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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election of Group II, Claims 8-16 in the reply filed on January 28, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1-7 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 28, 2026.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to clearly show “an inlet valve 10” as described in the specification, such as on page 11, lines 6-7. Figure 1 is not clear as to what reference character “10” is pointing to; and reference character “10,” “20” and “221” appear to be pointing to the same structure.
Additionally, reference character “23” directed to the wall part cannot be found in figure 1. Furthermore, Figures 1 and 3 are not clear as to what is being referred to as “outlet valve 30”
Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "21" and "31" have both appear to have been used to designate the base part.
The drawings are objected to because openings “222” cannot be found in figure 3, as presented on page 13, line 17 of the specification.
On page 14, line 9, the specification recites reference character “312” which cannot be found in figure 5.
On page 14, line 11-12, reference character “213” and “212” are referring to “a filter screen” and “a dispensing opening,” respectively, however these reference characters have also been used to refer to “a clamping element 212” and “a sealing lip 213” as presented on the last three lines of page 14 and onto page 15, line 7.
On page 15, lines 15-16, the specification refers to “wall part 23” and “wall part 20,” neither of which can be found in figure 7. This disclosure also relies on two difference reference characters to refer to the same part.
On page 16, lines 7-8, the specification refers to “fastening ring 50,” which label cannot be found in figure 8.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
On page 13, line 23-25, Applicant’s specification as filed refers to the first end as “231” which is integrally connected to the lid part “22” and the second end “232” connected to the fastening ring “50.” However as shown in figure 3, “231” and “232” appear to be labeled opposite of what the specification discusses, because “231” is near the base part 21 while “232” is near the lid part “22”.
On page 14, lines 11, the specification refers to “a filter screen 213” but the filter screen has also been presented on page 11, line 23 using reference character “40.”
Appropriate correction is required.
Claim Objections
Claims 8 and 13 are objected to because of the following informalities:
Claim 8 has been amended to recite a dependency to claim 1: “a wall part (23) according to claim 1” on line 3. The amendment is of improper form because claim 8 would now depend from withdrawn claim 1. For examination purposes and expediting prosecution, claim 8 has been construed to include the limitations of “the wall part” as recited in claim 1 but correction is required. This objection can be overcome by amending claim 8 to recite the specific structure of the wall as recited in claim 1 as opposed to using the language “according to claim 1.”
Claim 13 recites, “the connection.” For matters of form, this limitation should be amended to recite, “the integral connection.”
Appropriate correction is required.
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 8-16 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 8, line 8 recites the limitation, “this fastening ring.” Claims 10, 12 and 13 recite the limitation, “the fastening ring.” These limitations lack proper antecedent basis because it is not clear as to whether “this fastening ring” and “the fastening ring” are referring to “an integral fastening ring” as recited on line 7 of claim 8 or “a fastening ring” as recited in claim 1 (since claim 8 recites, “a wall part according to claim 1.”).
Claim 11 recites the limitation, “a tubular film.” and “the tubular film.” Since claim 8 recites dependency to claim 1, which already recites, “a deformable tubular film” it is not clear whether “a tubular film” is an additional tubular film or is referring to the deformable tubular film.
Claims 12 and 13 recite the limitation, “the tubular film.” It is not clear whether this limitation is referring to “a deformable tubular film” or “a tubular film” and therefore is lacking proper antecedent basis.
Claim 12 recites, “wherein the tubular film and the fastening ring and/or the lid part and/or the helical structure have an integral connection.”
In light of the claim having two “and/or” clauses, the limitation is not clear as to what the two “and/or” clauses are modifying. That is, the claim reads as “the tubular film and the fastening ring, or the lid part or the helical structure have an integral connection.” In view of this, the claim is clear as what has an integral connection and whether the integral connection is with each other or some other structure.
Claim 13 recites, “wherein the connection between the tubular film and the lid part and/or the fastening ring and/or the helical structure is formed as an injection-molded connection.” This limitation is unclear as to what the two recitations of “and/or” are modifying. That is, it is not clear as to what “the connection” is between. For example, the claim reads as there being a connection between the tubular film and the lid” or the connection between the fastening ring, or the connection between the helical structure.
