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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,434,042 B2; and claims 1-17 of U.S. Patent No. 12,312,135 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each claim a cup with an integrated folding lid foldably connected to a body of the cup; said lid being formed via a plurality of foldable sections that together substantially cover a top of the cup.
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) 1-9 and 12-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chan et al. (US 2019/0077536 A1; hereinafter Chan).
Regarding claims 1-2, 5-6, 8, 12, 15-16, and 18, Chan discloses a spill resistant disposable cup comprising a center portion defining a sidewall (12), the sidewall extending between a first end (14) and a second end (16), the first end of the sidewall attached to the second end of the sidewall along a seam (24); a circular bottom portion extending from the center portion defining a base (16; see Fig. 2), the circular bottom portion configured to extend from the sidewall in a first direction; a plurality of integrated folding lid sections 34’/32/30/34”), each of the plurality of integrated folding lid sections separated from the center portion by a fold line (34a/32b/32a/30a/30b/34a), wherein the plurality of integrated folding lid sections cooperate to form a lid when folded along their respective fold lines (see Figures 1-4); and a cutout (Examiner considers the “cutout” to be the gap between 30 and 32; and Examiner considers the gap capable of receiving a straw, stirrer, or utensil) defined through the lid configured to provide access to contents of the cup when the plurality of integrated folding lid sections cooperate to form the lid (see Par. 0025-0027), wherein the center portion comprises a spout adjacent to the cutout (80), wherein the spout extends above a fold line adjacent to the spout (see Fig. 6; Examiner notes that the spout is defined by element 80 which extends above the fold lines attaching lid portions to the body portion of the cup).
Regarding claims 3 and 13, Chan discloses a cup further comprising a piece of material (80) extending from at least one of the plurality of integrated folding lid sections, wherein the piece of material at least partially covers the cutout (see Par. 0044).
Regarding claims 4 and 14, Chan discloses a cup wherein the spout is positioned to extend perpendicular to a surface defined by the lid formed by the plurality of integrated folding lid sections (see Fig. 7).
Regarding claims 7 and 17, Chan discloses a cup wherein the fold line comprises one or more of a perforation line, a creased line, a ridged line, a solid score line, or a dashed score line (see Par. 0040).
Regarding claims 9 and 19, Chan discloses a cup wherein at least one tab extends upward from a first integrated folding lid section of the plurality of integrated folding lid sections, and wherein a slit is defined in a second integrated folding lid section of the plurality of integrated folding lid sections (see Par. 0029-0031).
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) 10-11 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chan in view of Herman (US 8505807 B2).
Regarding claims 10-11 and 20, Chan discloses the claimed invention except for graphical designs printed on the cup for identifying locations of fold lines. Herman teaches a foldable drinking vessel comprising at least one graphical design printed thereon for identifying a location of a fold line (Col 5 lines 10-20). It would have been obvious to one of ordinary skill in the art at the time of Applicant’s filing to modify Chan’s cup to provide graphical indicia instructing a user on which fold lines to fold first in order to use the container properly, as taught by Herman.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER R DEMEREE whose telephone number is (571)270-1982. The examiner can normally be reached 9:00 am - 5:00 pm, Monday through Friday.
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, NATHAN J NEWHOUSE can be reached at (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER R DEMEREE/Primary Examiner, Art Unit 3734
