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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,912,470 (hereinafter the ‘470 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference signs mentioned in the description: “196” designating an open position of the lid structure (col. 6:9-10, et al.); and “127” designating an exterior wall of the shaker structure (col. 9:18, et al.).
The drawings are objected to because, in Fig. 2, reference number “186” does not appear to be consistent with the specification or with Figs. 3A-B. The specification states: “As further shown in Fig. 3A, in the closed position 198, the second magnet 182 located within the pivoting member 216 of the pivoting cap 124, is rotated 135⁰ from the starting position based on axis 186 representing 0⁰ of rotation …” (col. 7:46-50). However, Fig. 2 uses reference number “186” to designate an annular component of the lid structure (not an axis).
Corrected drawing sheets in compliance with 37 CFR 1.173(b)(3) are required in reply to the Office action to avoid abandonment of the application. Amendments in reissue applications are different from standard utility application practice and are governed by 37 CFR 1.173. In particular, 37 CFR 1.173(b)(3) reads, with emphasis:
Drawings. One or more patent drawings shall be amended in the following manner: Any changes to a patent drawing must be submitted as a replacement sheet of drawings which shall be an attachment to the amendment document. Any replacement sheet of drawings must be in compliance with § 1.84 and shall include all of the figures appearing on the original version of the sheet, even if only one figure is amended. Amended figures must be identified as "Amended," and any added figure must be identified as "New." In the event that a figure is canceled, the figure must be surrounded by brackets and identified as "Canceled." All changes to the drawing(s) shall be explained, in detail, beginning on a separate sheet accompanying the papers including the amendment to the drawings.
(i) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as "Annotated Marked-up Drawings" and must be presented in the amendment or remarks section that explains the change to the drawings.
(ii) A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
The objection to the drawings will not be held in abeyance. See also MPEP 1453.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed “mixing portion.” See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). The examiner suggests amendment of the claims to replace “mixing portion” with --shaker section--, consistent with the patent disclosure. See, e.g., col. 9:10-10:11.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because it fails to specifically identify at least one error which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414.
The reissue declaration includes the following general statement:
Patent No. 11,912,470 is partially inoperative because the issued claims do not recite overlooked aspects of the disclosure. New claims 21-40 each claim overlooked aspects of the disclosure.
This error statement is not appropriate because new claims 21-40 do not recite an overlooked aspect of the disclosure. In a reissue application, claims to overlooked aspects are “[c]laims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution” (emphasis added). In this case, new claims 21-40 include an additional feature that was disclosed as an optional feature of the originally claimed embodiment, but omit features of that same originally claimed embodiment. Specifically, new claims 21-40 include the additional feature of “a mixing portion,” which appears to the examiner to correspond to the originally disclosed shaker structure (122, Figs. 1A-D). The original disclosure stated that “a shaker structure 122 [] can be optionally integrated in the assembled beverage system 100, as shown in Fig. 1A, or it can be left out, as shown in Fig. 1E” (col. 4:44-46). At the same time, new claims 21-40 also omit the first and second magnets that were part of the same disclosed embodiment. The omission of the magnets of the disclosed embodiment raises the issue of failure to meet the original patent requirement, as discussed below in the rejection under 35 USC 251. Because claims 21-40 do not describe an invention that was disclosed in the original patent as a separate invention, embodiment, or species, claims 21-40 are not directed to overlooked aspects of the patent disclosure. See MPEP § 1412.01, subsection III.
Claims 21-40 are broadening reissue claims which omit several features of the original patented claims.1 For a reissue application that seeks to broaden the scope of the patent claims, the error statement must identify a specific patented claim that the application seeks to broaden and at least a single word, phrase, or expression in the original claim, and how it renders the original patent wholly or partly inoperative or invalid. See MPEP § 1414, subsection II.