Claims 12 and 13 recite the limitation, “the helical structure” which lacks proper antecedent basis.
Claims 9 and 14-16 are rejected based on their dependence to a rejected claim.
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 8, 9, 11-13 and 16 are rejected under 35 U.S.C. 102a1 as being anticipated by Do (US 9723942 cited on PTO892 mailed 12/4/2025).
Regarding claim 8, it is noted that the claim recites a dependency to claim 1, however claim 1 is withdrawn as being non-elected. This appears to be of improper form. For the purpose of examination, the claim has been construed to be directed to a container having a base part, a lid part and a wall part, the wall part connecting the base part and the lid part; and with the wall part comprising a deformable tubular film such that the wall part has a variable length; the wall part further comprising a first end and a second end and wherein the first end has a fastening ring integral integrally connected to the tubular film and the wall part comprising a base part that is fastened to the integral fastening ring.
Regarding claim 8, Do teaches a container that is expandable and capable of infusion, and capable of accommodating a dry infusion substance for the preparation of an infusion beverage (see at least, the abstract and column 1, lines 10-16; comparing figure 2D and 2E which show an expandable container). It is noted that the claim does not recite that the container comprises a dry infusion substance but rather, is only capable of accommodating a dry infusion substance.
Do teaches that the container comprises a base part (figure 2B-2D, item 20,22), a lid part (figure 2D, item 42) and a wall part connecting the base part and the lid part (figure 2D, item 44,46), which wall part is tubular (see figure 2B and 3, item 40, 44, 46).
Do further teaches that the tubular wall part is of a film material because the reference teaches that the wall is a thin and deformable and can be made from plastic (see column 8, lines 60-61 and column 8, line 64 to column 9, line 8; “plastic”). Since Do discloses that the wall part is deformable and expandable and can be made of plastic, the reference is disclosing a deformable tubular film. Applicant’s specification discloses that the tubular film can be made of PET, PER or a comparable material (see page 3, 2nd full paragraph), and since Do discloses plastic which can be construed as comparable to PET and since Do also discloses that the container can contain hot brewed beverages, there reference is seen to disclose a tubular film material.
Do further discloses that the wall part has a variable length (comparing Figure 2D and 2E); a first end (figure 2D, item 52) having an integral fastening ring (see figure 2A and 2B, item 90 and 95). On column 5, lines 61-62, Do teaches that the cup ring 90 (i.e. the fastening ring) can be co-molded (as opposed to being bonded) with the rim 52 of the cup/wall part and is therefore teaching a first end having an integral fastening ring that is integrally connected to the tubular film. The wall part is fastened to the base part using the integral fastening ring (see figure 2D, where the fastening ring, 90, 95 connects the wall part 44, 46, to the base 20. As shown in figure 2D, Do also discloses the wall part having a second end, such as near item 54.
Regarding claim 9, Do teaches that the lid part is integral with the wall part (see figure 2D, item 42 which is continuous with the wall part).
Regarding claim 11, Do teaches a tubular film (see figure 2D, item 44, 46) extends between the fastening ring (90, 92) and the lid part (42).
Regarding claims 12-13, on column 5, lines 61-62, Do teaches that the cup ring 90 (i.e. the fastening ring) can be co-molded with the rim 52 of the cup/wall part therefore teaches the tubular film and the fastening ring have an integral connection. As shown in figure 2D, the tubular film (44,46) and the lid part (42) have an integral connection.
Further regarding claim 13, which recites that the integral connection is formed as an injection-molded connection, it is noted that the claim is directed to the product and not the method of making the product. Therefore the claim limitation of, “an injection molded connection” has been construed to be a product by process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Therefore, “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (see MPEP 2113). In this regard, the structure implied by the claimed “injection-molded connection” is an integral, unitary piece and since Do teaches that the lid part and the tubular wall can be a co-molded structure and that the fastening ring and the tubular film are co-molded together (instead of being bonded together), the reference is teaching an integral unitary piece.
