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 Objections
Claims 1-13 are objected to because of the following informalities: claim 1 includes multiple capital letters at the beginning of each paragraph. Appropriate correction is required.
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 2-10 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 2: the term “generally fluted configuration” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear how fluted the projection must to be considered to have a “generally fluted configuration.” Does any amount of fluting read on the claim or is there some threshold that must be met?
Regarding claim 3: the term “generally conical” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear how conical the projection must be to be considered “generally conical.” It is especially unclear since parent claim 2 also requires the outer surface to be “generally fluted.”
Correction and/or explanation is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1, 10 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown (US 2005/0103739) in view of Chen (US 2009/0039045).
Regarding claim 1: Brown discloses a temperature control device (fig 4, abstract) for a container (10, fig 3), comprising:(a) a base (at lead line 24, fig 4) having a bottom wall (24, fig 4), at least one side wall (at 23, fig 4), and a top wall (i.e., flat top wall with projection 20, fig 3); (b) a projection (20, fig 3) connected with and extending from said base, said projection including a side wall (at 21, fig 3 and 4) and a top wall (i.e., the upper most end of 20, figs 3 and 4) defining an inner chamber (i.e., interior of shell 21 that holds material 22, ¶0014, fig 4), said base and projection configured for connection with a lower end opening of a drink container (fig 3, ¶0020); and(c) a temperature control substance (22, ¶¶0017 and 0018) contained within said inner chamber.
Although implied by the disclosure that projection (20) creates a chamber for material (22), Brown does not explicitly show or disclose that the projection has a bottom wall. Chen discloses a similar drinking bottle (2, fig 1) that includes a hollow projection (4, fig 1) with a base (3), wherein the projection (4) includes a bottom wall (412, figs 1-2, ¶¶0016, 0017). Chen teaches that the bottom wall (i.e. sealing member 412) is detachable sealed in the projection (¶¶0016,0017). Before the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the projection of Brown to include a bottom wall, as taught by Chen, so that the interior of the chamber would be detachable sealed. This would be desirable because it would serve the purpose of containing the enclosed material and it would also allow the stored material to be removed or replaced.
Regarding claim 10: Brown discloses that said temperature control substance includes a phase changing material (see ¶¶0017,0018: ice is a phase change material).
Regarding claim 14: Brown discloses a container (10, fig 1), comprising:(a) a housing having a bottom wall containing a lower end opening (at lead line 19, fig 2), at least one side wall (at lead line 15, fig 2), and an open upper end (at lead line 11, fig 2) defining a chamber (i.e. interior of bottle); (b) a hollow projection (18, shown in dots in fig 2, and solid in fig 5) arranged within said chamber and integral with said bottom wall (see figs 2 and 5, ¶0016); and (c) a temperature control device (fig 4) configured for connection with said container, including: i. a base (at lead line 24, fig 4) having a bottom wall (24, fig 4), at least one side wall (at lead line 23, fig 4), and a top wall (i.e. flat top wall with projection 20, fig 3); ii. a device projection (20, figs 3 and 4) connected with and extending from said base, said device projection including a side wall (21, figs 3 and 4), and a top wall (i.e., the upper most end of 20, figs 3 and 4) defining an inner chamber (i.e. interior of shell 21 that holds material 22, ¶0017, fig 4), said base and said device projection being configured for connection with said hollow projection (18) via said lower end opening (19, ¶¶0017,0020, fig 3); and iii. a temperature control substance (22, ¶¶0017 & 0018) contained within said inner chamber.
Although implied by the disclosure that projection (20) creates a chamber for material (22), Brown does not explicitly show or disclose that the projection has a bottom wall. Chen discloses a similar drinking bottle (2, fig 1) that includes a hollow projection (4, fig 1) with a base (3), wherein the projection (4) includes a bottom wall (412, figs 1-2, ¶¶0016, 0017). Chen teaches that the bottom wall (i.e. sealing member 412) is detachable sealed in the projection (¶¶0016,0017). Before the claimed invention was effectively filed, it would have been obvious to one of ordinary skill in the art to have modified the projection of Brown to include a bottom wall, as taught by Chen, so that the interior of the chamber would be detachable sealed. This would be desirable because it would serve the purpose of containing the enclosed material and it would also allow the stored material to be removed or replaced.