Claim Rejections - 35 USC § 251 - Reissue Declaration
35 U.S.C. 251(a) states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 1-40 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC § 251 - Original Patent
Claims 21-40 are rejected under 35 U.S.C. 251 for not claiming subject matter directed to the invention disclosed in the original patent. MPEP § 1412.01 explains that “[t]he reissue claims must be for the same invention as that disclosed as being the invention of the original patent” (emphasis original). This section of the MPEP provides the following guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent”:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
Further, the Federal Circuit addressed the “original patent” requirement of 35 U.S.C. 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). The Federal Circuit adopted the Supreme Court’s explanation from U.S.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.2 that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.’ [U.S.S. Industrial Chemicals, 315 U.S.] at 676. ‘[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Id.” Antares at 1359; see also id. at 1362. The Federal Circuit further stated that although wording in section 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
The new reissue claims in this application are directed to a lid assembly for a beverage container comprising a lid portion and a mixing portion (claims 21-30), and a beverage system comprising the lid portion and the mixing portion (claims 31-40). The new reissue claims omit a first and second magnets in a body portion and in the pivoting cap of the lid portion. However, the original disclosure did not clearly and unequivocally disclose a separate invention including this combination of features. As originally disclosed, the invention is a “beverage system and lid with magnetic spring mechanism.” As noted in the Abstract, “beverage systems comprising a lid structure having a pivoting cap with a magnetic spring mechanism are provided.” The Summary of the invention states: “The pivoting cap configured to engage with the spout portion of the lid structure in accordance with aspects herein, comprises a magnetic spring mechanism that aids the pivoting cap to swing open when unlocked from the spout portion, as will become more apparent in the description with respect to the figures provided below” (col. 1:38-50). The disclosed magnetic spring mechanism is understood to solve the problem noted in the Background of the invention, namely, that “lids that include a leak proof mechanism[] often include a mechanism that sometimes requires both hands to operate and can thus be cumbersome to use” (col. 1:16-19). The magnetic spring mechanism of the pivoting cap is consistently described as a feature of the disclosed invention (unlike the shaker structure, which is disclosed as being optional; see col. 4:44-46). The newly claimed invention, which requires a shaker structure/mixing portion but not the disclosed magnetic spring mechanism, was not clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features and thus does not satisfy the original patent requirement.
Claim Rejections - 35 USC § 251 - Recapture
Claims 21-40 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.3 The reissue application contains claims that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP § 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Recapture Analysis: Step 1
Reissue claims 21-40 are broader in scope than patent claims 1-20.
Independent reissue claims 21 and 31 do not require the following limitations which were present in all of the patent claims:
a body portion comprising a first cavity housing a first magnet; and
a second cavity housing a second magnet (patent claims 1 and 11) or a pivoting member housing comprising a second magnet (patent claim 20);
wherein the pivoting member pivotably engages the body portion proximate to the first cavity housing the first magnet such that the first magnet and the second magnet are in close proximity to each other, wherein the pivoting cap is configured to pivotably move from the closed position to an open position about an axis centered within the second cavity (claim 1) or extending through the second cavity (claim 11); or wherein the pivoting cap is pivotably engaged with the body portion about an axis extending through the pivoting member housing such that the first magnet and the second magnet are in close proximity with each other and a first magnetic force field of the first magnet is influenced by a second magnetic force field of the second magnet and vice versa (claim 20).
Therefore, step 1 of the three-step test is met for reissue claims 21 and 31 and their dependent claims.
Recapture Analysis: Step 2, first sub-step
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP § 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by the applicant in the original prosecution to make the claims allowable over the art.
During prosecution of the ‘470 patent (U.S. Application Serial No. 17/848,117), the examiner rejected claims 1-20 under 35 U.S.C. 103 as unpatentable over Kuwano et al. (U.S. Patent Pub. 2003/0136803) in view of Gaudig (U.S. Patent No. 9,919,654). See non-final Office action mailed July 12, 2023.
In response, Applicant amended each of the independent claims to recite the pivoting cap pivoting “about an axis centered within the second cavity” (claim 1), “about an axis extending through the second cavity” (claim 11), or “about an axis extending through the pivoting member housing” (claim 20). Applicant argued that the cited references fail to teach “a pivoting cap including a hood portion that interfaces with the spout of the body portion when the pivoting cap is in a closed position, and a pivoting member having a second cavity housing a second magnet, wherein the pivoting member is configured to pivotable engage the body portion proximate to the first cavity housing the first magnet such that the first magnet and the second magnet are in close proximity to each other, wherein the pivoting cap is configured to pivotable move from the closed position to an open position about an axis centered within the second cavity,” as recited in claim 1. Applicant generally argued that claims 11 and 20 were allowable based on similar limitations. See Response filed October 3, 2023, pg. 8 (emphasis original).
