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 .
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.
At least claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16 of U.S. Patent No. 12085332. Although the claims at issue are not identical, they are not patentably distinct from each other because at least claim 11 is anticipated by claims 1, 16 of U.S. Patent No. 12085332.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 1-5, 7-15, 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Upadhye (US 6571564).
Regarding claim 1,
Referring to Fig. 5, Upadhye teaches a thermally controllable cupholder (e.g. a bottle containing a beverage, see abstract), comprising: a beverage receptacle 48 having a drain hole (e.g. the hole for drain passageway 36), wherein the drain hole connects the beverage receptacle to a drain passageway 36; and a Peltier 22 (e.g. a cooling unit comprising a thermoelectric module, see claims 24-25) situated at least partially beneath the beverage receptacle 48, wherein the Peltier is configured to change a temperature of the beverage receptacle (see col 4, lines 23-25).
Regarding claim 2,
Upadhye teaches wherein the beverage receptacle has a support surface 51 configured to support a weight of a beverage.
Regarding claim 3,
Upadhye teaches wherein the drain hole is located in the support surface.
Regarding claim 4,
Upadhye teaches wherein the Peltier is located completely beneath the support surface.
Regarding claim 5,
Upadhye teaches a fan located at least partially beneath the beverage receptacle (see col 8, lines 60-62, claim 25).
Regarding claim 7,
Upadhye teaches an outer casing 28 and an interstitial space (not labeled) between the beverage receptacle and the outer casing.
Regarding claim 8,
Upadhye teaches comprising a light source 78 configured to cylindrically disburse light around the beverage receptacle (e.g. wherein sources 78 are cylindrically shaped; see also col 10, lines 10-15 wherein a nightlight may “ring” around the unit).
Regarding claim 9,
Upadhye teaches wherein the drain passageway is configured to attach to a drain tube which leads to a bilge (e.g. is capable of being attached to a drain tube which leads to a bilge).
Regarding claim 10,
Upadhye teaches a heat sink having a plurality of cooling fins (see col 8, lines 30-35; claims 24-25).
Regarding claim 11,
Upadhye teaches a thermally controllable cupholder (e.g. a bottle containing a beverage, see abstract), comprising: a beverage receptacle 48 having a drain hole (e.g. the hole for drain passageway 36), wherein the drain hole connects the beverage receptacle to a drain passageway 36; and a fan 22 (e.g. a cooling unit comprising a fan, see claims 24-25) situated at least partially beneath the beverage receptacle, wherein the fan is configured to change a temperature of the beverage receptacle (see col 4, lines 23-25).
Regarding claims 12-15, 17-20,
The subject matter of claims 12-15, 17-20 are directed towards essentially the same subject matter as claims 2-5, 7-10 and has been addressed in the rejection of claims 2-5, 7-10.
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 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Upadhye.
Regarding claim 6,
Upadhye does not teach wherein the Peltier is located at least partially between the fan and the beverage receptacle.
It is noted that it has been held that claims which read on the prior art except with regard to the position of a particular element were unpatentable because shifting the position of the particular element would not have modified the operation of the device. It has been further held that particular placement of an element was an obvious matter of design choice (see MPEP 2144.04 VI C). Here, claim 6 reads on the prior art except with regard to the relative positions of the Peltier, the fan and the beverage receptacle and is unpatentable because shifting the position of the particular element would not have modified the operation of the device (e.g. for cooling of heating of a beverage in the beverage receptacle. Further, the particular placement of said elements is an obvious matter of design choice.
Regarding claim 16,
The subject matter of claim 16 is directed towards essentially the same subject matter as claim 6 and has been addressed in the rejection of claim 6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Dalton, Allen, Revelis, Liptak, Carnagie teach thermally controllable cupholder with drains,
Park, Doi teaches a thermally controllable cupholder with a thermoelectric module, a heat sink, and a fan.
Childress teaches a perforated heat sink.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVE S TANENBAUM whose telephone number is (313)446-6522. The examiner can normally be reached M-F 11 AM - 7 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frantz Jules can be reached at (571) 272-6681. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Steve S TANENBAUM/ Examiner, Art Unit 3763 /FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763