Claim(s) 2-6 and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brown and Chen, as applied above, in further view of Cicarelli (US 2019/0261793).
Regarding claims 2 and 15: see the above §112 discussion. Brown does not disclose wherein a portion of said projection side wall has a generally fluted configuration.
Cicarelli discloses a container (102, fig 3) with a projection (112) having a portion of the side wall with a generally fluted (112b) configuration (¶0026). Cicarelli teaches that the flutes increase the surface area of the projection (¶0027). It would have been obvious to a person of ordinary skill in the art to have modified the projection of Brown to include flutes, as taught by Cicarelli, so as to increase the surface area of the projection. This would be desirable because increased surface area would improve the heat transfer between the projection and the container, similar to how radiators function.
Regarding claim 3: see the above §112 discussion. Brown discloses wherein said projection has a generally conical configuration (see figs 3 and 4).
Regarding claims 4 and 16: Brown discloses wherein an outer surface of said base side wall contains a connection mechanism (26 figs 4 and 5, ¶0019 and 0020) having a friction fit.
Regarding claims 5 and 16: Brown does not disclose wherein said connection mechanism includes a base side wall annular notch arranged to correspond with at least one side wall protuberance of a drink container lower end opening/surface of hollow projection.
Brown discloses the opposite wherein the base side wall includes a protuberance (26, fig 4 and 5, ¶¶0019,0020) configured to correspond with at least one notch (27, fig 5) arranged on drink container lower opening.
The claimed limitations, however, are a simple reversal of parts that would have been obvious to a person of ordinary skill in the art (see MPEP 2144.04 VI). Swapping the protuberance and the notch would not change how the device functions and there would be a reasonable expectation of success since it would only involve making changes to the plastic molds. It would have been obvious to a person of ordinary skill in the art to have modified Brown so that the connection mechanism includes a base side wall annular notch arranged to correspond with at least one side wall protuberance of a drink container lower end opening, because it would be a simple reversal of parts that would not substantially change the function of the device.
Regarding claims 6 and 17: Brown does not disclose wherein said connection mechanism includes a plurality of base side wall dimples arranged to correspond with a plurality of side wall protuberances of a drink container lower end opening/surface of hollow projection.
Brown discloses the opposite wherein the base side wall includes a plurality of side wall protuberances (26) correspond with a plurality of side wall dimples (27B, fig 5) of a drink container lower end opening (see ¶¶0019,0020). Note that the examiner is interpreting 27B as being a dimple under broadest reasonable interpretation in light of the applicant’s disclosure. The examiner is interpreting a dimple to be an indentation, notch or hole.
The claimed limitations, however, are a simple reversal of parts that would have been obvious to a person of ordinary skill in the art (see MPEP 2144.04 VI). Swapping the protuberances and dimples would not change how the device functions and there would be a reasonable expectation of success since it would only involve making changes to the plastic molds. It would have been obvious to a person of ordinary skill in the art to have modified Brown so that said connection mechanism includes a plurality of base side wall dimples arranged to correspond with a plurality of side wall protuberances of a drink container lower end opening, because it would be a simple reversal of parts that would not substantially change the function of the device.
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, 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,187,523. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent anticipate the claims of the application.
Claims 1 and 14 are anticipated by claims 1 and 12 of the patent, respectively
Claims 10-13 are anticipated by claims 8-11 of the patent, respectively.
Claims 2-9 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,187,523 in view of Cicarelli (US 2019/0261793).
The claims of the patent recite all of the claimed limitations except that a portion of said projection side wall has a generally fluted configuration.
Cicarelli discloses a container (102, fig 3) with a projection (112) having a portion of the side wall with a generally fluted (112b) configuration (¶0026). Cicarelli teaches that the flutes increase the surface area of the projection (¶0027). It would have been obvious to a person of ordinary skill in the art to have to included flutes, as taught by Cicarelli, so as to increase the surface area of the projection. This would be desirable because increased surface area would improve the heat transfer between the projection and the container, similar to how radiators function.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON M ANDERSON whose telephone number is (571)272-4923. The examiner can normally be reached 9-5, Monday-Friday.
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/DON M ANDERSON/Primary Examiner, Art Unit 3733