DETAILED ACTION
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 5, 2026 has been entered.
Response to Arguments
2. Applicant's arguments filed May 5, 2026 have been fully considered but they are not persuasive.
Applicant argues that Palvoelgyi apertures (7 and 8) are as described are not open drainage passages through which liquid can pass.
Examiner notes the preamble of each of independent claims 1, 9, and 15 uses the transitional phrase “comprising” which defines an open-ended claim scope which does not exclude additional elements. See MPEP 2111.03. Palvoelgyi teaches the claimed structural relationship within the four corners of the document, that being the container including a lid lip with a lid lip aperture, and a body lip with a body lip aperture, with the bolts being additional, non-excluded elements. The container of Pavoelgyi is capable of use in the intended manner, i.e. in a pre-assembled stage before insertion of the bolts, which would allow drainage through the holes. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). See further explanation in the grounds of rejection below.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 1-6, 8-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0030358 (Palvoelgyi) in view of JP 2006-199072 (Shinohara).
Regarding claim 1, Palvoelgyi teaches a storage container comprising:
a body (2) including:
a plurality of sidewalls, the plurality of sidewalls including a first sidewall, a second sidewall, a third sidewall, and a fourth sidewall collectively forming a periphery that defines an opening into an interior of the body (not taught);
a body lip (4 and 6) extending from each of the first sidewall, the second sidewall, the third sidewall, and the fourth sidewall, the body lip surrounding the opening defined by the periphery of the plurality of sidewalls (not taught); and
a body lip aperture (8) formed in the body lip; and
a lid (1) configured to engage the body cover an opening into an interior of the body, the lid including:
a lid surface configured to extend over the opening when the lid is engaged to the body;
a lid lip (3 and 5) surrounding a periphery of the lid surface and configured to abut the body lip when the lid is engaged to the body; and
a lid lip aperture (7) formed in the lid lip, the lid lip aperture and the body lip aperture configured to receive a locking device (receives bolt 14) and allow a liquid to pass therethrough to restrict the liquid from entering the interior of the body (capable of use in the intended manner, either by using the pre-assembled container before the bolts are inserted, or by removing the bolts from within the apertures after assembly, and thus permitting drainage therethrough; see statement of capability of use in the intended manner), the lid lip aperture smaller than the body lip aperture (explicitly taught in the Abstract, and seen in Figure 2 as an upturned flange).
Palvoelgyi as applied fails to teach:
a plurality of sidewalls, the plurality of sidewalls including a first sidewall, a second sidewall, a third sidewall, and a fourth sidewall collectively forming a periphery that defines an opening into an interior of the body;
the body lip extending from each of the first sidewall, the second sidewall, the third sidewall, and the fourth sidewall, the body lip surrounding the opening defined by the periphery of the plurality of sidewalls.
Shinohara, analogous to fuel tanks formed of two bolted halves (body 42 and lid 20 connected by bolts 26), teaches it is known to form such tanks in a rectangular shape (see translation para. [0031]) comprising a plurality of sidewalls including a first sidewall (54b), a second sidewall (54c), a third sidewall (54d), and a fourth sidewall (54e) collectively forming a periphery that defines an opening into an interior of the body (see interior of body 42 in Figure 2), whereby the body lip (55) extends from each sidewall, and surrounds the opening defined by the periphery of the plurality of sidewalls (clearly shown in Figure 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Palvoelgyi, forming it in a rectangular shape including first through fourth sidewalls and surrounded by the flange taught therein, as taught by Shinohara, motivated by the use of a suitable container shape, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 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”. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See MPEP 2144.04 (IV)(B).
Regarding capability of use in the intended manner, Examiner notes the preamble of each of independent claims 1, 9, and 15 uses the transitional phrase “comprising” which defines an open-ended claim scope which does not exclude additional elements. See MPEP 2111.03. Palvoelgyi teaches the claimed structural relationship within the four corners of the document, that being the container including a lid lip with a lid lip aperture, and a body lip with a body lip aperture, with the bolts being additional, non-excluded elements. The container of Pavoelgyi is capable of use in the intended manner, i.e. in a pre-assembled stage before insertion of the bolts, which would allow drainage through the holes. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Additionally, see MPEP 2112.01(I):
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated "such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate." The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp.v.D. F. Newfield Co., 7 F.Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
Additionally, see MPEP 2114(II):
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
Regarding claim 2, wherein the first sidewall and the second sidewall each extend between a first end and a second end and from a distal end to a proximal end (Shinohara 54b and 54c extend lengthwise from the left end to the right end in Figure 2), the fourth sidewall connecting the first end of the first sidewall and the first end of the second sidewall, the third sidewall connecting the second end of the first sidewall and the second end of the second sidewall (see 54d and 54e connecting sidewall ends in Shinohara Figure 2).
