PATENT
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
Application No.:
Group Art Unit:
Filing Date:
Examiner:
Applicant:
Title:
Attorney Docket:
Certificate of Transmission Under 37 C.F.R. § 1.8
Mailstop: Amendment
I hereby certify that this correspondence is being deposited
electronically with the U.S. Patent and Trademark Office using the
United States Patent and Trademark Office’s EFS-Web system on
MONTH DATE, 2013.
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Signature
Dear Sir:
_______________
Printed Name
AMENDMENT UNDER 37 C.F.R. §1.111
Sir or Madam:
In response to the Office Action mailed
, the following
amendments and remarks are respectfully submitted in connection with the aboveidentified application.
Amendments to the Claims begin on page 2 of this Amendment.
Remarks begin on page 3 of this Amendment.
Claims
remaining after
Amendment
Highest number
previously paid for
Present
extra
Total
20
-
20
=
0
Independent
3
-
3
=
0
Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
AMENDMENTS TO THE CLAIMS
The following is a complete, marked-up listing of revised claims with a status
identifier in parenthesis, underlined text indicating insertions, and strike through
and/or double-bracketed text indicating deletions.
LISTING OF CLAIMS
1- 20 (New, Previously Presented, or Amended)
Page 2
Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
REMARKS
Favorable reconsideration of this application, in light of the preceding
amendments and following remarks, is respectfully requested. Claims 11-20 are
pending in this application. Support for the amended claims may be found in at least
paragraph [0008], [0011], [0012], [0020], the originally presented claims, and FIGS. 13 of the originally filed application. No new matter is added.
Examiner Interview
On January 1, 2013, Applicant held a telephone interview with Examiner
NAME. During the interview, Applicant and the Examiner discussed the claimed
invention, the office action dated DATE, and the cited art.
Specifically, Applicant proposed several claim amendments to overcome the art.
Examiner NAME stated an amendment to the claims such as recited in the new
independent claims may overcome the current rejections. However, no agreement as to
specific language of the claims was made.
Applicant appreciates the time and effort Examiner Kim made in preparation for
the Examiner interview.
Rejections under 35 U.S.C. § 112
Claims 1, 5, 6, and 10 are rejected under 35 U.S.C § 112, second paragraph. To
expedite prosecution and without conceding to the Examiner’s positions, claims 1, 5,
6, and 10 have been amended in accordance with the Examiner’s suggestions.
Accordingly, the claims currently meet the requirements of 35 U.S.C. 112, second
paragraph, and withdrawal of this rejection is respectfully requested.
Page 3
Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
Rejections under 35 U.S.C. § 102
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by
Reference 1. Applicants respectfully traverse this rejection for the reasons detailed
below.
For an invention to be anticipated, it must be demonstrated that each and every
element of the claimed invention is present in the "four corners" of a single prior art,
either expressly described therein or under the principle of inherency. Lewmar Marine
Inc. v Barient Inc., 3 USPQ2d 1766, 1767-1768 (Fed. Cir. 1987) (emphasis added).
The absence from a prior art reference of any claimed element negates anticipation.
Kloster Speedsteel AB v. Crucible, Inc., 230 USPQ 81, 84 (Fed. Cir. 1986).
Embodiments as claimed are directed towards what embodiments teach. See
page 2 of the originally filed specification.
To expedite prosecution and without conceding to the Examiner’s positions,
Applicant has amended independent claim 1 to recite, inter alia, “Claim limitation.”
For at least the following reasons, Reference 1 fails to anticipate each limitation as
recited by the independent claims.
Reference 1 discloses what reference 1 discloses. See Reference 1, col. 1, lines
7-10. In reference 1, what reference 1 discloses. See Reference 1, col. 1, lines 15-18.
Specifically, in reference 1 x,y,z because reasons why. See Reference 1, col. 1, lines 2228. Thus, reason why in Reference 1 x,y,z. See Reference 1, col. 4, lines 38-45.
Accordingly, Reference 1 discloses a system that requires x,y,z. On to other
hand, the amended independent claim 1 recites “claim limition.”
At least because Reference 1 fails to teach or suggest each and every limitation
of claim 1, claim 1 as amended is patentable over the references of record. The other
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Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
independent claims are allowable at least for somewhat similar reasons as claim 1, as
well as on their own merits. Further, the dependent claims are allowable at least by
virtue of their dependency from an allowable base claim, and on their own merit.
Accordingly, Applicant respectfully requests withdrawal of this rejection and
allowance of the respective claims.
