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 .
Election/Restrictions
Applicant's election without traverse of Species A (2.1-3,4-6) claims 1-13 with claims 14-19 canceled in the reply filed on 04/27/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12195251 in view of English (US4183444A)
Regarding claim 1, Patent 251’ (claim 1) discloses the claimed subject matter except wherein said straw capture and alignment port is configured approximately tangential thereto the perimeter flange of the cup lid.
English teaches wherein said straw capture and alignment port is configured approximately tangential thereto the perimeter flange of the cup lid (fig.9 lid 10 with perimeter flange i.e. the thickness where 10 is pointed and the straw capture and alignment port 92 are capable to be approximant tangential to the flange 30; it is noted that applicant does not positively claim the tangential limitation and the prior art does not have to positively discloses as long as its capable of it reads on the given claim), 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 apparatus disclosed by 251’ by adding the teaching of tangentiality of alignment port with flange as disclosed by English in order to create smooth aesthetically pleasing curves and creating safe efficient transitions so the user does not cut itself on the tabs. 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. 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).
Regarding claim 2, references as applied to claim 1 above (claim 2) discloses the claimed subject matter.
Regarding claim 3, references as applied to claim 1 above (claim 4) discloses the claimed subject matter.
Regarding claim 4, references as applied to claim 1 above (claim 5) discloses the claimed subject matter.
Regarding claim 5, references as applied to claim 1 above (claim 7) discloses the claimed subject matter.
Regarding claim 6, references as applied to claim 1 above (claim 8) discloses the claimed subject matter.
Regarding claim 7, references as applied to claim 1 above (claim 9) discloses the claimed subject matter.
Regarding claim 8, references as applied to claim 1 above (claim 10) discloses the claimed subject matter.
Regarding claim 9, references as applied to claim 1 above (claim 11) discloses the claimed subject matter.
Regarding claim 10, references as applied to claim 1 above (claim 12) discloses the claimed subject matter.
Regarding claim 11, references as applied to claim 1 above (claim 13) discloses the claimed subject matter.
Regarding claim 12, references as applied to claim 1 above (claim 13) discloses the claimed subject matter.
Regarding claim 13, references as applied to claim 1 above (claim 14) discloses the claimed subject matter.
Conclusion
See PTO-892 for the prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRINCE PAL whose telephone number is (571)272-7525. The examiner can normally be reached M-Th, 9:30 AM - 7:30 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANTHONY STASHICK can be reached on (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PRINCE PAL/Examiner, Art Unit 3735
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