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
Claims 1-6, 8-11, and 13-14 are pending.
Claims 1-4, 6 are currently amended.
Claims 7, and 12 are canceled.
Claim Rejections - 35 USC § 112
Claim 4 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 4 recites “a plurality of the single non-penetrating parts” .However, claim 1 recites “ three of the cuts are formed around the single non-penetrating part that is at a center of the at least three of the cuts” It is unclear how the single non-penetrating part be at the center of cuts but be also a plurality. Accordingly, the claim has not been further treated on the merit. .[W]here there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. MPEP 2173.06(II). In this case, there would require a great deal of speculation as to how there is a single non-penetrating parts that is at a center of the at least three of the cuts but also be a plurality. Further correction and or clarification is required.
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.
Claim(s) 1-3, 5, 8, 10, 11, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinkai (JP 2010137902; Provided by applicant) in view of Hayashi (US 20110204057).
Regarding claim 1, Shinkai discloses, A lid (1) comprising: a main body (See annotated fig. below) formed in such a way as to be contactable with a container including an opening (See annotated fig. below) and an edge (22) forming an outer periphery of the opening, wherein the main body includes an insertion part (Fig. 2) configured to be capable of forming an insertion hole, the insertion part includes a hole lid (See annotated fig. below) that covers the insertion hole and a weakened part (11) that forms at least a part of an outer circumferential edge (See annotated fig. below) of the hole lid ,the weakened part includes a plurality of cuts (13) penetrating the main body in a thickness direction of the main body and at least three cuts (13).
However, Shinkai does not disclose, a non-penetrating part where the main body is not penetrated, and the weakened part has a structure in which at least three of the cuts are formed around the single non-penetrating part that is at a center of the at least three of the cuts.
Hayashi discloses, a lid comprising weakened part (TCL1-3) and a non-penetrating part (BCC) where the main body is not penetrated and the weakened part has a structure in which at least three of the cuts are formed around the single non-penetrating part that is at a center of the at least three of the cuts (Fig. 5; BCC is surrounded by TCL1-3; BCC being the center).
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 Shinkai to have the center to be non-penetrating part as taught by Hayashi for the purpose of having a bridge that interruptus continuous cut, to prevent unintentional tear/puncture of the lid.
The limitation “the insertion hole is formed by applying stress to the insertion part from outside in the thickness direction of the main body, and when the insertion hole is formed, the single non-penetrating part is broken, the broken single non-penetrating part forms a fracture surface in a part of the outer circumferential edge of the hole lid, the hole lid is displaced together with the fracture surface and at least a part of the fracture surface is located at a tip of the hole lid” is considered to be functional language. The prior art of Shinkai as modified has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. See MPEP 2173.05(g). Herein, Shinkai as modified has cut and single non-penetrating part in a shape just as the instant application that allows for hole to be formed.
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Regarding claim 2, Shinkai discloses, A lid (1) comprising: a main body (See annotated fig. below) formed in such a way as to be contactable with a container including an opening (See annotated fig. below) and an edge (22) forming an outer periphery of the opening, wherein the main body includes an insertion part (Fig. 2) configured to be capable of forming an insertion hole, the insertion part includes a hole lid (See annotated fig. below) that covers the insertion hole and a weakened part (11) that forms at least a part of an outer circumferential edge (See annotated fig. below) of the hole lid , the hole lid includes a corner (See annotated fig. below)forming a protruding portion of a contour in plan view of the main body, the weakened part includes a plurality of cuts (13) penetrating the main body in a thickness direction of the main body and at least three cuts (13).
However, Shinkai does not disclose, a non-penetrating part where the main body is not penetrated, and the weakened part has a structure in which at least three of the cuts are formed around the single non-penetrating part that is at a center of the at least three of the cuts.
Hayashi discloses, a lid comprising weakened part (TCL1-3) and a non-penetrating part (BCC) where the main body is not penetrated and the weakened part has a structure in which at least three of the cuts are formed around the single non-penetrating part that is at a center of the at least three of the cuts (Fig. 5; BCC is surrounded by TCL1-3; BCC being the center).
