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 Group I (claims 1-10,14-19)in the reply filed on 02/13/2026 is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 4,6 and 8-9 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.
Claim 4 recites the limitation " wherein said first component comprises alcohol and wherein said second component comprises a mixer " in line 1-2. There is insufficient antecedent basis for this limitation in the claim because applicant does not claim any first or second components and where they are located prior to this limitation. For purpose of examination, the limitation will be interpreted as “wherein inverted top can is capable of storing a first component comprising alcohol and wherein bottom can is capable of storing a second component comprises a mixer”.
Claim 6 recites the limitation " wherein said first component comprises a solute and wherein said second component comprises a solvent " in line 1-2. There is insufficient antecedent basis for this limitation in the claim because applicant does not claim any first or second components and where they are located prior to this limitation. For purpose of examination, the limitation will be interpreted as “wherein top inverted top can capable of holding a first component comprises a solute and wherein bottom can capable of holding a second component comprises a solvent”.
Claim 8 recites the limitation “wherein said bottom can has sufficient volume to accommodate both the first and second component” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim because applicant does not claim any the first and second component” prior to this i.e. claim 1. For purpose of examination, the limitation will be interpreted as “the first component and second component”.
Claim 9 recites the limitation " said first component " in line 1. There is insufficient antecedent basis for this limitation in the claim because applicant does not claim any “first component” prior to this i.e. claim 1. For purpose of examination, the limitation will be interpreted as “a first component”.
Claim Rejections - 35 USC § 102
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 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) 1-2,4,6-10 and 17-19is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Estabrook (US8834948B2).
Regarding claim 1, Estabrook teaches a system for a shaker, said system comprising (see annotated fig.3 of Estabrook below for a system capable of being a shaker):
an inverted top can sitting atop and coupled to a bottom can (see annotated fig.3 below for an inverted top can sitting atop and coupled to the bottom can);
wherein said top can comprises a top can lid, and wherein said bottom can comprises a bottom can lid, and wherein said top can lid and said bottom can lid are adjacent when said inverted top can is coupled to said bottom can (see annotated fig.3 for the inverted position is shown and “a secondary lid, such as a thin sheet film, may be positioned under the lid 24 and be attached to the rim 22 or other part of the second container 2 to provide a suitable moisture, oxygen or other barrier.” (Col.6 lines 37-41) and fig.2 shows the top can having lid 12 that would be adjacent when the top can is coupled to the bottom can since it is inverted);
wherein said top can has an integral first outer diameter located adjacent to said top can lid, and wherein said bottom can has an integral second outer diameter located adjacent said bottom can lid, wherein said first outer diameter is less than said second outer diameter (see annotated fig.3 below for the first outer diameter located adjacent to the top can lid and bottom can having integral second outer diameter located adjacent to the bottom can lid and the first diameter is less than the second);
wherein said first outer diameter nests within said second outer diameter via friction when said first can is coupled to said second can (see annotated fig.3 below for the first outer diameter nests within the second outer diameter via friction as the wall that is pointed out extends down into the 2nd outer diameter which extends all the way up to the lid);
wherein said system further comprises an external coupling to couple said top can with said bottom can (fig.3 shows the external coupling that couples the top can with the bottom can); and
wherein said top can lid comprises a diameter, and wherein said bottom can lid comprises a diameter, and wherein the diameter of the top can lid is less than the diameter of the bottom can lid (fig.2 shows the diameter of lid 12 and the secondary lid that goes over the rim 22 as stated above having a diameter and the top can lid will have less diameter than the bottom can since sizes are different).
Annotated fig.3 of Estabrook
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Regarding claim 2, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said bottom can lid results in a 360 opening when removed (fig.3 the film as discussed above that goes on rim 22 can be taken off resulting in 360 opening when removed).
Regarding claim 4, as best understood based on 112 issue identified above, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches teach wherein inverted top can is capable of storing a first component comprising alcohol and wherein bottom can is capable of storing a second component comprises a mixer (see annotated fig.3 above where the top can is capable of having a first component that is alcohol to be stored in it and bottom can is capable of having second component which is a mixed).
Regarding claim 6, as best understood based on 112 issue identified above, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein top inverted top can capable of holding a first component comprises a solute and wherein bottom can capable of holding a second component comprises a solvent (see annotated fig.3 above where the first component can be a solute and second component a solvent).
Regarding claim 7, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said inverted top can comprises a solid and said bottom can comprises a liquid (see annotated fig.3 above the top can capable of comprising a solid and bottom can a liquid).
Regarding claim 8, as best understood based on 112 issue indemnified above, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said bottom can has sufficient volume to accommodate both a first and second component (see annotated fig.3 above the bottom can has sufficient volume to accommodate both the first and second component).
Regarding claim 9, as best understood based on 112 issue identified above, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein after a first component has been poured into the bottom can, the top of the inverted top can is recoupled to form a shaker with the bottom can (see annotated fig.3 above when a first component stored in top can has been poured into the bottom can it can be recoupled to form a shaker).
Regarding claim 10, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said bottom can comprises a short filled bottom can (see annotated fig.3 above the bottom can be filled to desired amount).
Regarding claim 17, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said top can comprises generally non-parallel side walls, and wherein said bottom can comprises generally parallel side walls (see annotated fig.3 above for the top can with non-parallel side walls and bottom can with parallel side walls).
Regarding claim 18, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said top can comprises a first shape, and wherein said bottom can comprises a dissimilar shape (see annotated fig.3 where two cans have different shapes).
