DETAILED ACTION
Specification
1. The specification is objected to because it presents the instant application as a continuation; however, all content related to the diameter of the arms, e.g. paras. [0022]-[0026] are not found in parent application 17/629,580 (“the ‘580 patent”). It is believed this application constitutes a continuation-in-part, and accordingly the application type in para. [0001] should be amended. Examiner notes Applicant is further required to file a corrected Application Data Sheet which corrects the same defect in Domestic Benefit Information found on page 4 therein. All claimed subject matter drawn to the larger diameter of the arms (e.g. claims 1-17), comprising new matter relative to the priority date of the parent application, shall only receive the benefit of the instant filing date of September 23, 2024. Claims 18-20 currently find support in the ’580 application, and receive the benefit of the earlier filing date.
Priority
2. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/629,580, filed on October 18, 2019.
Claim Objections
3. Claims 2-17, 19, and 20 are objected to because of the following informalities:
Regarding each of claims 1-17, 19, and 20, the phrase “in which” should be changed to “wherein.” See MPEP 2111.04.
Appropriate correction is required.
Double Patenting
4. 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.
5. Claims 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,097,998 (Dreyer) in view of US 2021/0039840 (Benoit-Gonin). See element -by-element comparison below.
Claim 1 of Dreyer
Instant claims 18-20
A closure in combination with a container, … during the unscrewing the cap can lift vertically along said corresponding screw thread formation of the container neck, to allow freedom to get access to the container, while still remaining tethered to the container.
(Claim 18) A tethered closure for a container mouth, comprising
the closure comprising a cap … the cap comprising a top plate and a sidewall that depends from the periphery of the top plate
a cap having a generally cylindrical (not taught to be cylindrical; see obviousness modification below) sidewall, and
the closure comprising … a retaining ring, … the retaining ring comprising a first connecting arm and a second connecting arm, the first connecting arm is non-frangibly connected to the cap at a cap tether end and circumferentially anticlockwise therefrom is non-frangibly connected to the retaining ring at a ring root end … the retaining ring includes an internal annular snap bead which can be positioned under a neck bead to prevent the retaining ring from being removed axially
an annular (not taught; see obviousness modification below) retaining ring arranged under the cap for retaining the closure on a container,
during the unscrewing the cap can lift vertically along the corresponding screw thread formation, to allow freedom to get access to a container, while still remaining tethered to the container.
the cap is partially separable from the ring,
the retaining ring comprising a first connecting arm and a second connecting arm, the first connecting arm is non-frangibly connected to the cap at a cap tether end and circumferentially anticlockwise therefrom is non-frangibly connected to the retaining ring at a ring root end, the second connecting arm is non-frangibly connected to the cap at a cap tether end and circumferentially clockwise therefrom is non-frangibly connected to the retaining ring at a ring root end,
the cap and ring are joined by arcuate arms, the arms are positioned axially between the cap and ring,
during the unscrewing the cap can lift vertically along the corresponding screw thread formation, to allow freedom to get access to a container, while still remaining tethered to the container.
the arms permit axial separation of the cap from the ring
the first connecting arm non-frangibly connected to the cap at a is cap tether end and circumferentially anticlockwise therefrom is non-frangibly connected to the retaining ring at a ring root end, the second connecting arm is non-frangibly connected to the cap at a cap tether end and circumferentially clockwise therefrom is non-frangibly connected to the retaining ring at a ring root end,
whereby the cap remains tethered to the ring when opened, in which the arms are connected to the cap by links, in which the arms extend under the links, in which the ring includes an axially inclined portion under the links (not taught; see obviousness modification below).
the retaining ring comprising a first connecting arm and a second connecting arm, the first connecting arm is non-frangibly connected to the cap at a cap tether end and circumferentially anticlockwise therefrom is non-frangibly connected to the retaining ring at a ring root end, the second connecting arm is non-frangibly connected to the cap at a cap tether end and circumferentially clockwise therefrom is non-frangibly connected to the retaining ring at a ring root end, … wherein each of the first and the second connecting arm is formed as a first linear portion that extends from the ring root end, an inclined portion,
(claim 19) there are two arcuate arms of the skirt, two links, and two inclined portions.
(claim 20) the inclined portions extend, circumferentially, at least the extent of the links (not taught).
Dreyer fails to teach:
a) the cap sidewall being generally cylindrical;
b) the retaining ring being generally annular; and
c) the ring includes an axially inclined portion under the links.
Benoit-Gonin, analogous to tethered closure caps, teaches a generally cylindrical skirt (15 in Figure 2) which is known in the art to facilitate screw threading due to the circular shape; an annular ring (20 in Figure 2), and which includes an axially inclined portion (unlabeled; see annotated Figure 4 below) under a link (45).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention of Dreyer, forming the skirt to be generally cylindrical as taught by Benoit-Gonin, motivated by the benefit of facilitating screwing, to modify the retaining ring to be annular as taught by Benoit-Gonin, motivated by the benefit of fully securing to the cylindrical neck of a container, and providing an axially inclined portion on the retaining ring, as taught by Benoit-Gonin, motivated by the benefit of a reinforcement to provide rigidity, each having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 20, Examiner notes the ring root end is taught in claim 1, but not the length of the connection.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the claimed invention of Dreyer, forming the inclined portions to extend the length of the links, motivated by an obvious change in size of the prior art, having a predictable outcome absent a teaching of an unexpected result. A change in size, absent a teaching of an unexpected result, is within ordinary skill in the art. See MPEP 2144.04(IV)(A):
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim Rejections - 35 USC § 112
6. 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.