The examiner then issued a Notice of Allowance, allowing claims 1-20.
The limitations that were added to independent claims 1, 11, and 20, listed above, were added and argued by Applicant to distinguish the claimed invention from the prior art and are thus surrender-generating limitations (SGL).
Recapture Analysis: Step 2, second sub-step
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitations are directed to limitations relied upon by Applicant in the original application to make the claims allowable over the art.
Reissue claims 21 and 31 are broadened with respect to patent claims 1, 11, and 20 to omit a first cavity housing a first magnet, a second cavity/pivoting member housing comprising a second magnet, and the pivoting cap pivoting about an axis extending through the second cavity/pivoting member housing.
Reissue claims 21 and 31 and their dependent claims eliminate all of the details of the surrendered subject matter. Therefore, step 2 of the three-part test is met for reissue claims 21-40.
Recapture Analysis: Step 3
The third step in the recapture analysis considers the significance of claim limitations that were added and deleted during prosecution of the patent to be reissued in order to determine whether the reissue claims are materially narrowed in other respects so as to avoid the recapture rule. As set forth in MPEP § 1412.02, subsection II(C), if a surrender-generating limitation (SGL) has not been entirely eliminated from a claim in the reissue application but rather has been made less restrictive in the reissue claim, “[i]t must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture.”
In this case, reissue claims 21-40 entirely eliminate the SGL. Although reissue claims 21-40 are narrower in some aspects than the original claims (i.e., the claims as presented in the original application prior to surrender) due to the addition of a mixing portion, the mixing portion does not relate to the SGL and does not avoid impermissible recapture.
Therefore, reissue claims 21-40 improperly recapture surrendered subject matter.
Overlooked Aspects Analysis
As discussed above with respect to the Reissue Declaration, reissue claims 21-40 are not claims to overlooked aspects. The overlooked aspects inquiry is applicable when an examiner determines that the broadening aspects of a reissue claim relate to subject matter surrendered during prosecution of the original application in step 2 of the recapture analysis. See MPEP § 1412.01, subsection III.
“Overlooked aspects, however, are not merely incidental features of the originally claimed invention. Rather, they are distinct elements which ‘were never claimed and thus never surrendered.’” Ex parte Yeo, Appeal No. 2020-001116, op. at 10-11 (PTAB March 2, 2020) (quoting Youman , 679 F.3d at 1347). In this case, the patent claims would have covered a lid assembly or beverage system having the now-claimed mixing portion, since the mixing portion is disclosed as an optional feature of the patented lid structure and beverage system. See, e.g., col. 4:44-48. This is evident from the fact that patent claim 19 specifically recites a shaker structure, which is understood to correspond to the now-claimed mixing portion. Accordingly, the mixing structure is not an overlooked aspect and does not avoid the recapture rule.
Claim Rejections - 35 USC § 112(b) - Indefiniteness
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.
Claims 11-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 11, the limitation “wherein the threaded engagement section is configured to engage a base structure of the beverage system” in col. 11:46-48 renders the claim indefinite, because it is unclear whether “a base structure” refers to the same base structure mentioned in claim 11 at col. 11:40. Accordingly, it is unclear whether or to what extent this limitation further limits the threaded engagement section, which is earlier described at col. 11:43-45 as being “configured to interface with the threaded portion of the base structure.” For the purpose of examination, the limitation “wherein the threaded engagement section is configured to engage a base structure of the beverage system” in col. 11:46-48 will be interpreted as being redundant to the limitation recited in col. 11:43-45. Claims 12-19 are rejected in view of their dependency from claim 11.
Claim 20 lacks a transitional phrase linking the preamble to the body of the claim. Due to the lack of transitional phrase, it is unclear how the “system” recited in the preamble is related to the “body portion” and “pivoting cap” recited in the body of the claim. (For example, is the claim describing a system in combination with a body portion and pivoting cap, a system comprising a body portion and pivoting cap, or a system consisting of a body portion and pivoting cap?) For the purpose of examination, claim 20 will be interpreted as being directed to a magnetic spout closure system comprising a body portion and a pivoting cap.
In addition, it is unclear whether or to what extent claim 20 is limited by the term “spout” in the preamble (“magnetic spout closure system”), since no spout is recited in the body of the claims. For the purpose of examination, the term “spout” in the preamble is interpreted as referring to a context of intended use which does not further limit the structure of the claimed closure system. See MPEP § 2111.02, subsection II.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Macomber et al. (U.S. Patent Pub. 2021/0337303, hereinafter Macomber).
