the inner surface of the lid body includes a first inner surface and a second inner surface spaced outwardly from the first inner surface, the poppet mouthpiece seals against the first inner surface, and the sealing member is fitted on the lid body between the outer side wall and the second inner surface with the flange of the sealing member sealingly engaging the second inner surface. (limitations of lines 1-5 of claim 19 of the reference application)
Claim Rejections - 35 USC § 102
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.
Claims 1-2 and 9-10 are rejected under 35 U.S.C. 102a(1) as being anticipated by Paczonay (US 5927565 A).
With respect to claim 1, Paczonay discloses a lid for an associated drinking container comprising: a lid body defining a longitudinal axis, the lid body (38) includes an outer surface forminq an exterior of the lid body and an inner surface forminq an interior of the lid body, the outer surface provided with a vent hole (43) extended in a direction substantially parallel to the lonqitudinal axis; a poppet mouthpiece (21) that seals against a first inner surface of the inner surface of the lid body via at least one annular seal ring (62, labeled on figure 10A, not labeled but shown in figure 13) provided on an exterior surface of the mouthpiece, the mouthpiece movable along the longitudinal axis between a closed position and an open position relative to the lid body, when in the open position the mouthpiece allows fluid from inside the associated drinking container to flow through the mouthpiece; and a resilient sealing member (46, 47, 52-54) fitted on the lid body and adapted to sealingly engage the lid body to an open end of the associated drinking container, the sealing member includes an annular flange (53) sealingly engaging a second inner surface of the inner surface of the lid body, the flange includes at least one groove (holes in 52) extended in a direction substantially parallel to the longitudinal axis and longitudinally aligned with the vent hole (as seen in figure 5), the at least one groove defines a predetermined location on the lid where ambient air flowing into the vent hole can enter an interior of the associated drinking container as fluid flows out of the associated drinking container through the mouthpiece in the open position.
Examiner Note: Embodiment of figure 13 is chosen for interpretation. Figures 5 and 10 include features of figure 13. The phrase “resilient sealing member … adapted to sealingly engage the lid body to an open end of the associated drinking container” can be read broadly. The open end or a container is not positively being claimed. The lid body is on the open end of the container. Without the resilient sealing member, liquid would be able to flow through the open end and out the lid body.
Examiner Note: “at least one annular sealing ring provided on an exterior surface of the mouthpiece”. This does not exclusively read that the ring is integral with the exterior surface of the mouthpiece or that the mouthpiece comprises a sealing ring. Locationally speaking, the sealing ring is provided on the exterior surface of the mouthpiece to create a seal. Said interpretation is being used for examination. Even without said interpretation, one would could argue that It would have been obvious to try to one of ordinary skill in the art at the time the invention was made to include the sealing ring on the exterior surface mouthpiece since there are only a finite number of predictable solutions. Either the ring is on the mouthpiece or it is on the lid body. Thus, having the sealing ring on the mouthpiece would have been obvious because “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product was not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103." KSR, 550 U.S. at 421, 82 USPQ2d at 1397. See MPEP 2143.
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With respect to claim 2, Paczonay discloses the lid of claim 1, wherein the sealing member includes an annular sealing body (54) mounted to the lid body for sealingly engaging the open end of the associated drinking container, the flange (53) depends from the sealing body (54).
Examiner Note: “for sealingly engage the lid body to an open end of the associated drinking container” can be read broadly. The open end or a container is not positively being claimed. The lid body is on the open end of the container. Without the resilient sealing member, liquid would be able to flow through the open end and out the lid body.
With respect to claim 9, Paczonay discloses the lid of claim 1, wherein the at least one groove is defined by a bulge section (tubing of 52) formed on the flange (53).
With respect to claim 10, Paczonay discloses the lid of claim 1, wherein the first inner surface of the lid body is defined by a first inner sleeve (body of 22) extended parallel to the longitudinal axis, and the lid body includes a mounting structure (item 37, labeled on figure 10A) dependinq from the inner surface of the lid body for the mouthpiece connected to the first inner sleeve.
Allowable Subject Matter
Claims 11-12 are rejected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claim 11 is rejected due to its dependency on the rejected claim 10. Search results for prior art in this field failed to identify wherein the mounting structure includes a platform and arms connecting the platform to the first inner sleeve, a post for mounting the mouthpiece extends outwardly from the platform, an end portion of the post extended past the outer surface of the lid body and the mouthpiece includes retention tabs positioned between adjacent arms
Consequentially, claim 12 is rejected to due to their dependencies on previously rejected claim 11 however they also depend upon the allowable subject matter from claim 12 due to dependencies on claim 11.
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5620117 A, US 5651471 A, US 5927565 A, US 20030034364 A1, US 7328820 B2, US 20120024854 A1, US 9060592 B2, US 20150274385 A1, US 20160059255 A1, US 20170029177 A1, US 20190352059 A1, US 20200270030 A1, US 20210122536 A1, US 20210122536 A1, and US 20220348385 A1.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and 13 have been considered but 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.
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 extension fee 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.
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/S.K.S./Examiner, Art Unit 3735
/ERNESTO A GRANO/Primary Examiner, Art Unit 3735