Regarding claim 19, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said top can comprises a generally conical shape and wherein said bottom can comprises a generally cylindrical shape (fig.3 above shows the top can with generally conical shape and bottom can with cylindrical shape).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 1 above, Hammerle (US8584882B2) and further in view of Carino (US20110204048A1)
Regarding claim 3 the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook further teaches wherein said top can is smaller than said bottom can (see annotated fig.3 above for the top can being smaller than the bottom can) wherein said top can comprises a first component, and wherein said bottom can comprises a second component (see annotated fig.3 above for the top can comprising first component and bottom can comprise a second component). Estabrook does not teach wherein said top can has a volume of about 100 mL, and wherein said bottom can has a volume of about 12 ounces.
Hammerle does teach wherein said top can has a volume of about 100 mL (fig.4-5 shows that alcohol can be present in the first can 22 and max volume of 150 mL which includes the limitation of 100 mL; and the bottom can 21 has a max limit of 250 ml). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the size/volume of top can of Estabrook to be 100ml in order to fit desired amount of liquid in the can. To modify the size/volume of the can into the claimed can would entail a mere change in size of the components and yield only predictable results. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Estabrook as modified right above does wherein said bottom can has a volume of about 12 ounces.
Carino teaches wherein bottom can has a volume about 12 ounces (fig.1 the bottom piece 105 has volume of .4liters which is equivalent to 13.5 ounces). 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 bottom can disclosed by references right above by adding the teaching of bottom can with volume of 12 ounces as disclosed by Carino in order to have sufficient volume in the bottom can to mix the two liquids together and shake it well. To modify the size/volume of the can into the claimed can would entail a mere change in size of the components and yield only predictable results. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 1 above and further in view of Carino (US20110204048A1).
Regarding claim 5, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook does teach inverted top can (see annotated fig.3 above). Estabrook does not teach wherein the top can comprises a sanitary and safety lining.
Carino does teach wherein the top can comprises a sanitary and safety lining (that food storage containers are commonly lined with BPA-0005; according to applicant specs,0019, that sanitary and safety lining which is typically BPA ) 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 first can disclosed by Hammerle by adding the teaching of BPA lining as disclosed by Carino in order to protect against harmful substances. “Epoxy resins containing BPA are used to coat the inside of beverage cans, as well as aluminum water bottles not made from stainless steel.” (0005, Carino)
Regarding claim 15, the references as applied to claim 5 above discloses all the limitations substantially claimed. Estabrook as modified in claim 5 further teaches wherein said sanitary and safety lining comprises BPA (Carino teaches that common household items are lined with BPA-0005).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 1 above and further in view of Averill (US20110240589A1).
Regarding claim 14, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook does not teach wherein said bottom can comprises a nitrogen blanket.
Averill does teach wherein said bottom can comprises a nitrogen blanket (fig.1 shows the bottle 16 which can comprise nitrogen blanket). 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 bottom can disclosed by Hammerle by adding the teaching of nitrogen blanket as disclosed by Averill in order to limit the degradation of alcohol in the container due to exposure to oxygen once the bottle/can is open. “However, once a wine bottle has been opened, the quality of the wine quickly degrades due to exposure to oxygen…. Another solution is to introduce a blanket of inert gas over an open wine by squirting it into the bottle though an elongate tube connected to the nozzle of a pressurized can of nitrogen or argon.” (0010-0011, Averill)
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over references as applied to claim 1 above and further in view of Cavella (US20010022305A1).
Regarding claim 16, the references as applied to claim 1 above discloses all the limitations substantially claimed. Estabrook does not teach wherein said bottom can comprises aluminum, and wherein said top can comprises tin.
Cavella does teach wherein said bottom can comprises aluminum, and wherein said top can comprises tin (fig.4 shows the top can bottom cans 11’s that can be made from aluminum and tin). 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 material of the bottom and top can disclosed by Estabrook by adding the teaching of aluminum and tin material as disclosed by Cavella in order to give the cans the necessary properties of can formation including high strength, light weight, thin-walled capability, corrosion resistance, etc. “This soda or pop can is further generally manufactured of a metal such as aluminum, tin, steel, or other well known metals having the necessary properties of can formation including high strength, light weight, thin walled capability, corrosion resistance, etc.” (0004, Cavella)
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 and 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4,7-14,16-18 of U.S. Patent No.12,221,266. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Patent ‘266 (claim 1) discloses the claimed subject matter.
Regarding claim 2, Patent ‘266 (claim 2) discloses the claimed subject matter.
Regarding claim 3, Patent ‘266 (claim 1) discloses the claimed subject matter.
Regarding claim 4, Patent ‘266 (claim 3) discloses the claimed subject matter.
Regarding claim 5, Patent ‘266 (claim 4) discloses the claimed subject matter.
Regarding claim 6, Patent ‘266 (claim 7) discloses the claimed subject matter.
Regarding claim 7, Patent ‘266 (claim 8) discloses the claimed subject matter.
Regarding claim 8, Patent ‘266 (claim 9) discloses the claimed subject matter.
Regarding claim 9, Patent ‘266 (claim 10) discloses the claimed subject matter.
Regarding claim 10, Patent ‘266 (claim 11) discloses the claimed subject matter.
Regarding claim 14, Patent ‘266 (claim 12) discloses the claimed subject matter.
Regarding claim 15, Patent ‘266 (claim 13) discloses the claimed subject matter.
Regarding claim 16, Patent ‘266 (claim 14) discloses the claimed subject matter.
Regarding claim 17, Patent ‘266 (claim 16) discloses the claimed subject matter.
Regarding claim 18, Patent ‘266 (claim 17) discloses the claimed subject matter.
Regarding claim 19, Patent ‘266 (claim 18) 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.
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/PRINCE PAL/Examiner, Art Unit 3735