Regarding claim 3, the first sidewall and the second sidewall are longer than the third sidewall and the fourth sidewall (54b and 54c are longer than 54d and 54e as seen in Shinohara Figure 2).
Regarding claim 4, the body lip includes a first body lip surface and a second body lip surface (the body lip 4 and 6 of Palvoelgyi, which would extend annularly like flange 55 in Shinohara Figure 2, has a first, upper surface, and a second, lower surface).
Regarding claim 5, the body lip aperture is formed in the first body lip surface (see location of aperture 8 extending completely through surface 6 in Palvoelgyi Figure 1).
Regarding claim 6, the lid lip includes a first lid lip surface and a second lid lip surface (the lid lip 3 and 5 of Palveolgyi which would extend annularly like flange 55 in Shinohara Figure 2, has a first, upper surface, and a second, lower surface).
Regarding claim 8, each of the plurality of sidewalls includes a body indication surface, and the lid includes one or more lid indication surfaces (each of the surfaces is capable of bearing indicia or other indicating information, and are thus read as comprising “indication surfaces”).
Regarding claim 9, Palvoelgyi teaches a body (2) of a storage container, the body comprising:
a first sidewall, a second sidewall, a third sidewall, and a fourth sidewall forming an interior (not taught);
a body lip (4 and 6) surrounding a periphery formed by the first sidewall, the second sidewall, the third sidewall, and the fourth sidewall (not taught); and
a body lip aperture (8) formed in the body lip, the body lip aperture is configured to receive a locking device (receives bolt 14) and allow a liquid to pass therethrough to restrict the liquid from entering the interior (capable of use in the intended manner, either by using the pre-assembled container before the bolts are inserted, or by removing the bolts from within the apertures after assembly, and thus permitting drainage therethrough; see statement of capability of use in the intended manner), the body lip aperture larger than a lid lip aperture (7; explicitly taught in the Abstract, and seen in Figure 2 as an upturned flange) formed in a lid lip (3 and 5) surrounding a periphery of a lid surface (surface of lid 1), the lid surface configured to cover an opening into the interior when a lid is engaged with the body (see closed configuration of Figure 2).
Palveolgyi as applied fails to teach a first sidewall, a second sidewall, a third sidewall, and a fourth sidewall forming an interior;
the body lip extending from each of the first sidewall, the second sidewall, the third sidewall, and the fourth sidewall, the body lip surrounding the opening defined by the periphery of the plurality of sidewalls.
Shinohara, analogous to fuel tanks formed of two bolted halves (body 42 and lid 20 connected by bolts 26), teaches it is known to form such tanks in a rectangular shape (see translation para. [0031]) comprising a plurality of sidewalls including a first sidewall (54b), a second sidewall (54c), a third sidewall (54d), and a fourth sidewall (54e) collectively forming a periphery that defines an opening into an interior of the body (see interior of body 42 in Figure 2), whereby the body lip (55) extends from each sidewall, and surrounds the opening defined by the periphery of the plurality of sidewalls (clearly shown in Figure 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Palvoelgyi, forming it in a rectangular shape including first through fourth sidewalls and surrounded by the flange taught therein, as taught by Shinohara, motivated by the use of a suitable container shape, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 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”. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See MPEP 2144.04 (IV)(B).
