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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/589,897, 63/499,426, 63/387,250, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed applications fail to provide support for a can end with a check slot as recited. Accordingly, claims 5-6, 20-31 are not entitled to the benefit of the prior applications.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-6, 20-28, 30-31 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claim 5, there is no support in the original disclosure for the predetermined depth defining a thickness of material beneath the check slot configured to inhibit propagation of a fracture along the score wherein the panel remains coupled to the can end during opening and thus it is considered new matter.
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 5-6, 20-28, 30-31 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 5, “the panel” lacks antecedent basis and it is unclear what it is referring to.
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) 5, 21-25 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 2015/0329238 to Chasteen et al. (Chasteen).
Regarding claim 5, Chasteen discloses a can end (10, Fig 1) comprising a score (30) concentrically disposed within an outer rim (18) of the can end, the score comprising a check slot (110) comprising a predetermined depth, wherein the predetermined depth is at least 25% less than depth of the score (30) (€0092, €0109, €0114), the predetermined depth defines a thickness of material beneath the check slot (110) configured to inhibit propagation of a fracture along the score wherein the panel remains coupled to the can end during opening since it has the structure as recited.
Regarding claim 21, Chasteen further discloses the length of the check slot no more than .26 inches (€0114).
Regarding claim 22, Chasteen further discloses score residual of the score (30) is at least .0037 inches (€0091).
Regarding claim 23, Chasteen further discloses score residual of the score (30) is no more than .004 inches (€0091).
Regarding claim 24, Chasteen further discloses check slot residual at least .0054 inches (€0091, €0109).
Regarding claim 25, Chasteen further discloses check slot residual no more than .006 inches (€0091, €0109).
Claim(s) 5-6, 26-28 is/are rejected under 35 U.S.C. 102a1 as being anticipated by US 2015/0129595 to Kittler et al. (Kittler).
Regarding claim 5, Kittler discloses a can end (14) comprising a score (40) concentrically disposed within an outer rim (25) of the can end, the score comprising a check slot (45a) comprising a predetermined depth, wherein the predetermined depth is at least 25% less than depth of the score (40) (€0039), the predetermined depth defines a thickness of material beneath the check slot (110) configured to inhibit propagation of a fracture along the score wherein the panel remains coupled to the can end during opening since it has the structure as recited.
Regarding claim 6, Kittler further discloses the score comprising at least two evenly distributed check slots (45a, 45b).
Regarding claim 26, Kittler further discloses check slot is a first check slot (45a) at a first location in the score (40) and score (40) further comprises a second check slot (45b) at a second location in the score (40) separated from the first location (Fig 6).
Regarding claim 27, Kittler further discloses first check slot (45a) and second check slot (45b) separated by a predetermined angular position (Fig 6).
Regarding claim 28, Kittler further discloses predetermined angular position is at least 90 degrees as measured from center of the score (Fig 6).
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) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chasteen in view of US 2015/0175300 to Frank.
Regarding claim 20, Chasteen teaches the can end of claim 5 but does not teach the recited length. However, Frank discloses a can end with a check slot (144) that can have varying length to prove advantageous (€0051). One of ordinary skill in the art would have found it obvious to change the length of the Chasteen check slot to that as recited in order to adjust for different advantages since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chasteen in view of US 2023/0106536 to Shiotani et al. (Shiotani).
Regarding claims 30-31, Chasteen discloses the can end of claim 5 but does not teach the score (30) defining a closed path or being circular. However, Shiotani discloses a can end (1, Fig 1) and in particular discloses score (31) defining a closed path and being a circular shape (€0021). One of ordinary skill in the art would have found it obvious to change the shape of the Chasteen score such that it was circular as suggested by Shiotani in order to facilitate rupture.
Response to Arguments
Applicant's arguments filed 5/15/2026 have been fully considered but they are not persuasive. Applicant argues that the claims are entitled to the benefit of the earlier filed ‘897 application because the discloses of the earlier filed application describes check slot residual. This is not persuasive because the disclosure is silent regarding the claimed subject matter of a check slot having a predetermined depth at least 25% less than depth of the score.
Applicant further argues that support for the amendments can be found in paragraphs 0149-0151. However, the cited paragraphs are silent regarding what a predetermined depth is defined as recited in the claims.
Applicant argues that none of the prior art teach the quantified relationship between the check slot depth and the depth of the score and the claims require the depth of the check slot to be at least 25% less than depth of the score. This is not persuasive because Chasteen discloses such a relationship in (€0092, €0109, €0114) and Kittler discloses such a relationship in (€0039).
In response to applicant's argument that the Kittler check slot is configured to pause rupture propagation and is not configured to maintain attachment of the panel to the can end during opening or to prevent shearing into parent material, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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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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/ROBERT POON/ Examiner, Art Unit 3735
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