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, 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submissions filed on 9 April 2025 and 31 December 2025 have been entered.
Drawings
The drawings were received on 9 April 2025. These drawings are acceptable.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, an L-shaped rim extending circumferentially from said shot glass bottom of claim 11, the rim resting on the shoulder of the bottle of claim 11, and the rim extending downward from the shot glass portion less than the stem of claim 11 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 805. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: conventional bottle, shoulder, shot glass bottom, bottom portion.
Claim Objections
Claim 11 objected to because of the following informalities: “the bottom” of line 13 should be corrected to “the shot glass bottom”. Appropriate correction is required.
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 11 and 14-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The limitation of claim 11 of “an L-shaped rim configured to extend circumferentially from said shot glass bottom” fails to comply with the written description requirement. The original specification provides that “[t]he rim 808 of the shot glass top 800 is an L-shape, extending first outward from the circumference of the bottom 806 of the shot glass top 800” and “the rim 108 is configured to extend outward from the bottom 806 of the shot glass top 800 and be of a greater circumference than the bottom 806”. There is no support for the L-shaped rim extending circumferentially from said shot glass bottom. Like the original specification, original figure 10 depicts the L-shaped rim extending radially from the shot glass bottom.
The limitation of claim 11 that “the rim rests on the shoulder of the bottle at the same time that the bottom rests on the mouth of the bottle without engaging the neck of the bottle when the stem portion is inserted into the bottle” fails to comply with the written description requirement. The original figures do not depict the rim resting on the shoulder of the bottle. The original specification does not mention the shoulder of the bottle whatsoever. Additionally, the original specification makes no mention of the negative limitation “without engaging the neck of the bottle”. Examiner notes that the figures cannot be relied upon for original disclosure of a negative limitation as the mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i).
The limitation of claim 11 that “the rim extends downward from the shot glass portion equal to or less than the stem”, while the claim further recites “an L-shaped rim”, fails to comply with the written description requirement. From the original disclosure “the rim turns downward at a substantially 90-degree angle and extends parallel to the stem 810 to at least the stem base 812”. Nowhere does the original specification describe the L-shaped rim extending downward less than the stem. Further, the original figures do not depict this.
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 11 and 14-16 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.
The limitation of claim 11 of “a conventional bottle” is led to be indefinite. It is unclear what the metes and bounds of a “conventional bottle” are. Does this require the shot glass top to be usable with a bottle of specific dimensions? The original disclosure does not mention “conventional” anywhere, nor does it recite any specific dimensions of any bottle. In light of the original disclosure and in order to apply art the claim will be interpreted as if it read bottle.
The limitation of claim 11 of “an L-shaped rim configured to extend circumferentially from said shot glass bottom” is led to be indefinite as it is unclear how the L-shaped rim could extend circumferentially. Circumferentially is along the circumference. From the original figures the L-shaped rim extends radially from the shot glass portion. From the original specification “[t]he rim 808 of the shot glass top 800 is an L-shape, extending first outward from the circumference of the bottom 806 of the shot glass top 800” and “the rim 108 is configured to extend outward from the bottom 806 of the shot glass top 800 and be of a greater circumference than the bottom 806”. In light of the original disclosure and in order to apply art the limitation will be interpreted as if it read: an L-shaped rim configured to extend radially from said shot glass bottom.
The limitation of claim 11 of “an L-shaped rim configured to extend circumferentially from said shot glass bottom, and make a substantially 90-degree turn down in the direction of the stem” is led to be indefinite. It is unclear if down in the direction of the stem limits the L-shaped rim to extend towards the stem or to extend in the same direction as the stem (i.e., in an opposing direction from said open top). In light of the original disclosure and in order to apply art the claim will be interpreted as the latter.
Claim 11 and its dependents are indefinite because it is not clear whether claim 11 is drawn to the sub-combination of a shot glass top only, for use with some bottle, or whether the claim is drawn to the combination of a shot glass top and a bottle. This is because while some portion of the claim indicate that what is claimed is the sub-combination (note claim 11 line 1, for example), other portions of the claim indicate that what is claimed is the combination (note the structural limitation on lines 13-15, requiring the rim rest on the shoulder of the bottle at the same time that the bottom rests on the mouth of the bottle without engaging the neck of the bottle when the stem portion is inserted into the bottle). It is noted further in connection with this limitation that it is by now well settled that features not claimed may not be relied upon in support of patentability. In this office action, the bottle is presumed not to be claimed in order for the examiner to give the claim its broadest reasonable interpretation. Accordingly, all references in the claim to the bottle are considered to be merely functional. On the other hand, clarification of the scope of claim 11 is required.