Regarding capability of use in the intended manner, Examiner notes the preamble of each of independent claims 1, 9, and 15 uses the transitional phrase “comprising” which defines an open-ended claim scope which does not exclude additional elements. See MPEP 2111.03. Palvoelgyi teaches the claimed structural relationship within the four corners of the document, that being the container including a lid lip with a lid lip aperture, and a body lip with a body lip aperture, with the bolts being additional, non-excluded elements. The container of Pavoelgyi is capable of use in the intended manner, i.e. in a pre-assembled stage before insertion of the bolts, which would allow drainage through the holes. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Additionally, see MPEP 2112.01(I):
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated "such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate." The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp.v.D. F. Newfield Co., 7 F.Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
Additionally, see MPEP 2114(II):
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
Regarding claim 10, wherein the first sidewall and the second sidewall each extend between a first end and a second end and from a distal end to a proximal end (Shinohara 54b and 54c extend lengthwise from the left end to the right end in Figure 2), the fourth sidewall connecting the first end of the first sidewall and the first end of the second sidewall, the third sidewall connecting the second end of the first sidewall and the second end of the second sidewall (see 54d and 54e connecting sidewall ends in Shinohara Figure 2).
Regarding claim 11, the body lip includes a first body lip surface and a second body lip surface (the body lip 4 and 6 of Palvoelgyi, which would extend annularly like flange 55 in Shinohara Figure 2, has a first, upper surface, and a second, lower surface).
Regarding claim 12, the body lip aperture is formed in the first body lip surface or the second body lip surface (see location of aperture 8 extending completely through surface 6 in Palvoelgyi Figure 1).
Regarding claim 13, each of the first sidewall, the second sidewall, the third sidewall, and the fourth sidewall includes a body indication surface (each of the surfaces is capable of bearing indicia or other indicating information, and are thus read as comprising “indication surfaces”).
Regarding claim 14, the body lip aperture is a slot (Examiner notes the body lip aperture 8 of Palveolgyi is read as a slot, and no additional physical structure is read into the term beyond that which is claimed).
Regarding claim 15, Palvoelgyi teaches a lid (1) configured to cover an opening (by way of bolted connection) into an interior of a body of a storage container (2), the opening collectively formed by a first sidewall, a second sidewall, a third sidewall, and a fourth sidewall (not taught), the lid comprising:
a lid surface configured to extend over the opening (not taught);
a lid lip (3 and 5) surrounding a periphery of the lid surface (not explicitly taught); and
a lid lip aperture (7) formed in the lid lip and configured to receive a locking device (receives bolt 14) and allow a liquid to pass therethrough to restrict the liquid from entering the interior of the body (capable of use in the intended manner, either by using the pre-assembled container before the bolts are inserted, or by removing the bolts from within the apertures after assembly, and thus permitting drainage therethrough; see statement of capability of use in the intended manner), the lid lip aperture smaller than a body lip aperture (8) formed in the body forming the interior of the storage container (lid lip aperture 8 is explicitly stated to have a smaller diameter than body lip aperture 7 in the Abstract).
Palveolgyi as applied fails to teach:
the opening collectively formed by a first sidewall (54b), a second sidewall (54c), a third sidewall (54d), and a fourth sidewall (54e);
a lid surface (43) configured to extend over the opening; and
the lid lip (55) surrounding a periphery 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 Palvoelgyi, forming it in a rectangular shape including first through fourth sidewalls and surrounded by the flange taught therein, as taught by Shinohara, motivated by the use of a suitable container shape, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 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”. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In reDailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See MPEP 2144.04 (IV)(B).
Regarding capability of use in the intended manner, Examiner notes the preamble of each of independent claims 1, 9, and 15 uses the transitional phrase “comprising” which defines an open-ended claim scope which does not exclude additional elements. See MPEP 2111.03. Palvoelgyi teaches the claimed structural relationship within the four corners of the document, that being the container including a lid lip with a lid lip aperture, and a body lip with a body lip aperture, with the bolts being additional, non-excluded elements. The container of Pavoelgyi is capable of use in the intended manner, i.e. in a pre-assembled stage before insertion of the bolts, which would allow drainage through the holes. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Additionally, see MPEP 2112.01(I):
I. PRODUCT AND APPARATUS CLAIMS — WHEN THE STRUCTURE RECITED IN THE REFERENCE IS SUBSTANTIALLY IDENTICAL TO THAT OF THE CLAIMS, CLAIMED PROPERTIES OR FUNCTIONS ARE PRESUMED TO BE INHERENT
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433.
