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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 11 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). The subject matter affirmatively claims a human organism, specifically "a drinker with an upper and lower lip" in lines 2-3. Claims 12-32, which depend on claim 11, are similarly rejected.
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.
Claim 11-25 and 27-32 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12195251 in view of Lee (US20200055640A1).
Regarding claim 11, Patent ‘251 (claim 1; with “a drinker with upper and lower lip” limitation being implicit use by human being and the apparatus can be used on cup or can) discloses the claimed subject matter except a pop-top lid and a rim guard configured as downwardly open and having a substantially vertical outer sidewall and a substantially vertical inner sidewall, wherein an upper portion of said vertical outer sidewall is joined thereto an upper portion of said vertical inner sidewall to form a rim, said rim guard configured to removably grip the rim of the beverage can to provide a sanitary barrier between a drinker's upper lip and the lid of the beverage can and between the drinker's lower lip and the sidewall of the beverage can
Lee does teach wherein apparatus is for a can and a pop top lid with a rim guard configured as downwardly open and having a substantially vertical outer sidewall and a substantially vertical inner sidewall (see annotated fig.1 of Lee below for pop-top lid 1 and a rim guard configured as downwardly open and having substantially vertical outer and inner sidewalls), wherein an upper portion of said vertical outer sidewall is joined thereto an upper portion of said vertical inner sidewall to form a rim (see annotated fig.1 below for the upper portions of the out and inner sidewalls that are joined to form a rim that can be used for a beverage can), said rim guard configured to removably grip the rim of the beverage can to provide a sanitary barrier between a drinker's upper lip and the lid of the beverage can and between the drinker's lower lip and the sidewall of the beverage can (see annotated fig.1 below for the rim guard capable of removably grip the rim of the beverage can to provide a sanitary barrier between drinker upper lip and lid of the beverage can and between the lower lip and sidewall of the can; it is noted by reciting “configured to” applicant is not positively claiming that limitation and prior art has to be capable of performing that limitation). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cover apparatus disclosed by ‘251 by adding the teaching of pop-top lid and rim guard with substantially vertical inner and outer sidewalls used for a beverage can as disclosed by Lee in order to aids in preventing spillage when a human user is drinking through the tab of the lid, when used in the “drink-through” mode. “The higher second portion is also preferably configured to suitably conform to the shape of at least the lower lip of a human user, with the outward facing, convex raised surface being smooth, and sufficiently tall, to form a liquid tight seal with a lower lip. This aids in preventing spillage when a human user is drinking through the tab 23 of the lid, when used in the “drink-through” mode.” (0030, Lee) “The use of disposable lids on disposable cups has been ubiquitous for decades. Such lids, in the case of cold cup lids, have heretofore typically included straw apertures for the insertion of a plastic straw so that a beverage can be accessed from the cup using the straw, for sake of drinking enjoyment and convenience.” (0003, Lee)
Annotated fig.1 of Lee
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Regarding claim 12, refences as applied to claim 11 above (claim 2) discloses the claimed subject matter.
Regarding claim 13, Patent ‘251 as modified in claim 11 above (claim 3) discloses the claimed subject matter. The language of straw capture and alignment port points outward from said rim guard is similar to language in patent ‘251 since patent recite straw capture and alignment port points outward from a center of the lid and both elements will be outward from center of the lid and the rim guard since they protrude out.
Regarding claim 14, Patent ‘251 as modified in claim 11 above (claim 4) discloses the claimed subject matter.
Regarding claim 15, Patent ‘251 as modified in claim 11 above (claim 5) discloses the claimed subject matter. The language of “configured perpendicular to said vertical outer sidewall” is similar to language in patent ‘251 since patent recites “configured perpendicular to the perimeter flange” and elements can be configured perpendicular to flange and vertical wall since both are on the outer ends.
Regarding claim 16, Patent ‘251 as modified in claim 11 above (claim 6) discloses the claimed subject matter. The language of “configured parallel to said vertical outer sidewall” is similar to language in patent ‘251 since patent recites “configured paralleel to the perimeter flange” and elements can be configured parallel to flange and vertical wall since both are on the outer ends.
Regarding claim 17, Patent ‘251 as modified in claim 11 above (claim 7) discloses the claimed subject matter.
Regarding claim 18, Patent ‘251 as modified in claim 11 above (claim 8) discloses the claimed subject matter.
Regarding claim 19, Patent ‘251 as modified in claim 11 above (claim 9) discloses the claimed subject matter.
Regarding claim 20, Patent ‘251 as modified in claim 11 above (claim 10) discloses the claimed subject matter.
Regarding claim 21, Patent ‘251 as modified in claim 11 above (claim 11) discloses the claimed subject matter.
Regarding claim 22, Patent ‘251 as modified in claim 11 above (claim 12) discloses the claimed subject matter.
Regarding claim 23, Patent ‘251 as modified in claim 11 above (claim 13) discloses the claimed subject matter.
Regarding claim 24, Patent ‘251 as modified in claim 11 above (claim 14) discloses the claimed subject matter.
Regarding claim 25, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter wherein said inner sidewall transitions to a horizontal surface, said horizontal surface further comprising a fluid aperture configured to enable access to the pop-top of the beverage can (see annotated fig.1 above where the inners side transitions into a horizontal surface with a fluid aperture 47 that is capable of enabling access to the pop top of the beverage can).
Regarding claim 27, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter as the rim guard is configured as a partial ring (it is noted that claim does not positively recite “partial ring”).
Regarding claim 28, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter as wherein said rim guard is configured as a curved section (it is noted that claim does not positively recite/claim “curved section”).
Regarding claim 29, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter as wherein said rim guard is configured as a straight section (it is noted that claim does not positively claim a straight section).
Regarding claim 30, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter as wherein said rim guard is configured as u- shaped (it is noted that claim does not positively claim a u-shaped).
Regarding claim 31, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter as wherein said rim guard is configured as v- shaped (it is noted that claim does not positively claim v-shaped).
Regarding claim 32, refences as applied to claim 11 above (claim 1) discloses the claimed subject matter as wherein said vertical outer sidewall transitions to an angled surface (annotated fig.1 above shows the outer sidewall transitions into an angled surface).
Allowable Subject Matter
Claim 26 is objected 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.
Response to Arguments
Applicant's arguments filed 04/22/2026 have been fully considered but they are not persuasive. Applicant’s new amendments create and 101 issues that need to addressed. The new amendments regarding the rim guard configured to limitation are capable of limitation and the prior are is capable of performing those functions. Applicant does not positively recite those features. Regarding the intended use of the claimed invention “configured to.....”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Applicant also argues that claim recites beverage can not cup anymore this is not persuasive applicant has not specified what kind of beverage can applicant is referring to because a disposable cup is this a beverage can when given BRI, claim does not say aluminum can or metal can. Lee further supports that claim as these types of lids can be used for beverage cans “The use of disposable lids on disposable cups has been ubiquitous for decades. Such lids, in the case of cold cup lids, have heretofore typically included straw apertures for the insertion of a plastic straw so that a beverage can be accessed from the cup using the straw, for sake of drinking enjoyment and convenience.” (0003, Lee) it is known to in the art to use these lids on all sort of beverages. Applicant remarks under Miscellaneous issues are the same as the ones addressed above.
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 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.
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/PRINCE PAL/Examiner, Art Unit 3735
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