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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 9/8/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 and 12-21 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without structural limitations which cause air to be prevented from entering the teat volume through the second passage when the feeding bottle device is positioned substantially horizontally, the first passage is below a level of the liquid, and at least a portion of the second passage is above the level of the liquid, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Claim 1 is drawn to a partitioning component. The only structural limitations for the partitioning component in claim 1 are: the partitioning component comprises a first passage and a second passage.
Claim 18 is drawn to a feeding bottle device. The claim includes the following structural limitations: a container component defining a container volume therein; a teat component defining a teat volume therein; and a partitioning component configured to separate the teat volume from the container volume when the feeding bottle device is assembled, and comprising a first passage and a second passage comprising at least one through hole.
The rest of the limitations in these claims are drawn to intended use or functional limitations which do not have any structural reasoning behind them. What the claims are lacking is the “why”.
What is it specifically about the physical structure of the second passage’s at least one through hole that makes it so that the surface tension of an air bubble will not allow the passage of air into or out of the teat volume up to a predefined pressure difference? Is it because of the number of holes in the second passage? Is it because of the size of the holes? Is it because of a physical property of the liquid being used with the component? Etc.
What is it specifically about the physical structure of the partitioning component that makes it so air is prevented from entering the teat volume through the second passage when the feeding bottle device is positioned substantially horizontally, the first passage is below a level of the liquid, and at least a portion of the second passage is above the level of the liquid. Is it because of the number of holes in the second passage? Is it because of the size of the holes? Is it because of a physical property of the liquid being used with the component? Etc.
Claims 12 and 19 state “air is prevented from entering the teat volume through the second passage until the level of the liquid falls below the first passage”. Again, what the claims are lacking is the “why”.
What is it specifically about the physical structure of the second passage causes air to be prevented from entering the teat volume through the second passage until the level of the liquid falls below the first passage? Is it because of the number of holes in the second passage? Is it because of the size of the holes? Is it because of a physical property of the liquid being used with the component?
The claims have been examined below as best the Examiner can understand.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 17, 20, and 21 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 currently states “… the air bubble prevents passage of air into the teat volume from the container volume when the feeding bottle is positioned substantially horizontally during feeding and liquid drawn from the teat volume during feeding is replaced with liquid drawn from the container volume.” It is unclear how the Applicant’s partitioning component does not allow at least some air through the partitioning component from the container volume. In order for this fact pattern to be true, the container would need to have air and the teat volume would have to be full of liquid with an air bubble being located in the teat volume. If the air is coming in from the container volume, then the only way that it would appear to be prevented from entering the teat volume is if the air bubble in the teat volume is thoroughly connected to the filter. Based on what the Applicant has previously described and argued, it’s not clear how the air bubble can prevent air from coming in from the bottle to the teat volume. What is the physical structural requirement of the partitioning component that makes it so that the air bubble prevents passage of air into the teat volume from the container volume when the feeding bottle is positioned substantially horizontally during feeding and liquid drawn from the teat volume during feeding is replaced with liquid drawn from the container volume?
Claims 20 and 21 recite the limitation "the teat volume remains filled with liquid". There is insufficient antecedent basis for this limitation in the claim. Claims 1 and 18, which claims 20 and 21 respectively depend from do not have any limitation drawn to filling the teat volume with liquid.
Claims 20 and 21 state “the teat volume remains filled with liquid while the first passage remains below the level of the liquid”. It is unclear as to why this happens. What about the physical structure of the partitioning component that causes the teat volume to remain filled with liquid while the first passage remains below the level of the liquid? Is it because of the number of holes in the second passage? Is it because of the size of the holes? Or, is it because of a physical property of the liquid being used with the component? How does the liquid in the bottle not return to an equalized state when the bottle is horizontal? Based on this lack of clarity, claims 20 and 21 are unable to be examined further such that prior art is able to be applied.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-9, 12-16, 18, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sheu (US 10799426).
Regarding Claim 1
Sheu teaches a partitioning component for a feeding bottle device (below – Fig. 2), the feeding bottle device comprising a teat component (20) defining a teat volume therein and a container component defining a container volume therein, the teat component being attachable to the container component (40), the partitioning component (30) being configured to separate the teat volume from the container volume when the feeding bottle device is assembled, wherein the partitioning component comprises a first passage (show below) allowing a passage of air and liquid between the container volume and the teat volume and a second passage (shown below) comprising at least one through hole (331) such that the surface tension of an air bubble will not allow the passage of air into or out of the teat volume up to a predefined pressure difference (Col. 2, Ln, 50 – Col. 3, Ln. 54).
[AltContent: textbox (Second passage)][AltContent: ][AltContent: textbox (Plane containing the first
and second passages)][AltContent: ][AltContent: textbox (First passage)]
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Sheu does not specifically teach the partitioning component is configured such that air is prevented from entering the teat volume through the second passage when the feeding bottle device is positioned substantially horizontally, the first passage is below a level of the liquid, and at least a portion of the second passage is above the level of the liquid.
However, based on the fact that the partitioning component of Sheu teaches all the structural limitations claimed, it would appear obvious to one of ordinary skill in the art that the partitioning component of Sheu is more than capable of preventing air from entering the teat volume through the second passage when the feeding bottle device is positioned substantially horizontally, the first passage is below a level of the liquid, and at least a portion of the second passage is above the level of the liquid, inasmuch as Applicant shows. See MPEP 2173.05(g).
Regarding Claim 2
Sheu teaches the first passage is provided eccentrically on the partitioning component (30), as can be seen above.
Regarding Claim 3
Sheu teaches the first passage is provided near or on an edge of the partitioning component (30), as can be seen above.