Regarding claim 16, Do discloses that there is a filter arranged on the base part (see figure 2D and figure 3, item 120; column 6, line 15-16).
Claim 8 is rejected under 35 U.S.C. 102a1 as being anticipated by Bartoli (US 20150068405).
Regarding claim 8, Bartoli teaches an expandable infusion container capable of accommodating a dry infusion substance for preparation of an infusion beverage (see paragraph 26 and comparing the wall 24 in figure 1 with the wall 24 in figure 6), comprising a wall part (figure 1, item 24) that connects a base part (figure 1, item 6) to a lid part (figure 1, item 8).
Bartoli teaches that the wall part has a first end (see figure 1, near item 27) and a second end (see figure 1, near item 28) and a deformable tubular film connecting the first and second ends (see figure 1, item 24 and paragraph 48) and is therefore teaching a wall with variable length.
Regarding the deformable portion being a film, Bartoli teaches that the casing 20 can be a thermoformable sheet of plastic material (see paragraph 38) and therefore, Bartoli is teaching a deformable tubular film.
Bartoli also teaches that there is a fastening ring at a first end of the wall (see figure 1, item 27), because Bartoli discloses that the first interface element 6 is disc shaped i.e. round (see paragraph 36) and is affixed such as by interference fit to a ring shaped structure 27 (see paragraph 35). Therefore, structure 27 can be construed as a fastening ring since it provides an interference connection to a ring shaped base part 6.
As shown in figure 1, Bartoli teaches that structure 27 is integral with the first end of the wall part.
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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Do (US 9723942) in view of Bartoli (US 20150001100) or Stewart-Stand (US 20210361053).
Regarding claim 10, Do teaches that the deformable wall connects the lid part to the fastening ring (see figure 2D) and which deformable wall may be tapered, round, cylindrical, rectangular, have unique curves or angles, take the form of an accordion or bellows shape with one or more curves or angles, and/or take on a variety of visual designs (see column 8, lines 39-48).
Claim 10 differs from Do in specifically reciting that the fastening ring and the lid part are connected to each other via a helical structure.
Bartoli teaches a container sidewall that connects a lid part to a base, which sidewall can have bellows (paragraph 47, 92) or a helical structure (see paragraph 91) for the purpose of being able to deform or collapse the container (see paragraph 91). As shown in figure 4, Bartoli teaches a connection of a lid part to base via a helical structure (4).
Stewart-Stand also teaches a helical structure (see paragraph 38 and figure 5B and 5C, item 18) that connects a lid part (figure 5B, item 14) to a fastening ring (see figure 5B, item 12) so as to be deformable (see figure 6A and paragraph 43).
To therefore modify Do who already teaches any shape of a compressible structural element that connects a lid part to a fastening ring, and to use a helical structure, as taught by Bartoli or Stewart-Stand would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design based on known expedients for structures similarly used for expanding and collapsing a deformable wall.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Do (US 9723942) in view of Deledda (US 20230346146), Plott (US 20140305943), Siao (US 20210198008) or Oved (US 20150321793).
Regarding claim 14, Do teaches that the expandable container can be sealed for storage of dry or liquid items (see column 9, line 47 to column 10, line 3).
Claim 14 differs in specifically reciting, “an inlet valve is arranged on the lid part.”
Deledda teaches an opening to a container that would correspond to Do’s base (see Deledda figure 6B, 7B and the top of the container with the pull tab) and where there is a collapsible wall (see figure 10B and at least the abstract, “deformable sleeve”) between the base and a lid, and which lid can have a valve through which air pressure can be added or removed for affecting deformation (see paragraph 10 and 57 and figure 5 and 5A and item 11).
To therefore modify Do and to include a valve in Do’s integral lid structure would have been obvious to one having ordinary skill in the art for the purpose of adding or removing air pressure for affecting deformation of Do’s container.
Plott teaches a container with a collapsible wall (see paragraph 35 which discloses that the container is able to be turned inside out) and which collapsible wall is connected to a base (see figure 3, item 16 and paragraph 40) and where there is an integral lid (see figure 2, item 24) which can have a valve positioned therein, for the purpose of diminishing negative pressure inside the receptacle during dispensing of the contents (see paragraph 52: “Additionally, receptacle 10 can include an optional one-way valve to diminish negative pressure inside the receptacle creased as receptacle contents are evacuated and can alternatively incorporated into…end wall 20…”).