Regarding claim 20, Macomber discloses a magnetic closure system (Figs. 1A-2) comprising:
a body portion (housing 104) comprising a first cavity housing a first magnet (housing magnet 106; ¶ 32); and
a pivoting cap (lid 102) movable between a closed position (Figs. 1A-b) and an open position (Fig. 2), the pivoting cap (102) comprising a pivoting member housing (hinge plate 130) comprising a second magnet (hinge magnet 108), wherein the pivoting cap (102) is pivotably engaged with the body portion (104) about an axis (132, Fig. 1A) extending through the pivoting member housing (130) such that the first magnet (106) and the second magnet (108) are in close proximity with each other (i.e., in sufficiently close proximity to magnetically interact; see ¶ 32), and a first magnetic force field of the first magnet (106) is influenced by a second magnetic force field of the second magnet (108) and vice versa (¶¶ 32-36).
As noted above in the rejection under 35 U.S.C. 112(b), the term “spout” in the preamble (“magnetic spout closure system”) is interpreted as describing a context of intended use rather than a structural limitation of the claimed system. If there is any doubt regarding this interpretation of the preamble, see the alternative rejection of claim 20 under 35 U.S.C. 103 below.
Claims 21, 27, 31, and 40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee (KR 20140083585 A, hereinafter Lee).
Regarding claims 21, 27, and 31, Lee discloses a lid assembly (stopper 300 and storage means 200, Figs. 1-2) for a beverage container (independent claim 21), and a beverage system comprising the lid assembly (200, 300) and a beverage container (100) (independent claim 31), wherein the lid assembly comprises:
a lid portion (stopper 300) including a spout (drinking hole 320), a pivoting cap (cap 330), and a first threaded section (connecting portion 310; see ¶ 33): and
a mixing portion (storage means 200) having a lower end (at threads 211e; see Figs. 4a-b) and an upper end (at threads 212e) and including an exterior wall (outer cylindrical surface of storage means 200, Figs. 4a-b), an interior wall (inner cylindrical surface of storage means 200), and a bottom wall (211b) proximate the lower end (¶ 36), the exterior wall comprising a second threaded section (211e) proximate the lower end (¶ 33), the interior wall comprising a third threaded section (212e) proximate the upper end (¶ 33) and adapted to threadably engage with the first threaded section (310; ¶ 33), the bottom wall (211b) comprising a plurality of openings (211d; see Figs. 3a-b and 4b) (claim 21); and
wherein the beverage container (100) comprises a fourth threaded section (111, Fig. 2) adapted to threadably engage with the second threaded section (211e; ¶ 33) (claims 27 and 31).
Regarding claim 40, Lee further teaches the spout (drinking hole 320) is in fluid communication with an interior volume of the beverage container (100) when the lid portion (300), the mixing portion (200), and the beverage container (100) are in a threadably secured configuration (see ¶¶ 49-50, after being mixed, a drink being drinkable through the drinking hole 320).
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Eisenberg (U.S. Patent No. 11,553,813, hereinafter Eisenberg) in view of Macomber.
Regarding independent claims 1 and 11, Eisenberg discloses a lid structure (dispensing assembly 5 with cap component 51 and base component 19, Figs. 1-22) for a beverage system (claim 1), and a beverage system comprising the lid structure in combination with a base structure (main containment body 3) having a threaded portion (3c, 21, Fig. 17; col. 9:15-27) proximate an opening edge (3c) of the base structure (3) (claim 11), wherein the lid structure comprises:
a body portion including a spout (spout component 39 with spouting wall 41, Figs. 9-10) and a threaded engagement section (threading 21 of base component 19; see Figs. 17-19), wherein the threaded engagement section (21) is configured to engage the threaded portion of the base structure (col. 9:15-27); and
a pivoting cap (51) including a hood portion (depending wall of cap 51; see Fig. 18) that interfaces with the spout (39, 41) of the body portion when the pivoting cap (51) is in a closed position (see Fig. 18), and a pivoting member (pivot pin 61, Figs. 15 and 18-19), wherein the pivoting member (61) is configured to pivotably engage the body portion (see Fig. 15), wherein the pivoting cap (51) is configured to pivotably move from the closed position (Figs. 1-8) to an open position (Figs. 9-16).
