DETAILED ACTION
Response to Arguments
1. Applicant's arguments filed April 8, 2026 have been fully considered but they are not persuasive.
Applicant argues the Specification provides sufficient support for the additional subject matter added to the Specification based on features shown in the drawings. Examiner notes that while Applicant is allowed to use drawings for support, arguments based on proportions “are of little value” absent any disclosure as to the scale of the drawings. See MPEP 2125(II). In the instant case, the requisite supporting language is found in the child application (paras. [0022]-[0026]). Applicant’s reliance on thinly spaced dotted lines in their annotated Figure 1 in the Remarks of April 8, 2026 to provide material support for the amended subject matter is insufficient evidence that the feature is supported by the drawings in the parent application. These annotated lines do not definitively establish that Applicant was in possession of the structural relationship at the filing date of the parent application.
More importantly, Examiner notes that the annotated drawing is not the same depiction of the cap as that shown in the original Figure 1. Accordingly, it is not even clear that the dimensions of the annotated depiction are the same as those of the annotated Figure 1. Examiner notes the difference in the two diameters in the original Figure 1 is nearly that of the thickness of the bold outline used in the drawings. Accordingly, it is asserted that the original Figure 1 found in parent application 17/629,580 would not have sufficiently taught a person of ordinary skill in the art that the diameter of the arm was greater than that of the closure skirt.
Specification
2. 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.
Double Patenting
3. 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 whereinthe 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.
4. 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, wherein the arms are connected to the cap by links, wherein the arms extend under the links, wherein 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.
Allowable Subject Matter
5. Claims 1, 2, and 4-17 are allowed.
6. The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, from which claims 2 and 4-17 depend, Scherer fails to teach the amended limitation “the arms are connected to the cap by links, and wherein the links do not extend axially into the generally cylindrical sidewall of the cap”. No motivation could be found to modify the reference in order to arrive at the claimed invention.
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.
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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/JAMES N SMALLEY/Examiner, Art Unit 3733
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