To modify Do to include a valve in Do’s lid would have been obvious to one having ordinary skill in the art, for the purpose of diminishing negative pressure within the container during dispensing of the contents.
Siao teaches a container lid (figure 4, item 11) that is secured to a collapsible side wall (see figure 4, item 13, 112, 131; paragraph 49) and where the lid comprises a valve (see figure 4, item 15) that can facilitate a tighter seal between the cover and the base and prevent separation between the cover and the base while also allowing pressure equalization to facilitate opening of the container (see paragraph 59).
Since Do teaches a sealable assembly, to therefore modify Do and to provide an inlet valve on the lid, would have been obvious to one having ordinary skill for the purpose of making it easier to equalize the pressure within Do’s sealed container to therefore make it easier to expand.
Oved teaches a container with a collapsible wall (see figure 6A, item 52), with an integral lid (figure 6A, item 58) and a ring portion attached to the collapsible wall (see figure 6A, item 56; paragraph 77) to which ring portion can be attached a “base” (see the cap of figure 6A). Oved teaches that the bottom of the portion 54 (i.e. 58 of figure 6A-6B) can be provided with a filling valve so that the container can be filled through the valve while the base portion through which the contents can be dispensed remains sealed (see paragraph 79).
Since Do teaches that the container can be sealed with a liquid, it would have been obvious to one having ordinary skill in the art, to have included a valve, as part of Do’s lid part, for the purpose of keeping the base end closed and sealed, while still allowing for filling of the container via a valve.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Do (US 9723942) in view of McGill (US 5893485) or Del Bon (US 20170042365 cited on IDS). The definition of “valve” has been relied on as evidence.
Regarding claim 15, Do teaches that there can be a magnetic cover 160 positioned external to the filter (see column 6, lines 16-17; figure 3, item 160) which can cover the filter openings (see column 6, line 64 to column 7, line 2). Applicant’s specification indicates that an outlet valve ensures that the base part can be closed in a reliable and tight manner (see page 7, last three lines). In view of this and since Do teaches that the magnetic cover 160 is used to close the base part, Do’s disclosure can be construed as teaching and suggesting an “outlet valve.” This is further supported by the plain meaning of the term, “valve” is a mechanical device by which the flow of liquid, gas or loose material may be started, stopped or regulated by a movable part that opens, shuts or partially obstructs one or more ports or passageways. In view of this, Do magnetic cover 160 can be construed as teaching an outlet valve.
If it could have been construed that Do did not specifically teach an outlet valve, then McGill teaches a compressible wall (see figure 1, item 17) as part of a container (Figure 1, item 10) having an outlet (figure 1, item 22) which has an outlet valve (see figure 1A, item 14A, 22; column 6, lines 31-39; see column 13, lines 43-50).
Del Bon also teaches including an outlet valve that is useful for emptying a collapsible container of infused beverage ingredient (see paragraph 7, 28 and 36 and item 14).
Therefore, it would have been obvious to one having ordinary skill in the art to have modified Do, if necessary, and included an outlet valve, for the purpose of being able to control the flow of the liquid that can exit Do’s container.
Claims 9, 11-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable Bartoli (US 20150068405) in view of Norton (US 20140004231).
Regarding claim 9, the claim differs from Bartoli in specifically reciting that the lid part is formed as an integral component of the wall part.