See also In re Ludtke, 441 F.2d 660, 169 USPQ 563 (CCPA 1971) (Claim 1 was directed to a parachute canopy having concentric circumferential panels radially separated from each other by radially extending tie lines. The panels were separated "such that the critical velocity of each successively larger panel will be less than the critical velocity of the previous panel, whereby said parachute will sequentially open and thus gradually decelerate." The court found that the claim was anticipated by Menget. Menget taught a parachute having three circumferential panels separated by tie lines. The court upheld the rejection finding that applicant had failed to show that Menget did not possess the functional characteristics of the claims.); Northam Warren Corp.v.D. F. Newfield Co., 7 F.Supp. 773, 22 USPQ 313 (E.D.N.Y. 1934) (A patent to a pencil for cleaning fingernails was held invalid because a pencil of the same structure for writing was found in the prior art.).
Additionally, see MPEP 2114(II):
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE APPARATUS CLAIM FROM THE PRIOR ART
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.).
Regarding claim 16, the lid lip includes a first lid lip surface and a second lid lip surface (the lid lip 3 and 5 of Palveolgyi which would extend annularly like flange 55 in Shinohara Figure 2, has a first, upper surface, and a second, lower surface).
Regarding claim 17, the lid lip aperture is formed in the first lid lip surface (see Palvoelgyi Figure 1 shows aperture 7 formed in the lid lip upper surface).
Regarding claim 18, the lid lip aperture is formed in the second lid lip surface (lid lip aperture 7 extends fully through the lip and thus is also formed in the lower surface as seen in Palvoelgyi Figure 1).
Regarding claim 20, the lid includes one or more lid indication surfaces (any of the lid surfaces are capable of bearing indicia or other indicating information, and are thus read as comprising “indication surfaces”).
5. Claims 7 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2002/0030358 (Palvoelgyi) in view of JP 2006-199072 (Shinohara) to claims 6 and 15, and further in view of US 1,105,212 (Sellers).
Regarding claim 7, Palvoelgyi in view of Shinohara as applied above teaches that the lid lip aperture (7) is formed in the first lid lip surface (see location of 7 within 3 and 5 in Figure 1), but fails to teach that it is chamfered.
Examiner notes Palvoelgyi Figure 1 shows where the lid aperture (unlabeled in the Figure but seen within lip 5) receives the upturned lip (11) therethrough.
Sellers, analogous to inserting elements through apertures, teaches it is known to provide a chamfer (A2) in order to receive a cylindrical collar of a cover (B).
Examiner notes it is obvious and well-known to provide chamfers to apertures in order to facilitate insertion of objects therethrough.
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 lip aperture of Palvoelgyi, providing a chamfer as taught by Sellers, motivated by the benefit of facilitating the insertion of the body lip aperture upturned lip, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 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”.
Should Applicant disagree, Examiner takes Official Notice in accordance with MPEP 2144.03 that it would have been obvious to provide such chamfer, motivated by the benefit of facilitating insertion.
Regarding claim 19, the lid lip aperture is a slot (Examiner notes the lid lip aperture 7 of Palveolgyi is read as a slot, and no additional physical structure is read into the term beyond that which is claimed) but fails to teach the aperture is chamfered at an angle.
Examiner notes Palvoelgyi Figure 1 shows where the lid aperture (unlabeled in the Figure but seen within lip 5) receives the upturned lip (11) therethrough.
Sellers, analogous to inserting elements through apertures, teaches it is known to provide a chamfer (A2) in order to receive a cylindrical collar of a cover (B).
Examiner notes it is obvious and well-known to provide chamfers to apertures in order to facilitate insertion of objects therethrough.
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 lip aperture of Palvoelgyi, providing a chamfer as taught by Sellers, motivated by the benefit of facilitating the insertion of the body lip aperture upturned lip, having a predictable outcome absent a teaching of an unexpected result. See KSR International Co. v. Teleflex Inc. et al. No. 04-1350, 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”.
Should Applicant disagree, Examiner takes Official Notice in accordance with MPEP 2144.03 that it would have been obvious to provide such chamfer, motivated by the benefit of facilitating insertion.
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.
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 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.
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.
/JAMES N SMALLEY/Examiner, Art Unit 3733
Prosecution Insights