Eisenberg does not teach a first cavity in the body portion housing a first magnet, and a second cavity in the pivoting member housing a second magnet. However, Macomber teaches a lid structure (Figs. 1A-2; ¶ 26) comprising a body portion (housing 104) and a pivoting cap (lid 102), wherein the body portion (104) includes a first cavity housing a first magnet (housing magnet 106; ¶ 32), and the pivoting cap (102) includes a pivoting member (hinge plate 130) having a second cavity housing a second magnet (hinge magnet 108), wherein the pivoting member (130) is configured to pivotably engage the body portion (104) proximate to the first cavity housing the first magnet (106) such that the first magnet (106) and the second magnet (108) are in close proximity to each other (i.e., in sufficiently close proximity to magnetically interact; see ¶ 32), and wherein the pivoting cap (102) is configured to pivotably move from a closed position (Figs. 1A-b) to an open position (Fig. 2) about an axis (132, Fig. 1A) centered within the second cavity (¶ 26). Because Macomber teaches that the second magnet (108) “may be coupled to the hinge plate 130 … at, along, or near the axis of rotation 132” (¶ 26), Macomber is understood to disclose that the axis (132) extends through the second cavity which houses the second magnet (108), as more broadly recited in claim 11, and to at least suggest that the axis (132) is centered within the second cavity, as more specifically recited in claim 1, i.e., when the second magnet is coupled at or along the axis of rotation (132). Macomber teaches that the first and second magnets “assist in the opening and closing of the lid” and “assist in keeping the lid 102 in an open or closed configuration” (¶ 32). Macomber is analogous art because Macomber is reasonably pertinent to the problem faced by the inventor, namely, the problem of opening and closing a lid (see, e.g., col. 1:16-19 of the ‘470 patent, describing the problem of lids which “sometimes requires both hands to operate and can thus be cumbersome to use”). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Eisenberg to include a first cavity in the body portion housing a first magnet and a second cavity in the pivoting member housing a second magnet, centered on the axis about which the pivoting cap rotates, as taught by Macomber, in order to assist in opening and closing the lid and in keeping the lid in the open or closed configuration.
Regarding claims 2 and 12, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claims 1 and 11, respectively. Macomber further teaches the first magnet (106, Figs. 1A-B) comprises a first magnetic pole segment having a first polarity and an adjoining second magnetic segment comprising a second polarity that is opposite to the first polarity (“each magnet … may have a first and second pole, such as the North and South pole,” ¶ 27), and wherein the second magnet (108) comprising a third magnetic segment comprising the first polarity and an adjoining fourth magnetic segment comprising the second polarity (i.e., north and south poles; see ¶ 27; see also ¶ 33).
Regarding claims 3 and 13, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claims 2 and 12, respectively. Macomber further teaches that in the open position, the first magnetic pole segment of the first magnet (106) faces the fourth magnetic segment of the second magnet (108) to a maximum extent (“rotation of hinge magnet 108 may return the first pole of hinge magnet 108 to being closest to housing magnet 106 when lid 102 is in the open configuration,” such that magnetic attraction between magnets 106 and 108 assists in keeping the lid open, ¶ 36).
Regarding claims 4 and 14, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claims 2 and 12, respectively. Macomber further teaches that in the closed position, the second magnet (108) comprises a first rotated orientation with respect to the first magnet (106; see Fig. 1B); and in the open position, the second magnet (108) comprises a second rotated orientation with respect to the first magnet (106; see Fig. 2, ¶ 36).
Regarding claims 5 and 15, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claims 4 and 14, respectively. Macomber further teaches that the first rotated orientation is between 100⁰ and 180⁰ rotation with respect to the first magnet (108). See angle θ in annotated Fig. 1B below.