Norton teaches a container with a deformable wall (see paragraphs 27 and 29) and which container has a lid part is integral with the wall part (see figure 4, item 12 and 14 that are integrally formed; see also paragraph 15 and 75 which teaches that the cup can be a unitarily molded piece). Norton also teaches that the container teaches an expandable infusion container capable of accommodating a dry infusion substance for preparation of an infusion beverage, comprising a wall part (figure 4, item 14, 15) that connects a base part (figure 4, item 40, 49) to a lid part (figure 4, item 12); the wall part has a first end (see figure 4, near item 22 and 47) and a second end (see figure 4, near item 14) and a deformable tubular film connecting the first and second ends (see figure 4, items 15-19; paragraphs 10-12, 15, 27, 29 73, 75) and is therefore teaching a wall with variable length and which wall part is fastened to a base part using the fastening ring (see figure 4, item 22, 40, 47, 49 and paragraph 78)
Since Bartoli does not discuss how the container is made, to therefore modify Bartoli and to mold the lid part as a unitary piece with the wall part would have been obvious to one having ordinary skill in the art, based on conventional expedients by which a lid part and wall part used for beverages has been conventionally formed.
Regarding claim 11, Bartoli teaches that the tubular film extends between the fastening ring (see figure 1, item 20).
Regarding claims 12-13, Bartoli teaches that the tubular film and the fastening ring integrally connected because the reference shows in figure 1 a unitary structure.
Additionally, the combination as applied to claim 9 teaches the lid part as integral with the wall part and therefore integral with the tubular film.
Further regarding claim 13, which recites that the integral connection is formed as an injection-molded connection, it is noted that the claim is directed to the product and not the method of making the product. Therefore the claim limitation of, “an injection molded connection” has been construed to be a product by process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Therefore, “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (see MPEP 2113). In this regard, the structure implied by the claimed “injection-molded connection” is an integral, unitary piece and since the combination teaches that the lid part and the tubular wall can be a molded structure and that the fastening ring and the tubular film are co-molded together, the reference is teaching an integral unitary piece.
Regarding claim 16, Bartoli teaches that the container 20, can be used to make percolable products (paragraph 29) such as coffee and tea (paragraph 26), but the claim differs from Bartoli in specifically reciting that a filter screen is arranged on the base part.
Norton teaches a filter screen arranged on the base part (figure 4, item 31 and paragraph 67) to contain percolable ingredients such as coffee (paragraph 21).
It would therefore have been obvious to one having ordinary skill in the art to have modified Bartoli to include a filter arranged on the base part for the purpose of containing beverage ingredients such that they do not exit the container before or after use.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over the combination, as applied to claim 9 above, which relies on Bartoli (US 20150068405) as the primary reference and in further view of Bartoli (US 20150001100, i.e. Bartoli100), Stewart-Stand (US 20210361053) or Sieferth (US 3873003)
Claim 10 differs from the combination as applied to claim 9 in specifically reciting that the fastening ring and the lid part are connected to each other via a helical structure.
Bartoli teaches a container sidewall that connects a lid part to a base, which sidewall can have bellows (paragraph 47, 92) or a helical structure (see paragraph 91) for the purpose of being able to deform or collapse the container (see paragraph 91). As shown in figure 4, Bartoli teaches a connection of a lid part to base via a helical structure (4).
Stewart-Stand also teaches a helical structure (see paragraph 38 and figure 5B and 5C, item 18) that connects a lid part (figure 5B, item 14) to a fastening ring (see figure 5B, item 12) so as to be deformable (see figure 6A and paragraph 43).
Sieferth further teaches a helical structure (figure 1 and 2, item 14) connecting a lid part (figure 3, near item 40) to a base part (figure 3, item 24) for the purpose of compressing and storing of the container (see column 2, lines 4-9).
To therefore modify the combination and to use a helical structure, as taught by Bartoli, Stewart-Stand or Sieferth would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design based on known expedients for structures similarly used for expanding and collapsing a deformable wall which can also be useful for reducing the size of the container for storage.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Bartoli (US 20150068405) as applied to claim 8 and the combination as applied to claim 9 above which relies on Bartoli (US 20150068405) as the primary reference, both in further view of Cai (US 20020078831) or Talon (US 20160137402).
Claims 14 and 15 differ from the Bartoli in specifically reciting that there is “an inlet valve arranged on the lid part” (claim 14) and “an outlet valve arranged on the base part.” (claim 15).
Cai teaches that a valve may be located on the cartridge inlet or the cartridge outlet to prevent dripping of the liquid after use (see paragraph 12, last sentence).