Claim 11 recites the limitation "the stem portion" in lines 14-15. There is insufficient antecedent basis for this limitation in the claim.
Claim 11 is led to be indefinite as it is unclear if the stem portion is a newly recited structure or refers back to the stem. In light of the original disclosure and in order to apply art the claim will be interpreted as the latter.
Claim 11 and its dependents are indefinite because it is not clear whether claim 11 is drawn to the sub-combination of a shot glass top only, for use with some bottle, or whether the claim is drawn to the combination of a shot glass top and a bottle. This is because while some portion of the claim indicate that what is claimed is the sub-combination (note claim 11 line 1, for example), other portions of the claim indicate that what is claimed is the combination (note the structural limitation on lines 9-10, requiring the stem have a smaller circumference than an interior circumference of the neck). It is noted further in connection with this limitation that it is by now well settled that features not claimed may not be relied upon in support of patentability. In this office action, the bottle is presumed not to be claimed in order for the examiner to give the claim its broadest reasonable interpretation. Accordingly, all references in the claim to the bottle are considered to be merely functional. On the other hand, clarification of the scope of claim 11 is required.
Claim 14 recites the limitation "said stem base" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "said bottom portion" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 is led to be indefinite as it is unclear if said bottom portion is a newly recited structure or refers back to the shot glass bottom. In light of the original disclosure and in order to apply art the claim will be interpreted as the latter.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lu (CN 106185004).
Claim 11: Lu discloses a shot glass top, the shot glass top comprising: a shot glass portion having an open top, a sidewall, and a shot glass bottom together forming an open space; wherein the open top is larger in circumference than the shot glass bottom; a stem configured to extend from the shot glass bottom in an opposing direction from said open top; and an L-shaped rim configured to extend circumferentially [interpreted as radially] from the shot glass portion, and make a substantially 90-degree turn down in the direction of the stem; wherein the rim extends downward from the shot glass portion less than the stem (see annotated fig. 7 below).
The shot glass top inherently is capable of seating on some conventional bottle having some mouth and some shoulder vertically spaced apart by some neck, wherein that mouth and neck are each narrower than that shoulder as the prior art combination discloses a structurally identical shot glass top to the inventions claimed shot glass top. The burden is shifted to applicants to show that the shot glass top cannot seat on some bottle having some mouth and some shoulder vertically spaced apart by some neck, wherein that mouth and neck are each narrower than that shoulder. Otherwise a prima facie case of anticipation has been established.
The stem inherently is capable of extending into the mouth of some bottle when the shot glass bottom is adjacent the mouth of that bottle when the interior circumference of the neck of that bottle is greater than the stem circumference as the prior art combination discloses a structurally identical shot glass top to the inventions claimed shot glass top. The burden is shifted to applicants to show that the stem cannot extend into the mouth of a bottle when the shot glass bottom is adjacent the mouth of the bottle and the interior circumference of that bottles neck is greater than the stem circumference. Otherwise a prima facie case of anticipation has been established.
The rim inherently is capable of resting on the shoulder of some bottle at the same time that the bottom rests on the mouth of that bottle without engaging the neck of that bottle when the stem is inserted into the bottle as the prior art combination discloses a structurally identical shot glass top to the inventions claimed shot glass top. The burden is shifted to applicants to show that the rim cannot rest on the shoulder of a bottle at the same time that the bottom rests on the mouth of that bottle without engaging the neck of that bottle when the stem is inserted into that bottle. Otherwise a prima facie case of anticipation has been established.
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Claim 14: Lu discloses said stem base having a smaller circumference than said bottom portion (see annotated fig. 7 above).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 11 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swartwout (US 4416381) further in view of Carr (US 2019071) and Miner (US 732877).
