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 § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 16 are 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.
Claims 2, 3, 12 and 14 are considered indefinite since the additional limitations regarding beverage container and how it relates to the insert as recited in the claims raises the question of whether the intention is to claim the combination of the insert with the beverage container, as opposed to whether the intent is to claim the subcombination of the insert only, and since claim 1 and 13 line 1 appears to indicate that the subcombination is claimed, this office action presumes that the intention is to claim only the subcombination of the insert, in order to give the claims their broadest reasonable interpretation. Therefore, all references in the claims to any beverage container are considered to be only statements of intended use with regard to the claimed insert.
Claim 6 and 16 is considered indefinite since the additional limitation regarding the thermal regulating material includes one or more of: ice, water, a cooling material, or a warming material as recited in this claim raises a question whether the intention is to claim the combination of the insert with the thermal regulating material, as opposed to whether the intent is to claim the subcombination of the insert only, and since claim 1 and 13 line 1 appears to indicate that the subcombination is claimed, this office action presumes that the intention is to claim only the subcombination of the insert, in order to give the claims their broadest reasonable interpretation. Therefore, all references in the claims to any thermal regulating material are considered to be only statements of intended use with regard to the claimed insert.
Claim Rejections - 35 USC § 102
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) 1-3, 6-10 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MALINOWSKI US 2015/0327704 A1.
With regards to claim 1, MALINOWSKI (Fig. 9-10) discloses an insert 5 configured to be used with a beverage container, comprising: an inner container configured to be positioned inside of the beverage container, the inner container including a first end having a first edge 10, an opposing second end 15 having a second edge, and side surfaces (at 12) extending between the first edge and the second edge; a first rim formed on the first edge of the inner container, wherein the first rim includes a first diameter; a second rim (at 15) formed on the second edge of the inner container, wherein the second rim includes a second diameter; one or more protrusions 60/62 configured to extended downwardly from the second end toward the beverage container; wherein the first end is open and the second end is closed; wherein a thermal regulating material is configured to be positioned between the inner container and the beverage container. (Para. 0052)
With regards to claim 2, the insert of MALINOWSKI (Fig. 9-10) is capable of having the first diameter of the first rim 10 is configured to be less than a diameter of the beverage container, depending on the type and size of beverage container to be used.
Since the beverage container is an intended use recitation.
With regards to claim 3, the insert of MALINOWSKI (Fig. 9-10) is capable of having the first diameter of the first rim is configured to be greater than a diameter of the beverage container, depending on the type and size of beverage container to be used.
Since the beverage container is an intended use recitation.
With regards to claim 6, MALINOWSKI (Fig. 9-10) discloses the thermal regulating material includes one or more of: ice, water, a cooling material, or a warming material. (Para. 0017 and 0052)
With regards to claim 7, MALINOWSKI (Fig. 9-10) discloses the side surfaces (at 12) include one or more grooves (under 10)
With regards to claim 8, MALINOWSKI (Fig. 9-10) discloses the side surfaces (at 12) include one or different shapes.
With regards to claim 9, MALINOWSKI (Fig. 9-10) discloses the one or more protrusions are configured to center the inner container within the beverage container. (claim 6)
With regards to claim 10, MALINOWSKI (Fig. 9-10) discloses the one or more protrusions 60/62 have a cross-section that is one or more of: frustoconical. (Fig. 10)
With regards to claim 12, the insert of MALINOWSKI (Fig. 9-10) is capable of having the first rim of the inner container approximately level with a top portion of the beverage container, depending on the type and size of beverage container to be used.
Since the beverage container is an intended use recitation.
Claim Rejections - 35 USC § 103
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.
Claim(s) 4-5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over MALINOWSKI US 2015/0327704 A1 in view of Venti et al. US 11,173,099 B2.
With regards to claim 4, MALINOWSKI discloses a hollow frustoconical portion but it does not specifically disclose it extends from the second edge toward the first edge.
However, Venti teaches that it was known in the art to have an insert to be used with a beverage container have an insert 110 have a hollow frustoconical portion 112 that extends from the second edge toward the first edge. (Fig. 3C and Col 4:61-Col 5:11)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the hollow frustoconical portion in MALINOWSKI by having it extend from the second edge toward the first edge as taught by Venti for the purposes of regulating the temperature of the liquid being held.
With regards to claim 5, MALINOWSKI (Fig. 9-10) discloses the hollow frustoconical portion 60 is configured to receive the thermal regulating material. (Para. 0052)
With regards to claim 11, MALINOWSKI (Fig. 9-10) does not specifically disclose the first diameter is less than the second diameter.
However, in para. 0060, MALINOWSKI recites the structures may take on any number of alternative shapes not described in the specification. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention was made to have the first diameter is less than the second diameter since it was known in the art that doing so would be providing an alternative dimension to the insert.
Claim(s) 13-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over MALINOWSKI US 2015/0327704 A1 in view of Venti et al. US 11,173,099 B2.
With regards to claim 13, MALINOWSKI (Fig. 9-10) discloses an insert 5 configured to be used with a beverage container, comprising: an inner container configured to be positioned inside of the beverage container, the inner container including a first end having a first edge (at 10), an opposing second end (at 15) having a second edge, and side surfaces (at 12) extending between the first edge and the second edge; a first rim (at 10) formed on the first edge of the inner container, wherein the first rim includes a first diameter; a second rim (at 15) formed on the second edge of the inner container, wherein the second rim includes a second diameter, the second diameter being less than the first diameter; one or more protrusions 60/62 configured to extended downwardly from the second end toward the beverage container; a hollow portion having a frustoconical shape 60; wherein the first end is open and the second end is closed; wherein a thermal regulating material is configured to be positioned between the inner container and the beverage container. (Para. 0052)
MALINOWSKI discloses a hollow frustoconical portion but it does not specifically disclose it extends from the second edge toward the first edge.
However, Venti teaches that it was known in the art to have an insert to be used with a beverage container have an insert 110 have a hollow frustoconical portion 112 that extends from the second edge toward the first edge. (Fig. 3C and Col 4:61-Col 5:11)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the hollow frustoconical portion in MALINOWSKI by having it extend from the second edge toward the first edge as taught by Venti for the purposes of regulating the temperature of the liquid being held.
With regards to claim 14, the insert of MALINOWSKI (Fig. 9-10) is capable of having a gap between the first rim and the beverage container, depending on the type and size of beverage container to be used.
Since the beverage container is an intended use recitation.
With regards to claim 15, MALINOWSKI (Fig. 9-10) discloses the hollow portion 60 is configured to receive the thermal regulating material. (Para. 0052)
With regards to claim 16, treated as in claim 6 above.
With regards to claim 17, treated as in claim 7 above.
With regards to claim 18, treated as in claim 9 above.
With regards to claim 19, treated as in claim 10 above.
With regards to claim 20, MALINOWSKI (Fig. 9-10) does not specifically disclose the inner container has a frustoconical shape with a larger diameter at the first end and the hollow portion has a frustoconical shape with a larger diameter at the second end.
To modify the inner container with a frustoconical shape with a larger diameter at the first end and the hollow portion with a frustoconical shape with a larger diameter at the second end as claimed would entail a mere change in shape of the inner container and hollow portion and yield only predictable results. "[I]f 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 unless its actual application is beyond that person's skill." KSR Int 'l v. Teleflex Inc., 127 S.Ct. 1740, 82 USPQ2d 1396 (2007). A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENINE SPICER whose telephone number is (313)446-4924. The examiner can normally be reached 9:00am-5:00pm, Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Avilés can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENINE SPICER/Examiner, Art Unit 3736
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736