Talon also teaches that there can be a check valve at the inlet and the outlet (see figure 3, item 22 and 23) for ensuring that the flow of fluid is directed from the fluid source toward the ingredient (see paragraph 36-37).
To therefore modify Bartoli and to provide valves at the lid part and the base part would have been obvious to one having ordinary skill in the art, for the purpose of preventing liquid from dripping from the container after use, as well as for ensuring the proper flow of fluid from the source toward the ingredients.
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 8, 9, 11-16 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 and 26-28 of copending Application No. 18/044679 in view of Do (US 9723942).
Regarding claim 8, copending claim 15 discloses, an expandable infusion container for receiving a dried infusion substance for preparation of an infusion beverage, comprising a base part, a lid part and a wall part connecting the base part and the lid part. The wall part has a variable length and is therefore deformable and has a first end and a second end, with the first end connected to the base part and is connected with a second end to the lid part (22).
Claim 8 differs from the copending claim in specifically reciting that the wall part comprises a deformable film that is tubular, and where the firs tend has a fastening ring that is integrally connected to the tubular film and which fastening ring fastens the wall part to the base part.
Do teaches a container that is expandable and capable of infusion, and capable of accommodating a dry infusion substance for the preparation of an infusion beverage (see at least, the abstract and column 1, lines 10-16; comparing figure 2D and 2E which show an expandable container). Do teaches that the container comprises a base part (figure 2B-2D, item 20,22), a lid part (figure 2D, item 42) and a wall part connecting the base part and the lid part (figure 2D, item 44).
Do further teaches that the expandable container comprises a tubular wall part (see figure 3, item 40, 44) that is of a film material (see column 8, line 64 to column 9, line 8; “plastic”). Since Do discloses that the wall part is deformable and expandable and can be made of plastic, the reference is disclosing a deformable tubular film. Do further discloses that the wall part has a variable length (comparing Figure 2D and 2D); a first end (figure 2D, item 52) having an integral fastening ring (see figure 2A and 2B, item 90 and 95). On column 5, lines 61-62, Do teaches that the cup ring 90 (i.e. the fastening ring) can be co-molded with the rim 52 of the cup/wall part therefore teaching a first end having an integral fastening ring. The wall part is fastened to the base part using the integral fastening ring (see figure 2D, where the fastening ring, 90, 95 connects the wall part 44, 46, to the base 20. As shown in figure 2D, Do also discloses the wall part having a second end, such as near item 54. Do also teaches that the container wall is tubular and deformable for permitting the user to brew a beverage and press the beverage into a container (see column 1, line 65 to column 2, line 3)
To therefore modify the copending claim and to make the wall of variable length a tubular film, would have been obvious to one having ordinary skill in the art, for the purpose of being able to collapse the container to press a beverage through the container, as taught by Do.
Claim 9 differs from the copending claim in specifically reciting that ”the lid part is formed as an integral component of the wall part.
Do teaches that the lid part is integral with the wall part (see figure 2D, item 42).
To therefore modify the copending claim, which already teaches that the lid part is connected to the wall part, and to make the lid part integral with the wall part would have been an obvious matter of engineering and/or design, based on conventional expedients by which a lid part has been provided in relation to a deformable wall part (see MPEP 2144.04(VI)(B)).
Regarding claim 11, in view of Do the combination teaches a tubular film (see Do figure 2D, item 46) extends between the fastening ring (Do, figure 2D, item 90, 92) and the lid part (Do, figure 2D, item 42).
Regarding claims 12-13, the claims differ from the copending claim in specifically reciting that the tubular film and the fastening ring and/or the lid part and/or the helical structure have an integral connection that is formed as an injection molded connection.
On column 5, lines 61-62, Do teaches that the cup ring 90 (i.e. the fastening ring) can be co-molded with the rim 52 of the cup/wall part therefore teaches the tubular film and the fastening ring have an integral connection. As shown in figure 2D, the tubular film (44,46) and the lid part (42) have an integral connection.