PNG
media_image1.png
413
286
media_image1.png
Greyscale
Regarding claims 6 and 16, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claims 5 and 15, respectively. While Macomber does not explicitly disclose a specific angle of rotation, Fig. 1B of Macomber shows that the first rotated orientation of the second magnet with respect to the first magnet (108) is at least very close to 135⁰. See angle θ in annotated Fig. 1B above; compare to Applicant’s 135⁰ angle in Fig. 3A. Accordingly, one of ordinary skill in the art would reasonably infer from the disclosure of Macomber that a 135⁰ angle would be suitable for accomplishing the necessary magnetic interactions between the two magnets as the lid is opened and closed. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, when modifying Eisenberg in view of Macomber as discussed above, to orient the second magnet at a 135⁰ rotation with respect to the first magnet in the first rotated orientation, since Macomber’s teaching suggests that this would be a suitable angle to achieve the desired results with respect to magnetic interaction of the two magnets. Additionally, Applicant appears to have placed no criticality on the specific angle of 135⁰ (instead teaching that “rotation may be anywhere between 100⁰ to 180⁰ from the starting position, without departing from aspects herein,” col. 8:4-8).
Regarding claims 7-8 and 17-18, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claims 4 and 14, respectively. Macomber does not explicitly disclose the angle of the second magnet with respect to the first magnet in the second rotated orientation (i.e., in the open position). However, Macomber teaches that in the second rotated orientation of the second magnet (when the lid is in the open position), the second magnet (108) is rotated so that the first pole of the second magnet (108) is “closest to housing magnet 106” (¶ 36) so that magnetic attraction between the first and second magnets assists in keeping the lid in the open position (¶ 36). One of ordinary skill in the art would have understood the “closest” configuration of the second magnet to include an angle of 0⁰ with respect to the first magnet, so that the opposing poles of the first and second magnets directly face one another to optimize the magnetic attraction. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, when modifying Eisenberg in view of Macomber as discussed above, to orient the second magnet between 0⁰ and 44⁰ with respect to the first magnet in the second rotated orientation (claims 7 and 17), or specifically at 0⁰ with respect to the first magnet in the second rotated orientation (claims 8 and 18), in order to optimize the magnetic attraction between the first and second magnets to assist in keeping the pivoting cap in the open position.
Regarding claim 9, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claim 1. Eisenberg further teaches, in the closed position, a tab (bulge 77, Fig. 10) of the hood portion snaps into a recess of the spout (between latching portion 75 and spout wall 41) to lock the pivoting cap in the closed position (col. 13:21-25).
Regarding claim 10, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claim 1. Eisenberg further teaches the pivoting cap (51) comprises a gasket (sealing component 53, Figs. 9-10) configured to seal an opening (fluid port 7a) of the spout when the pivoting cap (51) is in the closed position (col. 12:33-38).
Regarding claim 19, the modified Eisenberg teaches the claimed invention substantially as claimed, as set forth above for claim 11. The term “shaker structure” is interpreted in view of Applicant’s disclosure to mean a structure “for mixing contents and/or infusing a liquid medium with fruits, vegetables, herbs, ice, and the like.” Abstract, ‘470 patent. Eisenberg further teaches such a shaker structure (infusion assembly 9, Fig. 17; col. 8:41-67).
Regarding claim 20, it is the examiner’s position that the term “spout” in the preamble describes a context of intended use (e.g., for closing a spout) and is not a structural limitation of the claim. Accordingly, it is the examiner’s position that claim 20 is anticipated by the magnetic closure system of Macomber, as discussed above in the rejection of claim 20 under 35 U.S.C. 102. Alternatively, if the term “spout” in the preamble is interpreted as requiring a spout as part of the closure system, then the examiner finds that Eisenberg teaches a spout closure system (including pivoting cap 51 for closing spout component 39, Figs. 9-10) comprising a body portion (with spout component 39) and a pivoting cap (51) movable between a closed position (Figs. 1-8) and an open position (Figs. 9-16), the pivoting cap (51) comprising a pivoting member housing (housing pivot pin 61, Figs. 15-16), wherein the pivoting cap (51) is pivotably engaged with the body portion about an axis extending through the pivoting member housing (see Figs. 15-16). Eisenberg does not teach a first cavity in the body portion housing a first magnet, and a second cavity in the pivoting member housing a second magnet. However, Macomber teaches a magnetic closure system (Figs. 1A-2) having these components, as set forth in detail above in the rejection of claim 20 under 35 U.S.C. 102. Macomber teaches that the first and second magnets “assist in the opening and closing of the lid” and “assist in keeping the lid 102 in an open or closed configuration” (¶ 32). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Eisenberg to include a first cavity in the body portion housing a first magnet and a pivoting member housing comprising a second magnet, with the axis about which the pivoting cap rotates extending through the pivoting member housing, as taught by Macomber, in order to assist in opening and closing the lid and in keeping the lid in the open or closed configuration.