Rejections under 35 U.S.C. § 103
Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Reference 1, US Patent Publication Application Number in view of Reference 2 US
Patent Publication Application Number. Applicants respectfully traverse this rejection
for the reasons detailed below.
When determining whether a claim is obvious, an examiner must make “a
searching comparison of the claimed invention – including all its limitations – with the
teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis
added). Thus, “obviousness requires a suggestion of all limitations in a claim.” CFMT,
Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka,
490 F.2d 981, 985 (CCPA 1974)). Moreover, as the Supreme Court recently stated,
“there must be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added)).
In sum, it remains well-settled law that obviousness requires at least a
suggestion of all of the features in a claim. See In re Wada and Murphy, citing CFMT,
Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and In re Royka, 490
F.2d 981, 985 (CCPA 1974)) (emphasis added).
In embodiments, high level overview of your patent application.
Page 5
Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
To expedite prosecution and without conceding to the Examiner’s positions,
Applicant has amended independent claim 1 to recite, inter alia:
Copy and paste important claim elements, with important parts bolded if
necessary. Emphasis added
For at least the following reasons, the cited art fails to meet these limitations.
Reference 1 discloses what reference 1 discloses. Accordingly, reference 1 is
x,y,z, and cannot meet “claim limitation” as recited in amended independent claim 11.
On page 4 of the Office Action, the Examiner admits that Reference 1 does not
meet “claim limitations” as received by previous independent claim 1, and uses
Reference 2 to meet these limitations.
To expedite prosecution, and without conceding to the Examiner’s positions,
applicant has amended independent claim 1 to recite “claim limitations.” For at least
the following reasons, these limitations are not met by the cited art.
Reference 2 discloses x,y,z. More specifically x,y,z in reference 2 is 1,2,3.
Therefore, reference 2 cannot meet “claim limitation” as recited in amended claim 1.
In view of the above, the cited art, alone or in combination cannot disclose each
and every limitation as recited in amended independent claim 1, and independent
claim 1 as recited is allowable. Further, amended independent claim 11 is allowable at
least for somewhat similar reasons as independent claim 1, as well as on its own
merits. The dependent claims are allowable at least by virtue of their dependency from
an allowable base claim. Accordingly, withdrawal of this rejection is respectfully
requested.
The other dependent claims stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reference 1, in view of References 2-4. Applicants respectfully
traverse this rejection for the reasons detailed below.
Page 6
Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
In view of the above, the cited art, alone or in combination cannot disclose each
and every limitation as recited in the independent claims, and the independent claims
as amended are allowable. The dependent claims are allowable at least by virtue of
their dependency from an allowable base claim. Accordingly, withdrawal of this
rejection is respectfully requested.
NEW CLAIMS
To expedite prosecution and without conceding to the Examiner’s positions,
Applicant has cancelled the previous pending claims and written new claims 11-20.
For at least the following reasons, the cited art fails to disclose each and every
limitation as received by new independent claim 1.
When determining whether a claim is obvious, an examiner must make “a
searching comparison of the claimed invention – including all its limitations – with the
teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995) (emphasis
added). Thus, “obviousness requires a suggestion of all limitations in a claim.” CFMT,
Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka,
490 F.2d 981, 985 (CCPA 1974)). Moreover, as the Supreme Court recently stated,
“there must be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (emphasis added)).
To render claim 1 unpatentable, however, the Office must do more than merely
“consider” each and every feature for this claim. Instead, the asserted combination of
the patents to Smith and Jones must also teach or suggest each and every claim
feature. See In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974) (emphasis added)
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Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
(to establish prima facie obviousness of a claimed invention, all the claim features
must be taught or suggested by the prior art). Indeed, as the Board of Patent Appeal
and Interferences has recently confirmed, a proper obviousness determination
requires that an Examiner make “a searching comparison of the claimed invention –
including all its limitations – with the teaching of the prior art.” See In re Wada and
Murphy, Appeal 2007-3733, citing In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995)
(emphasis in original). Further, the necessary presence of all claim features is
axiomatic, since the Supreme Court has long held that obviousness is a question of
law based on underlying factual inquiries, including … ascertaining the differences
between the claimed invention and the prior art. Graham v. John Deere Co., 383 U.S. 1,
148 USPQ 459 (1966) (emphasis added). Indeed, Applicant submits that this is why
Section 904 of the MPEP instructs Examiners to conduct an art search that covers
“the invention as described and claimed.” (emphasis added). Lastly, Applicant
respectfully directs attention to MPEP § 2143, the instructions of which buttress the
conclusion that obviousness requires at least a suggestion of all of the features of a
claim, since the Supreme Court in KSR Int’l v. Teleflex Inc. stated that “there must be
some articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
In sum, it remains well-settled law that obviousness requires at least a
suggestion of all of the features in a claim. See In re Wada and Murphy, citing CFMT,
Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) and In re Royka, 490
F.2d 981, 985 (CCPA 1974)) (emphasis added).
