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 .
This office action is in response to the reply filed on 12/3/2025, wherein claims 1, 17 and 18 were amended. Claims 12-14 remain withdrawn from consideration.
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.
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 6-10 and 15-18 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.
Claim 6 is rendered indefinite by the limitation “the at least one breakaway region” since it is unclear if the at least one breakaway region is the same structure as the “only one breakaway region” as defined in claim 1. For examination purposes, Examiner interprets “the at least one breakaway region” as “the one breakaway region”.
Claim 6 is further rendered indefinite by the limitation “a recess formed in the lip” since it is unclear if the recess formed in the lip is the same structure as the “only one recess extending across the lip” defined in claim 1. Examiner suggests canceling claim 6 since it appears to define the same structure as previously defined in claim 1.
Claim 7 is further rendered indefinite by the limitation “the recess further extends to the peripheral rim” since it is unclear if it’s the same structure as the “only one recess extending …along the peripheral rim” defined in claim 1. Examiner suggests canceling claim 7 since it appears to define the same structure as previously defined in claim 1.
Claim 10 is further rendered indefinite by the limitation “the at least one breakaway region is a recess formed in the lip and the peripheral rim” since it is unclear if it’s the same structure as defined in claim 1. Examiner suggests deleting the limitation “the at least one breakaway region is a recess formed in the lip and the peripheral rim” from claim 10 since it appears to define the same structure as previously defined in claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-11 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Collins et al. (US 2021/0237942) in view of Tsai (US 8,407,854).
Regarding claims 1 and 6-7, Collins discloses a tennis ball container (See Fig. 1) storing at least one tennis ball (at 12), each of the at least one tennis balls having a maximum cross-sectional area and a diameter, the container comprising: a cylindrical body (See Fig. 1) extending along a longitudinal axis and having a first closed end (at 18 in Fig. 1) and a second open end (near the bottom of Fig. 1) opposite the first closed end; a removable seal (at 22 in Fig. 6) enclosing the second open end and including a pull tab (at 24); an annular overcap (at 14 in Figs. 1-3) removably attached to the second end of the cylindrical body (as shown in Fig. 1), the annular overcap including a peripheral rim (at 34) for engaging an outer surface of the container at the open end, and a lip (at 36) projecting from the peripheral rim toward the longitudinal axis, the lip extending over a portion of the second open end, the lip extending over a portion of the removable seal and over a portion of the pull tab, the lip defining a first opening (at the inner edge of 36), the lip configured to inhibit the at least one tennis ball from passing through the first opening (as shown in fig. 1). Collins discloses the claimed invention except for the annular overcap defining at least one breakaway region for facilitating breaking of the annular overcap.
However, Tsai teaches an annular overcap (at 2 in Fig. 2) having a peripheral rim (at 20) and a lip (at 201), wherein the annular overcap has a breakaway region (at 202 in Fig. 2) including only one recess (202) extending across the width of the entire overcap, for the purpose of allowing the annular overcap to be completely ruptured/broken for removal of the overcap. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the overcap of Collins with a breakaway region as taught by Tsai in order to allow for the overcap to be easily ruptured and removed.
Regarding claim 2, Collins discloses when the removable seal is attached to the second open end of the cylindrical body, the tennis ball container is pressurized ([0021]).
Regarding claim 3, Collins discloses the first opening of the body is sized to be smaller than one or both of the diameter of the tennis ball and the maximum cross-sectional area of the tennis ball (See Fig. 1).
Regarding claim 4, Collins discloses the lip uniformly projects from the peripheral rim (See Fig. 2).
Regarding claim 5, Collins discloses the tennis ball container is positionable between first, second and third configurations, wherein, in the first configuration, the removable seal and the overcap are secured to the second open end of the cylindrical body, wherein, in the second configuration, both the removable seal and the overcap are removed from second open end of the cylindrical body such that the at least one tennis ball can exit the tennis ball container through the second open end, and wherein, in the third configuration, only the overcap is attached to the second open end of the tennis ball container such that the at least one tennis ball within the tennis ball container is inhibited from exiting the second open end of the cylindrical body.
Regarding claims 8-9, Collins-Tsai discloses the lip has a thickness, and wherein the recess has a depth, but does not disclose the specific depth claimed. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the recess with any depth such as 45-55 percent of the thickness of the lip in order to allow the breakaway portion to be broken using the desired force, since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 10-11, Collins-Tsai discloses the at least one breakaway region is a recess formed in the lip and the peripheral rim, and wherein the peripheral rim has a thickness, but does not disclose the specific depth claimed. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the recess with any depth such as 30 to 70 percent of the thickness of the rim or at least 0.4mm in order to allow the breakaway portion to be broken using the desired force, since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 15, Collins-Tsai discloses the recess defined by the lip further includes a floor and a pair of opposing side walls (See Fig. 2 of Tsai).
Regarding claim 16, Collins-Tsai recess having a depth and a width, but does not disclose the specific dimensions. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the recess with any depth such as a depth of 0.5mm and width of 1.0mm in order to allow the breakaway portion to be broken using the desired force, since the claimed values are merely an optimum or workable range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 17-18, Collins-Tsai teaches an angle formed by the floor and the each of the pair of opposing side walls is within the range of 70-110 degrees.
Regarding claims 19-20, Collins-Tsai discloses the claimed invention except for the express disclosure of the specific tensile load required to break the overcap. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to have made the tensile load required to break the overcap any value such as at least 4.5 or 7.5 kgf in order to allow the overcap to be easily broken when desired, 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, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
In view of Applicant's amendment, the search has been updated, and new prior art has been identified and applied. Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
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 STEVEN A REYNOLDS whose telephone number is (571)272-9959. The examiner can normally be reached M-F 9am-5pm.
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/STEVEN A. REYNOLDS/Primary Examiner, Art Unit 3735