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 Shinkai to have the center to be non-penetrating part as taught by Hayashi for the purpose of having a bridge that interruptus continuous cut, to prevent unintentional tear/puncture of the lid.
The limitation “the insertion hole is formed by applying stress to the insertion part from outside in the thickness direction of the main body, and when the insertion hole is formed, the single non-penetrating part is broken, the broken single non-penetrating part forms a fracture surface in a part of the outer circumferential edge of the hole lid, the hole lid is displaced together with the fracture surface and at least a part of the fracture surface is located at the corner of the hole” is considered to be functional language. The prior art of Shinkai as modified has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. See MPEP 2173.05(g). Herein, Shinkai as modified has cut and single non-penetrating part in a shape just as the instant application that allows for hole to be formed.
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Regarding claim 3, Shinkai discloses, a plurality of the fracture surfaces is formed (when a straw goes through, 11 becomes one continuous cut and fracture surface is formed all around the center ).
The limitation “when the single non-penetrating part is broken, and at least a part of at least one of the fracture surfaces is located at the tip of the hole lid.” is considered to be functional language. The prior art of Shinkai as modified has all the structures required perform the claimed functional limitation. Hence, the prior art is inherently capable of performing the limitation. It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. See MPEP 2173.05(g). Herein, Shinkai as modified has cut and single non-penetrating part in a shape just as the instant application that allows for the single non-penetrating part to be broken, and at least a part of at least one of the fracture surfaces is located at the tip of the hole lid
Regarding claim 5, Shinkai discloses, wherein the insertion part includes a plurality of the hole lids (See annotated fig. below), and when the insertion hole is formed, the fracture surface is formed in a part of the outer circumferential edge of each of the hole lids (when a straw goes through, fracture surface is formed at the placed shown below) .
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Regarding claim 8, Shinkai discloses, wherein a raised part (7) is formed, and the insertion part is formed in a formation region of the raised part (Fig. 3).
Regarding claim 10, Shinkai discloses, joining region corresponding part corresponding to a region (See annotated fig. below)joined to the container along the edge of the container (See annotated fig. below); and a lid region corresponding part (See annotated fig. below) that is a portion inside the joining region corresponding part, wherein the insertion part is formed in the lid region corresponding part.
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Regarding claim 11, Shinkai discloses a side wall (See annotated fig. below) is provided around an outer periphery of the main body, and the side wall is configured to be lockable to the container along the edge (22) of the container.
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Regarding claim 13, Shinkai discloses a container (20) the container including the opening and the edge forming the outer periphery of the opening, wherein the lid is joined to the container (Fig. 3) .
Regarding claim 14, Shinkai discloses, A combination of a lid and a container, comprising, the lid and the container including the opening and the edge forming the outer periphery of the opening (See annotated fig. of claim 1, fig. 3).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinkai- Hayashi as applied to claim 1 above, and further in view of Hayter (CA 2956920).
Regarding claim 6, Shinkai does not disclose, the non-penetrating part has a half-cut structure in which the main body is cut to a predetermined depth in the thickness direction of the main body.
Hayter discloses a weakened line having a half-cut structure and cut line (page 27, lines 1-17).
It would have been obvious to try to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Shinkai to have non-penetrating part that are half cut as taught by Hayter for the purpose of making the tearing process easy.
As a result, Shinkai as modified would have the non-penetrating part has a half-cut structure in which the main body is cut to a predetermined depth in the thickness direction of the main body.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shinkai- Hayashi as applied to claim 1 above, and further in view of Syed (US 20100252555).
Regarding claim 9, Shinkai does not explicitly disclose, the main body is formed of a paper-based material.
Syed discloses a container lid formed of a paper-based material (abstract).
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 Shinkai to make the main body is formed of a paper-based material as taught by Syed as they are recyclable and less harmful to the environment.
Response to Arguments
Applicants argument with regards to a single non-penetrating part being at the center of three cuts is not persuasive as this is disclosed by newly incorporated prior art of Hayashi.
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.
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/ROBERT J HICKS/Primary Examiner, Art Unit 3736
/SANJIDUL ISLAM/Examiner, Art Unit 3736
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