Regarding Claim 4
Sheu teaches at least the second passage comprises a hydrophilic material (Col. 3, Ln. 15-19).
Regarding Claim 5
Sheu teaches all the limitations of claim 1 as shown above. Sheu teaches that based on the size of the openings (331) that air bubbles will not be allowed to pass through the openings up to a certain pressure difference. Sheu does not specifically teach the second passage comprises at least one through hole having a diameter of not more than 0.2 mm.
It would have been obvious to a person of ordinary skill in the art to experiment with the diameter of the opening in order to achieve an opening which does not allow an air bubble to pass through up to a certain pressure difference. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. See MPEP 2144.05.
As such, it would have been obvious to have an opening with a diameter of no more than 0.2mm, as long as the opening does not allow an air bubble to pass through up to a certain pressure difference (as required by Sheu) since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. MPEP § 2144.04.
Regarding Claim 6
Sheu teaches the partitioning component (30) is formed as a porous membrane, as can be seen above.
Regarding Claim 7
Sheu teaches a surface of the partitioning component (30) in the second passage is configured to collect liquid to ease the flow of liquid (Col. 3, Ln. 15-19).
Regarding Claim 8
Sheu teaches a surface of the partitioning component (30) is provided at an angled or curved shape, as can be seen above.
Regarding Claim 9
Sheu teaches the first passage and the second passage are formed integrally with the partitioning component, as can be seen above.
Regarding Claim 12
Sheu teaches the first passage is formed as an opening, as can be seen above.
While Sheu does not specifically teach air is prevented from entering the teat volume through the second passage until the level of the liquid falls below the first passage, based on the fact that the partitioning component of Sheu teaches all the structural limitations claimed, it would appear obvious to one of ordinary skill in the art that the partitioning component of Sheu is more than capable of preventing air from entering the teat volume through the second passage until the level of the liquid falls below the first passage, inasmuch as Applicant shows. See MPEP 2173.05(g).
Regarding Claim 13
Sheu teaches a feeding bottle device comprising: a teat component (20) defining a teat volume therein, a container component (40) defining a container volume therein, and a partitioning component (30) according claim 1, the teat component, the container component, and the partitioning component being attachable to each other along a contact area (22/31/401).
Regarding Claim 14
Sheu teaches the at least one through hole (331) has a diameter such that the surface tension of an air bubble will not allow the passage of air into or out of the teat volume up to the predefined pressure difference (Col. 3, Ln. 43-54).
Regarding Claim 15
Sheu teaches at least part of the partitioning component comprises a hydrophilic material (Col. 3, Ln. 15-19).
Regarding Claim 16
Sheu teaches the surface tension of the air bubble will not allow the passage of air into the teat volume from the container volume up to the predefined pressure difference during feeding (Col. 2, Ln, 50 – Col. 3, Ln. 54).
Regarding Claim 17
Sheu teaches the air bubble prevents passage of air into the teat volume from the container volume when the feeding bottle is positioned substantially horizontally during feeding and liquid drawn from the teat volume during feeding is replaced with liquid drawn from the container volume, inasmuch as Applicant shows (Col. 2, Ln, 50 – Col. 3, Ln. 54).
Regarding Claim 18
Sheu teaches a feeding bottle device (Fig. 2) comprising: a container component (40) defining a container volume therein, a teat component (20) defining a teat volume therein; and a partitioning component (30) being configured to separate the teat volume from the container volume when the feeding bottle device is assembled, and comprising a first passage (show above) allowing a passage of air and liquid between the container volume and the teat volume and a second passage (shown above) comprising at least one through hole (331) such that the surface tension of an air bubble will not allow the passage of air into or out of the teat volume up to a predefined pressure difference (Col. 2, Ln, 50 – Col. 3, Ln. 54).
Sheu does not specifically teach the partitioning component is configured such that air is prevented from entering the teat volume through the second passage when the feeding bottle device is positioned substantially horizontally, the first passage is below a level of the liquid, and at least a portion of the second passage is above the level of the liquid.
However, based on the fact that the partitioning component of Sheu teaches all the structural limitations claimed, it would appear obvious to one of ordinary skill in the art that the partitioning component of Sheu is more than capable of preventing air from entering the teat volume through the second passage when the feeding bottle device is positioned substantially horizontally, the first passage is below a level of the liquid, and at least a portion of the second passage is above the level of the liquid, inasmuch as Applicant shows. See MPEP 2173.05(g).
Regarding Claim 19
Sheu teaches the first passage is formed as an opening, as can be seen above.
While Sheu does not specifically teach air is prevented from entering the teat volume through the second passage until the level of the liquid falls below the first passage, based on the fact that the partitioning component of Sheu teaches all the structural limitations claimed, it would appear obvious to one of ordinary skill in the art that the partitioning component of Sheu is more than capable of preventing air from entering the teat volume through the second passage until the level of the liquid falls below the first passage, inasmuch as Applicant shows. See MPEP 2173.05(g).
Response to Arguments
Applicant's arguments filed 9/8/2026 have been fully considered but they are not persuasive.
While Applicant has amended the claims to include functional limitations that appear to be shown in Fig. 3, the claims still lack limitations drawn to the physical structure that causes the partitioning component to behave in the way that the Applicant claims that it does. As the partitioning component and feeding bottle device of Sheu meets all the physical structural limitations claimed, it would appear obvious to one of ordinary skill in the art that the partitioning component and feeding bottle device of Sheu would be more than capable of meeting all the functional limitations claimed. See MPEP 2173.05(g).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER CASTRIOTTA whose telephone number is (571)270-5279. The examiner can normally be reached Monday - Friday 9am-5pm.
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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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/JENNIFER CASTRIOTTA/Examiner, Art Unit 3733
/NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733 21 September 2026
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