DETAILED ACTION
Priority
1. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
2. Applicant's election with traverse of Species II in the reply filed on April 8, 2026 is acknowledged. The traversal is on the grounds that:
a) the unity of invention standard applies to claims, not species.
b) the amended claims require a different analysis.
This is not found persuasive because the unity of invention standard is only met when there is a special technical feature which defines a contribution which each invention makes over the prior art. See PCT rule 13.2. Examiner notes the international invention must relate to “one invention only or to a group of inventions so linked as to form a single general inventive concept” (see MPEP 1850(I)). Applicant has presented several inventions (e.g. embodiments) which are only linked by the inventive concept of a lid having a smaller lid which is torn away to create an opening smaller than the opening of the container on which the lid is applied. In the instant case, claim 1, the only independent claim, is rejected under 35 U.S.C. 102(a)(1) (see grounds of rejection below) and thus the claims lack a special technical feature which makes a contribution over the prior art.
The requirement is still deemed proper and is therefore made FINAL.
3. Claims 5 and 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on April 8, 2026.
The subject matter of claim 5, comprising inclined part (19), is drawn to the embodiment of Figure 16A. The subject matter of claim 13, comprising a recessed portion (85), is drawn to the embodiment of Figure 41.
The subject matter of claim 14, comprising a protruding portion,
The subject matter of claim 15, comprising a recessed portion (3I) and a convex portion (3J), is drawn to the embodiment of Figure 13.
Claim Objections
4. Applicant is advised that should claim 19 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Examiner notes that the difference between the terms “assembly” in claim 19 and “combination” in claim 20 is insignificant, and does not result in a sufficiently distinct apparatus claim scope.
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 1, 2, 4, 6-8, 10, 12, 19, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H10-16956 (Ragawa).
Regarding claim 1, Ragawa teaches a lid configured to be joinable to a container having an opening (2) at an upper end and an edge forming an outer periphery of the opening (the container rim where 2 points defines the outer edge of the opening), the lid comprising
a base portion having a joining area corresponding portion that corresponds to an area joined to the container along the edge of the container and a small opening (18) with an opening area smaller than the opening of the container (clearly seen in Figure 6), a small lid portion (19) for opening and closing the small opening, and a hinge portion (unlabeled; seen in Figure 6) connecting the base portion and the small lid portion, wherein
the small lid portion is configured to be rotatable with respect to the base portion with the hinge portion as an axis (compare movement between Figures 4 and 6), and
in a plan view of the base portion, the base portion has an eave portion outside an opening edge of the small opening, lid (see annotated Figure 6 below).
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Regarding claim 2, the eave portion is a margin portion satisfying the following conditions in the plan view of the base portion;
the margin portion is inside from an inner edge of the joining area corresponding portion and outside of the opening edge of the small opening in the base portion; and
a line segment connecting the margin portion and the hinge portion passes through the opening edge of the small opening (see annotated Figure 6 below).
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Regarding claim 4, the margin portion is formed such that the inner edge and the outer edge of the margin portion are non-concentric (Examiner notes Figure 6 clearly shown the inner and outer edge of the margin portion where element 3 points comprises inner and outer edges which are not concentric).
Regarding claim 6, a knob portion (16) is on an upper surface side of the small lid portion.
Regarding claim 7, the knob portion has a tab member (16b), and the tab member is joined to the upper surface side of the small lid portion (at 17).
Regarding claim 8, when the small lid portion closes the small opening, a part of the tab member intersects the opening edge of the small opening in the plan view of the base portion (see plan view Figure 1 showing the tab 16b having a diameter larger than the width of the small opening edge 15, thus intersecting it).
Regarding claim 10, the lid further comprising an extending portion on the outer periphery of the base portion (downwardly and inwardly extending portion of the lid periphery; see annotated Figure 2 below).
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Regarding claim 12, the hinge portion is formed between the extending portion and the tip of the small lid portion (Examiner notes the annotated image above showing that the hinge is located roughly under the opening defined by tab 16b, and this location is between the tip of the small lid portion where 15 points in the Figure, and the extending portion identified by the Examiner’s annotation).
Regarding claim 19, wherein the lid is joined to the container (see lid 3 joined to container 1 in at least Figure 2).
Regarding claim 20, Ragawa teaches a combination comprising the lid (3) according to claim 1 and the container (1).
Claim Rejections - 35 USC § 103
7. 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.
8. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP H10-16956 (Ragawa) as applied above under 35 U.S.C. 102(a)(1) to claim 1.
Regarding claim 3, Ragawa fails to teach that the area of the margin portion is smaller than the area of the small opening in the plan view of the base portion.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the lid of Ragawa, forming the margin portion area to be smaller than the small opening area, motivated by an obvious change in size of the prior art, having a predictable outcome absent a teaching of an unexpected result. A change in size, absent a teaching of an unexpected result, is within ordinary skill in the art. See MPEP 2144.04(IV)(A):
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package “of appreciable size and weight requiring handling by a lift truck” where held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) (“mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled.” 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
9. Claims 9, 11, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP H10-16956 (Ragawa) as applied above under 35 U.S.C. 102(a)(1) to claims 1, 6, and 10, in view of US 4,253,582 (Shields).
Regarding claims 9 and 11, Ragawa as applied above fails to teach a holding structure forming portion that holds the small lid portion in a state where the small lid portion is rotated with respect to the base portion with the hinge portion as an axis to open the small opening,and
a claw portion is on the knob portion, wherein
the base portion comprises a receiving portion at a position contacting the claw portion,and
the claw portion and the receiving portion form the holding structure forming portion.
Shields, analogous to closures with small dispensing openings, teaches a holding structure forming portion that holds the small lid portion in a state where the small lid portion is rotated with respect to the base portion with the hinge portion as an axis to open the small opening, and
a claw portion (27) is on the knob portion (not taught), wherein
the base portion comprises a receiving portion (32) at a position contacting the claw portion,and
the claw portion and the receiving portion form the holding structure forming portion (see Figure 5).
Examiner notes that while Shields teaches the claw portion (27) adjacent to a knob portion (25), it is within ordinary skill in the art to couple these items through an obvious change in location of parts, as long as the coupling does not interfere with the primary purpose of either element.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the lid of Ragawa, providing a hook and receiving portion as taught by Shields, motivated by the benefit of retaining the small lid portion in the open positon, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”. It would have furthermore been obvious to locate the hook portion on the knob portion, because such is a mere change in the location of the working parts of the invention, having a predictable outcome absent a teaching of an unexpected result. A rearrangement of the parts of the prior art is obvious, absent a teaching of an unexpected result. See MPEP 2144.04(VI)(C). In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
Regarding claim 16, Ragawa as applied above fails to teach that a connection structure connecting the outer periphery of the small lid portion and the opening edge of the small opening, wherein the connection structure is a fragile portion more fragile than the small lid portion, and when the small lid portion rotates relative to the base portion about the hinge portion, the fragile portion is destroyed.
Shields, analogous to closures with dispensing openings, teaches a connection structure (24) connecting the outer periphery of the small lid portion (23) and the opening edge of the small opening (33), wherein the connection structure is a fragile portion more fragile than the small lid portion (see Figure 3 showing the hinge to comprise a material weakness), and when the small lid portion rotates relative to the base portion about the hinge portion, the fragile portion is destroyed (Examiner notes rotation inherently creates creasing on the compression side of the hinge, which is read as destruction, and is capable of being removed to completely destroy the hinge since the hinge comprises a thinner section of material relative to the rest of the lid surface).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the hinge of Ragawa, forming the hinge to have a reduced thickness as taught by Shields, motivated by the benefit of promoting bending at a specific location, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Regarding claim 17, the fragile portion has a combination structure of a connecting portion and a notch, and/or a half-cut structure (the reduced thickness is read as a “half cut structure”).
10. Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over JP H10-16956 (Ragawa) as applied above under 35 U.S.C. 102(a)(1) to claim 1, in view of US 2024/0076105 (Kuo).
Regarding claim 18, Ragawa fails to teach that the lid is formed of paper-based material.
Kuo, analogous to lids with dispensing openings, teaches it is known to form a lid having a small hinged lid portion (112) to cover a small opening (defined by score 111), of pulp.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the lid of Ragawa of a paper-based material, such as pulp as taught by Kuo to be suitable for hinged small opening lids, motivated by the use of a recyclable material, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al., 550 U.S. 2007 at 13, lines 22-25 which states, “When a work is available in one field of endeavor, design incentives ...can prompt variations of it, either in the same field or a different one. Furthermore, see id. at 13, lines 27-31 which states “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES N SMALLEY whose telephone number is (571)272-4547. The examiner can normally be reached M-F 9:00 am to 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES N SMALLEY/Examiner, Art Unit 3733
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