7. Claim 7 is 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.
Regarding claim 7, the phrases “on the one hand” and “on the other hand” are indefinite because it is not clear if they are referring to portions of the arm, or how they otherwise limit the claimed invention.
Claim Rejections - 35 USC § 102
8. 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.
9. Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2024/0025095 (Scherer).
Regarding claim 1, Scherer teaches a tethered closure for a container mouth, comprising a cap (10) having a generally cylindrical sidewall (14), and an annular retaining ring (16) arranged under the cap for retaining the closure on a container, the cap is partially separable from the ring (see Figure 2), the cap and ring are joined by arcuate arms (20a and 20b), the arms are positioned axially between the cap and ring (see Figure 1 showing arms 20a and 20b axially between 16 and 14), the arms permit axial separation of the cap from the ring and whereby the cap remains tethered to the ring (see Figure 2), in which at least part of the arcuate arms have an outer diameter which is greater than the outer diameter of the corresponding at least part of the sidewall and/or the corresponding at least part of the ring which are axially adjacent the said at least part of the arms (unlabeled; see annotated Figure 1 below showing the arms having a larger diameter than the ring).
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Regarding claim 2, the outer diameter is greater by virtue of increased radial extent of the material of the arms (see increased thickness of arm in annotated Figure 1 above with regard to claim 1).
Regarding claim 3, the arms are connected to the cap by links (22 and 24).
Regarding claim 4, the links are flexible (taught to be formed of plastic in para. [0001], and flexible as seen raising in Figure 2).
Regarding claim 5, the links are generally triangular or generally trapezoidal or generally squared or generally rectangular (links 22 and 24 are read as being triangular in cross-section as seen in Figure 2 comprising a tapered portion of the upper end of arms 20a and 20b at 22 and 24).
Regarding claim 6, the links are formed as film hinges (see hinges 22 and 24 in para. [0034]).
Regarding claim 7, each arm has the shape of an arc of a circle (see arc shape of 20a and 20b in Figure 1) and is connected to the cap on the one hand, at the level of one of the links (at 22 and 24), and to the ring on the other hand (at 42 and 44; see Figure 2).
Regarding claim 8, each arm is connected to the ring at a location which is angularly distant with respect to a link to which it is connected (see angular distance between 22 and 42, and angular distance between 24 and 44 in Figure 2).
Regarding claim 9, the arms extend under the links (see arms 20a and 20b located below hinges 22 and 24 in Figure 1).
Regarding claim 10, part of the arms with a greater outer diameter is under the links (see 20b having a larger diameter than ring 16, and being below link 22 in Figure 1).
Regarding claim 11, the links extend axially between the arms and the cap (see hinges 22 and 24, which inherently comprise an axial length no matter how thin, located between the arms and the cap in Figure 1).
Regarding claim 12, the links do not extend axially into the cap (hinges 22 and 24 are located between the arms and cap, and thus do not extend into the cap; see Figure 1).
Regarding claim 13, the arms terminate at approximately the same circumferential point as the links (see annotated Figure 1 below).
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Regarding claim 14, the material of the links is thinner than the material of the arms (see annotated Figure 1 above showing how the hinge (link) comprises a thinned section at the tapered upper end of the arm).
Regarding claim 15, the cap comprises a tongue (30) between the links (see Figure 1).
Regarding claim 16, the links are symmetrical with respect to the median axis of the tongue (see symmetry of hinges/links 22 and 24 with respect to tongue 30 in Figure 1).
Regarding claim 17, along the upper and/or lower edge of the arms there are frangible bridges (see frangible bridges at 36, as well as unlabeled frangible bridges along the bottom, e.g annotated Figure 2 below).
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9. Claims 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2011/0114593 (Ishii).
Regarding claim 18, Ishii teaches a tethered closure (2) for a container mouth, comprising a cap (8) having a generally cylindrical sidewall (10), and an annular retaining ring (6) arranged under the cap for retaining the closure on a container, the cap is partially separable from the ring, the cap and ring are joined by arcuate arms (50a and 50b), the arms are positioned axially between the cap and ring, the arms permit axial separation of the cap from the ring whereby the cap remains tethered to the ring when opened, in which the arms are connected to the cap by links (52a and 52b), in which the arms extend under the links, in which the ring includes an axially inclined portion under the links (54a and 54b).
Regarding claim 19, there are two arcuate arms (58a and 58b which follow the circumference of the retaining ring as seen in Figure 1, and are thus arcuate) of the skirt (integrally formed therewith), two links (52a and 52b), and two inclined portions (54a and 54b).
Regarding claim 20, the inclined portions extend, circumferentially, at least the extent of the links (see annotated Figure 2 below).
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES N SMALLEY/Examiner, Art Unit 3733