Independent claim 11 recites, inter alia:
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Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
a first projection configured to linearly extending from a central
fastening rivet of a container to a first point adjacent to a circumference
of the container;
a second projection configured to linearly extending from the
central fastening rivet of the container to a second point adjacent to the
circumference of the container;
an arc configured to extend from the first point adjacent to the
circumference of the container to the second point adjacent to the
circumference of the container, the arc including a concave indention
disposed at the peak of the arc;
a body defined by the first projection, the second projection, and
the arc, the body being a flat surface being configured to cover a surface
of the container disposed adjacent to the body, wherein information is
configured to be disposed on a side of the body positioned adjacent to the
surface of the container; and
a fastener coupled to the body and the central fastening rivet, the
fastener being configured to secure the body to the container.
In embodiments, the length of the tab extends across the top surface of a
beverage can to permit information to be presented on a surface of the tab. See para.
[0010] of the originally filed specification. Due to independent claim 11 reciting that the
tab includes “an arc configured to extend from the first point adjacent to the
circumference of the container to the second point adjacent to the circumference of the
container” in combination with “a body defined by the first projection, the second
projection, and the arc, the body being a flat surface being configured to cover a
surface of the container disposed adjacent to the body,” claimed embodiments
maximize a surface area of the tab where information may be presented, which is not
met by the cited art for the following reasons.
The
cited
art:
Kaneko,
Rohr,
and
Robertson
US
Patent
Publication
2005/0258175 all include voids or holes to assist in using a tab to illustrate an object.
Kaneko includes an orifice on an inner portion of a tab to define a heart. Rohr
discloses “a tab coated with a lacquer or other pigment to form a colored tab, and the
promotional image 30 is formed by forming a void 50 in the tab and laser etching of
the color adjacent the void in a predetermined pattern arrangement 52 to reveal the
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Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
base metal.” See Rohr para. [0022]. Accordingly, the tab in Rohr uses voids to show
different colored patterns of surface of a base metal. Robertson discloses a can may
have a “recessed area 20 within can end 14, to further facilitate the sliding of a finger
by a user under tab 12 and the gripping thereof.” See Robertson, para. [0023]. Further,
each image as depicted in Robertson includes the recessed (cut out) portion of the tab
to further illustrate the shape of an object. Accordingly, the tabs in Robertson use the
recessed portion to further define a particular shape. Therefore, the cited art fails to
disclose “the body being a flat surface being configured to cover a surface of the
container disposed adjacent to the body” as recited in new independent claim 11.
In view of the above, the cited art, alone or in combination cannot disclose each
and every limitation as recited in new independent claim 11, and independent claim
11 as recited is allowable. Further, new independent claim 21 is allowable at least for
somewhat similar reasons as independent claim 11, as well as on its own merits. The
dependent claims are allowable at least by virtue of their dependency from an
allowable base claim.
Page 10
Application No. XX/XXX,XXX
Attorney Docket No. NAME1010
Customer ID: Your Customer ID WITH USPTO
CONCLUSION
In view of the above remarks and amendments, the Applicants respectfully
submit that each of the pending objections and rejections has been addressed and
overcome, placing the present application in condition for allowance. A notice to that
effect is respectfully requested. If the Examiner believes that personal communication
will expedite prosecution of this application, the Examiner is invited to contact the
undersigned.
Should there be any outstanding matters that need to be resolved in the
present
application,
the
Examiner
is
respectfully
requested
to
contact
the
undersigned, at the telephone number of the undersigned below.
If necessary, the Commissioner is hereby authorized in this, concurrent, and
future replies, to charge payment or credit any overpayment to Deposit Account No.
number for any additional fees required under 37 C.F.R. § 1.16 or under 37 C.F.R. §
1.17; particularly, extension of time fees.
Respectfully submitted,
Pierson Intellectual Property, LLC
BY:
Gene Pierson, Reg. No. 67,359
4330 Bull Creek Rd, #3205
Austin, Texas 78731
(703) 598-9443
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