DETAILED ACTION
Claim Rejections - 35 USC § 112
1. 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.
2. Claims 10 and 11 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.
Regarding claim 10, the term spout portion lacks proper antecedent basis in the claims. Examiner notes the previously recited element is “spout component” in claim 1.
Regarding claim 11, from which claims 12-16 depend, Examiner notes the phrase “one or more ridges extending radially inward from the first inner” in line 7 is indefinite. It appears the term “first inner” should be the “first inner surface”.
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.
4. 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 1, 2, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13 of U.S. Patent No. 12,221,253 (“the ‘253 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are anticipated by the claims of the ‘253 patent. See limitation-by-limitation comparison below.
Claims 1 and 13 of the ‘253 patent
Instant claims 1, 2, 11, and 12
1. A sip lid for a children's drinking vessel, comprising:
1. A lid for a drinking vessel, comprising:
a spout component having a first end region and a second end region opposite to the first end region, wherein— the spout component is shaped and sized to be received within a child's mouth, and the first end region comprises one or more openings configured to allow liquid to be extracted through the spout component when the child is applying suction to the spout component; and
a spout component comprising one or more openings configured to allow liquid to be extracted through the spout component; and
a base component having (i) a top portion extending from the second end region of the spout component and surrounding the spout component, and (ii) a side portion extending away from the top portion and configured to extend around a neck of the children's drinking vessel, wherein … and the base component is made from an elastic material configured to allow the base component to stretch over differently sized mouths of drinking vessels to form a liquid-tight seal between the base component and the drinking vessels … 4. The sip lid of claim 1, wherein the spout component and the base component are made of the same elastic material … 5. The sip lid of claim 4, wherein the elastic material is silicone.
a base component made of silicone and having (i) a top portion surrounding the spout component, and (ii) a side portion extending away from the top portion and configured to stretch around a neck of the drinking vessel,
the side portion comprises— a first inner surface, one or more ridges extending radially inward from the first inner surface and configured to concur within threads along the neck, and a peripheral edge region having a second inner surface with a larger diameter than that of the first inner surface around a circumference of the peripheral edge region, the second inner surface being substantially parallel to the first inner surface;
wherein the side portion comprises— a first inner surface, one or more ridges extending radially inward from the first inner surface and configured to concur within threads along the neck, and a peripheral edge region having a second inner surface with a larger diameter than that of the first inner surface around a circumference of the peripheral edge region, the second inner surface being substantially parallel to the first inner surface.
1. … and the base component is made from an elastic material configured to allow the base component to stretch over differently sized mouths of drinking vessels to form a liquid-tight seal between the base component and the drinking vessels …
2. The lid of claim 1, wherein the base component is configured to stretch over differently sized mouths of drinking vessels to form a liquid-tight seal between the base component and the drinking vessels.
13. A lid for a vessel, comprising:
11. A lid for a drinking vessel, comprising:
a spout component having a first end region and a second end region opposite to the first end region, wherein— the first end region comprises one or more openings configured to allow liquid to be extracted through the spout component; and
a spout component comprising one or more openings; and
a base component having (i) a top portion extending from the second end region of the spout component and surrounding the spout component, and (ii) a side portion extending away from the top portion, … and the base component is made from an elastic material configured to allow the base component to stretch over differently sized mouths of drinking vessels to form a liquid-tight seal between the base component and the drinking vessels …
a base component having (i) a top portion surrounding the spout component, and (ii) a side portion extending away from the top portion and configured to stretch around a neck of the drinking vessel,
wherein the side portion comprises— a first inner surface, one or more ridges extending radially inward from the first inner surface and configured to concur within threads along a neck of the vessel, and a peripheral edge region having a second inner surface with a larger diameter than that of the first inner surface around a circumference of the peripheral edge region, the second inner surface being substantially parallel to the first inner surface,
wherein the side portion comprises— a first inner surface, one or more ridges extending radially inward from the first inner, and a peripheral edge region having a second inner surface with a larger diameter than that of the first inner surface around a circumference of the peripheral edge region, the second inner surface being substantially parallel to the first inner surface.