Claims 22-24 and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Chou-Sheng (U.S. Patent No. 4,852,762, hereinafter Chou-Sheng).
Regarding claims 22-24 and 32-34, Lee teaches the claimed invention substantially as claimed, as set forth above for claims 21 and 31, respectively. Lee does not teach a strap. However, Chou-Sheng teaches a beverage container comprising a strap (14, Figs. 1-4) (claims 22 and 32) pivotably connected to opposing sides of an exterior wall (col. 1:37-39) (claims 23-24 and 33-34). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lee by pivotably connecting a strap as taught by Chou-Sheng to opposing sides of the exterior wall of the mixing portion, so that the beverage container can be conveniently carried.
Claims 25-26, 28-29, and 35-38 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Larsen (U.S. Patent Pub. 2020/0093313, hereinafter Larsen).
Regarding claims 25-26 and 35-36, Lee teaches the claimed invention substantially as claimed, as set forth above for claims 21 and 31, respectively. Lee further teaches a seal is provided between the lid portion (300) and the mixing portion (200; “a sealing member may be provided to increase the sealing force … between the cap 300 and the storage means 200,” ¶ 45), but Lee does not explicitly teach that this seal is provided by a first gasket positioned above the first threaded section. However, Larsen teaches a beverage system comprising a lid portion (2) with a first gasket (64, Fig. 8; ¶ 41) positioned above a first threaded section (Fig. 8) (claims 25 and 35), wherein the first gasket (64) is adapted to provide a seal between the lid portion (2) and a mixing portion (screen retaining assembly 16) (claims 26 and 36). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lee by providing the seal between the lid portion and the mixing portion of Lee by means of a first gasket as taught by Larsen positioned above the first threaded section of the lid portion, in order to accomplish the watertight seal desired by Lee and taught by Larsen.
Regarding claims 28-29 and 37-38, Lee teaches the claimed invention substantially as claimed, as set forth above for claims 27 and 36, respectively. Lee does not explicitly disclose that the mixing portion includes a second gasket positioned above the second threaded section. However, Larsen further teaches a second gasket (62, Fig. 8; ¶ 41) positioned above a second threaded section (26) of the mixing portion (16) (claims 28 and 37), wherein the second gasket (62) is adapted to provide a seal between the mixing portion (16) and the beverage container (thermos 4) (claims 29 and 38). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lee by including a second gasket as taught by Larsen positioned above the second threaded section of the mixing portion to provide a seal between the mixing portion and the beverage container, in order to prevent leakage of the beverage from the container.
Claims 30 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Lee in view of Eisenberg.
Regarding claims 30 and 39, Lee teaches the claimed invention substantially as claimed, as set forth above for claims 21 and 31, respectively. Lee further teaches that the pivoting cap (330, Figs. 1-2) is configured to seal an opening of the spout (320) when the pivoting cap (330) is in a closed position (Fig. 1). Lee does not explicitly disclose a gasket for this purpose. However, Eisenberg teaches a lid assembly for a beverage container comprising a pivoting cap (51), wherein the pivoting cap (51) comprises a gasket (sealing component 53, Figs. 9-10) configured to seal an opening (fluid port 7a) of a spout when the pivoting cap (51) is in the closed position (col. 12:33-38). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Lee by adding a gasket as taught by Eisenberg to the pivoting cap for sealing the opening of the spout when the pivoting cap is closed, in order to prevent leakage of the beverage from inside the container.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lin (U.S. Patent No. 8,459,468) discloses a mixing portion (Figs. 1-6) for a beverage container comprising a threaded section on an exterior wall proximate a lower end, another threaded section on an interior wall proximate an upper end, and a bottom wall comprising a plurality of apertures, cited here as further representative of the state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
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, Eileen Lillis can be reached at (571)272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:/WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
1 “A claim of a reissue application enlarges the scope of the claims of the patent if it is broader in at least one respect, even though it may be narrower in other respects. See, e.g., 37 CFR 1.175(b). A claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186 (CCPA 1958).” MPEP § 1412.03, subsection I.
2 315 U.S. 668 (1942).
3 In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984).
Prosecution Insights