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 .
Information Disclosure Statement
The Office is hereby sua sponte waiving the express language requirement of 37 CFR 1.63(b)(3), where the oath or declaration was filed prior to 01 June 2008. The express language of 37 CFR 1.63(b)(3) is waived only to the extent necessary such that an oath or declaration containing the “material to examination” or “in accordance with § 1.56(a)” language, or both, will be accepted as acknowledging the applicant’s duty to disclose information “material to patentability” as defined in 37 CFR 1.56. Applicants are advised that, notwithstanding the preceding waiver, an applicant who has not disclosed information that is material to patentability as defined in 37 CFR 1.56, because it was believed that the information was not “material to the examination,” should disclose such information in order to discharge the applicant’s duty of disclosure as required by 37 CFR 1.56, and should file a supplemental oath or declaration acknowledging that duty of disclosure.
The individuals covered by 37 CFR 1.56 cannot assume that the examiner
of a particular application is necessarily aware of other applications which are “material to patentability” of the application in question, but must instead bring such other applications to the attention of the examiner. See Dayco Prod., Inc. v. Total Containment, Inc., 329 F.3d 1358, 1365-69, 66 USPQ2d 1801, 1806-08 (Fed. Cir. 2003). For example, if a particular inventor has different applications pending in which similar subject matter but patentably indistinct claims are present that fact must be disclosed to the examiner of each of the involved applications. Similarly, the prior art references from one application must be made of record in another subsequent application if such prior art references are “material to patentability” of the subsequent application. See Dayco Prod., 329 F.3d at 1369, 66 USPQ2d at 1808. See MPEP 2001.06(b).
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 and 4-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Giovannini et al. (US 9,114,912) which in figures 4a-4d discloses the following claimed invention:
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In re claim 1: A container tamper detection capsule, comprising: an upper cover member UCM comprising a top through-opening TTO; an axial displacement member ADM comprising an alignment member AM and an insertion member IM; and a lower cover member LCM comprising a bottom through-opening BTO; characterized in that wherein the upper cover member UCM is coupled to the lower cover member LCM, forming an assembly that defines a cavity within; and the axial displacement member ADM is arranged in the cavity of the assembly, the insertion member IM being fitted to the lower cover member LCM and said alignment member AM inserted into the top through-opening TTO of the upper cover member UCM; wherein, in operation, the axial displacement member ADM is axially displaceable relative to the assembly from a first closed position (fig.4a), in which a face F of the alignment member AM is aligned with a top surface TS of the upper cover member UCM, to a second open, fixed and irreversible position (fig.4c), in which the insertion member IM is axially blocked in the lower cover member LCM and said face F of the alignment member AM is recessed with respect to said top surface TS of the upper cover member UCM (see figure 4d above of Giovannini et al.).
In re claim 2: the insertion member IM and the lower cover member LCM comprise clip-type and indentation-type axial retention means ARM (see figure 4d above of Giovannini et al.).
In re claim 4: A container lid CL comprising the capsule of claim 1 and a stopper member SM, wherein the container tamper detection capsule and the stopper member form a container lid (see figure 4d above of Giovannini et al.).
In re claim 5:the stopper member SM is made of a material selected from the group consisting of plastic, wood, cork, aluminum, composites and their combinations thereof (see col.3, ll.8-19 of Giovannini et al.).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Giovannini et al. (US 9,114,912). Giovannini et al. discloses the claimed invention as discussed above with the exception of specifically disclosing the following claimed limitations:
In re claim 3: the upper cover and lower cover members are made of a material selected from the group consisting of plastic, wood, cork, composites and combinations thereof (see col.3, ll.8-19 of Giovannini et al.).
It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to use one of the claimed materials in order to provide the desired material cost or material properties for a reliable closure. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Furthermore, it was notoriously well-known in the art at the time the invention was effectively filed to use materials such as plastic, wood, cork, composites and combinations thereof in the closure art. For evidence, see the references listed in the attached PTO-892.
Allowable Subject Matter
Claims 6-13 appear to define over the available prior art and therefore allowed.
Response to Arguments
Applicant's arguments filed 06/25/2026 have been fully considered but they are not persuasive regarding claim 1. The prior art as applied reads on the claimed invention, the Applicant appears to be interpreting a different embodiment of the prior art that is not being relied on in the current rejection. The Figure as shown above of Giovannini et al. structurally discloses all the claimed limitations. The applied prior art may be different than the applicant’s disclosed invention, however, the applicants claimed invention is disclosed by the prior art. The law of anticipation does not require that the reference teach what the appellant is claiming but only that the claims on appeal “read on” something disclosed in the reference. See Kalman v. Kimberly Clark Corp., 713 F.2d 760, 218 USPQ 781 (Fed. Cir. 1983). Where functional limitations are recited for the structure set forth in the claim, the reference must also include structure which is capable of performing the recited function in order for the reference to be properly anticipatory. See In re Mott, 557 F.2d 266, 194 USPQ 305 (CCPA 1977).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO A GRANO whose telephone number is (571)270-3927. The examiner can normally be reached M-F 7:00-3:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (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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/ERNESTO A GRANO/Primary Examiner, Art Unit 3735
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