Further regarding claim 13, which recites that the integral connection is formed as an injection-molded connection, it is noted that the claim is directed to the product and not the method of making the product. Therefore the claim limitation of, “an injection molded connection” has been construed to be a product by process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. Therefore, “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (see MPEP 2113). In this regard, the structure implied by the claimed “injection-molded connection” is an integral, unitary piece and since Do teaches that the lid part and the tubular wall can be a molded structure and that the fastening ring and the tubular film are co-molded together, the reference is teaching an integral unitary piece.
To therefore modify the copending claims and to provide the tubular film and the fastening ring and/or the lid part has an integral connection would have been obvious to one having ordinary skill in the art, as a matter of engineering and/or design based on conventional expedients by which a lid part has been provided in relation to a deformable wall part (see MPEP 2144.04(VI)(B)).
Regarding claims 14-15, copending claims 26 and 27 teach an inlet valve and an outlet valve on the lid part and base part, respectively.
Regarding claim 16, copending claim 28 teaches a filter arranged on the base part.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 10 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15, 26-28 of copending Application No. 18/044679 in view of Do (US 9723942) as applied above to claims 8-9, and in further view of Bartoli (US 20150001100) or Stewart-Stand (US 20210361053).
Regarding claim 10, in view of Do, the combination teaches that the deformable wall connects the lid part to the fastening ring (see figure 2D) and which deformable wall may be tapered, round, cylindrical, rectangular, have unique curves or angles, take the form of an accordion or bellows shape with one or more curves or angles, and/or take on a variety of visual designs (see column 8, lines 39-48).
Claim 10 differs from the combination in specifically reciting that the fastening ring and the lid part are connected to each other via a helical structure.
Bartoli teaches a container sidewall that connects a lid part to a base, which sidewall can have bellows (paragraph 47, 92) or a helical structure (see paragraph 91) for the purpose of being able to deform or collapse the container (see paragraph 91). As shown in figure 4, Bartoli teaches a connection of a lid part to base via a helical structure (4).
Stewart-Stand also teaches a helical structure (see paragraph 38 and figure 5B and 5C, item 18) that connects a lid part (figure 5B, item 14) to a fastening ring (see figure 5B, item 12) so as to be deformable (see figure 6A and paragraph 43).
To therefore modify the combination which already teaches any shape of a compressible structural element that connects a lid part to a fastening ring, and to use a helical structure, as taught by Bartoli or Stewart-Stand would have been obvious to one having ordinary skill in the art, as an obvious matter of engineering and/or design based on known expedients for structures similarly used for expanding and collapsing a deformable wall.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20180352993 discloses expandable containers for producing beverages from infusible ingredients (see figure 1, 2 and 6).
US 3347410 discloses collapsible containers with accessible opening on opposing ends of the collapsible container (see figure 2, 4 and 5, item 28, 128) and where the collapsible container can comprise a fastening ring (see figure 2, 4 and 5, item 16, 20, 118)
US 2886084 discloses expandable and collapsible containers with valves for facilitating expansion and collapsing (see figure 4, item 28 and 33)
US 4873100 discloses expandable and collapsible containers with a valve for facilitating expansion (see figure 1B, figure 3 and figure 8, item 212, 213)
US 7178453 discloses expandable and collapsible containers with openings that can be made for dispensing via an outlet (see figure 3 and item 7’’, 8’’, 9a, 9b and column 2, lines 32-48) and an inlet for allowing air to enter the expandable and collapsible container (figure 3, item 16 and column 2, lines 44-48)
US 10968012 discloses collapsible and expandable containers with a valve at an inlet and at an outlet (see figure 1A, item 136 and column 2, line 65 to column 3, line 13; figure 1B, item 144 and column 3, lines 41-54).
US 4750634 discloses collapsible and expandable containers with openings at an inlet and at an outlet (figure 1, item 11 and 13).
GB 2474650 discloses a collapsible and expandable container with a valve at an outlet (figure 3, item 21).
CN 108272347 discloses collapsible and expandable containers with a valve at an inlet and at an outlet (see figure 3, item 6, 31 and 33).
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/VIREN A THAKUR/Primary Examiner, Art Unit 1792