13. … the base component is made from an elastic material configured to allow the base component to stretch over differently sized mouths of drinking vessels to form a liquid-tight seal between the base component and the drinking vessels.
12. The lid of claim 11, wherein the base component is configured to stretch over differently sized mouths of drinking vessels to form a liquid-tight seal between the one or more ridges of the base component and the drinking vessels.
14. The lid of claim 13, wherein the base component is configured to couple with and form the liquid-tight seal with mouths of drinking vessels having diameters ranging from about 30 mm to about 55 mm.
13. The lid of claim 11, wherein the base component is configured to couple with and form a liquid-tight seal with mouths of drinking vessels having diameters ranging from about 30 mm to about 55 mm.
6. Claims 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20 of U.S. Patent No. 12,221,253 (“the ‘253 patent”) in view of US 2015/0359365 (Feeley).
Claims 16-19 of the ‘253 patent
Instant claims 17-20
16. A method of using a sip lid, comprising:
17. A method of using a lid, comprising:
stretching a base component of the sip lid around threads of a neck of a drinking vessel to form a liquid-tight seal between the base component and the neck without using threads,
stretching a base component of the lid around threads of a neck of a drinking vessel to form a liquid-tight seal between the base component and the neck,
wherein— the base component includes (i) a top portion, and (ii) a side portion extending away from the top portion, … the base component of the sip lid is configured to be stretched over necks of drinking vessels having diameters ranging from about 30 mm to about 55 mm.
wherein— the base component is made of silicone (not taught) and includes (i) a top portion, and (ii) a side portion extending away from the top portion and configured to stretch around a neck of the drinking vessel,
the side portion has a first inner surface comprising one or more ridges, the side portion includes a peripheral edge region having a second inner surface with a larger diameter than that of the first inner surface around a circumference of the peripheral edge region, the second inner surface being substantially parallel to the first inner surface,
wherein the side portion comprises— a first inner surface, one or more ridges extending radially inward from the first inner surface and configured to concur within threads along the neck, and a peripheral edge region having a second inner surface with a larger diameter than that of the first inner surface around a circumference of the peripheral edge region, the second inner surface being substantially parallel to the first inner surface, and
the sip lid comprises a spout component having a first end region with openings configured to allow for liquid extraction therethrough and a second end region coupled to the base component,
the lid comprises a spout component comprising one or more openings configured to allow liquid to be extracted through the spout component.
The claims of the ‘253 patent fail to limit the base as being formed of silicone material. However, Examiner notes they limit the base as being configured to stretched over vessel necks of various diameter.
Feeley, analogous to elastic sip lids (16), teaches forming a sip lid of silicone which allows it to be “stretched and pulled” when applied to a drinking cup (see para. [0040]).
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 lid of the ‘253 patent, forming it of silicone as taught by Feeley, motivated by the use of a stretchable elastic material, 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”.
17. The method of claim 16, further comprising uncoupling the sip lid from the drinking vessel by pulling at least one of the sip lid and the drinking vessel relative to each other in an opposite direction until the sip lid is no longer in contact with the drinking vessel.
18. The method of claim 17, further comprising uncoupling the lid from the drinking vessel by pulling at least one of the lid and the drinking vessel relative to each other in an opposite direction until the lid is no longer in contact with the drinking vessel.
18. The method of claim 17, wherein pulling at least one of the sip lid and the drinking vessel relative to each other does not include rotating.
19. The method of claim 17, wherein pulling at least one of the lid and the drinking vessel relative to each other does not include rotating.
19. The method of claim 18, wherein the drinking vessel is a first drinking vessel, the neck is a first neck, and the method further comprises: uncoupling the sip lid from the first drinking vessel; and attaching the sip lid to a second neck of a second drinking vessel, the second neck being shaped and/or sized differently than the first neck.
20. The method of claim 17, wherein the drinking vessel is a first drinking vessel, the neck is a first neck, and the method further comprises: uncoupling the lid from the first drinking vessel; and attaching the lid to a second neck of a second drinking vessel, the second neck being shaped and/or sized differently than the first neck.
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