Claim 11: Swartwout discloses a measuring cup portion 60 (shot glass top), the measuring cup portion 60 (shot glass top) comprising: a shot glass portion having an open top, a sidewall 67, and a shot glass bottom together forming an open space; wherein the open top is larger in circumference than the shot glass bottom, a stud 63 (stem) configured to extend from the shot glass bottom in an opposing direction from said open top, the stud 63 (stem) configured to extend into the mouth of some bottle when the shot glass bottom is adjacent the mouth of that bottle, the stud 63 (stem) having a smaller circumference than an interior circumference of the neck; and a rim configured to extend from said shot glass bottom down in the direction of the stud 63 (stem) (see annotated fig. 6 below).
Swartwout does not disclose an L-shaped rim configured to extend circumferentially from said shot glass bottom, and make a substantially 90-degree turn down in the direction of the stem, wherein the rim rests on the shoulder of the bottle at the same time that the bottom rests on the mouth of the bottle without engaging the neck of the bottle when the stem portion is inserted into the bottle, or wherein the rim extends downward from the shot glass portion equal to or less than the stem.
Miner teaches a closure device b having a central plug member b3 stopping a neck a2, an annular space b4 designed to receive the neck a2 and a rim extending over the annular space b4 and spaced from the central plug member b3, wherein the rim extends downward equal to the central plug member b3 (see annotated fig. 2 below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rim to extend downward equal to the stud 63 (stem), as taught by Miner, in order to stand better and since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also MPEP 2144.04.
Carr teaches a device 1 for seating on a bottle having a mouth and a shoulder, the device 1 comprising a shot glass portion having an open top, a sidewall, and a shot glass bottom together forming an open space; wherein the open top is larger in circumference than the shot glass bottom, and an L-shaped rim configured to extend circumferentially [interpreted as radially] from said shot glass bottom, and make a substantially 90-degree turn down (see annotated fig. 4 below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the measuring cup portion 60 (shot glass top) to inset the sidewall from the skirt 72, as taught by Carr, in order to hold a lesser quantity of liquid and since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also MPEP 2144.04.
The combination results in an L-shaped rim having extending circumferentially [interpreted as radially] from the shot glass bottom, and making a substantially 90-degree turn down in the direction of the stud 63 (stem).
The measuring cup portion 60 (shot glass top) inherently is capable of seating on some conventional bottle having some mouth and some shoulder vertically spaced apart by some neck, wherein that mouth and neck are each narrower than that shoulder as the prior art combination discloses a structurally identical measuring cup portion 60 (shot glass top) to the inventions claimed shot glass top. The burden is shifted to applicants to show that the measuring cup portion 60 (shot glass top) cannot seat on some bottle having some mouth and some shoulder vertically spaced apart by some neck, wherein that mouth and neck are each narrower than that shoulder. Otherwise a prima facie case of anticipation has been established.
The stud 63 (stem) inherently is capable of extending into the mouth of some bottle when the shot glass bottom is adjacent the mouth of that bottle when the interior circumference of the neck of that bottle is greater than the stud 63 (stem) circumference as the prior art combination discloses a structurally identical stud 63 (stem) and shot glass portion to the inventions claimed stem and shot glass portion. The burden is shifted to applicants to show that the stem cannot extend into the mouth of a bottle when the shot glass bottom is adjacent the mouth of that bottle when the interior circumference of the neck of that bottle is greater than the stud 63 (stem) circumference. Otherwise a prima facie case of anticipation has been established.
The rim of the combination inherently or in the alternative obviously is capable of resting on the shoulder of some bottle at the same time that the shot glass bottom rests on the mouth of that bottle without engaging the neck of that bottle when the stud 63 (stem) is inserted into that bottle as the prior art combination discloses a structurally identical measuring cup portion 60 (shot glass top) to the inventions claimed shot glass top. If there is any difference, the difference must be minor and obvious. The burden is shifted to applicants to show that the rim cannot rest on the shoulder of a bottle at the same time that the bottom rests on the mouth of that bottle without engaging the neck of that bottle when the stud 63 (stem) is inserted into that bottle. Otherwise a prima facie case of anticipation, or in the alternative, of obviousness has been established.
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Claim 14: The combination discloses said rim 66 (stem base) having a smaller circumference than said shot glass bottom (see annotated fig. 6 above).
Claim 15: The combination discloses the claimed invention except for said open space having a capacity of 3.0 to 4.0 fluid ounces.
It would have been obvious to one of ordinary skill in the art at the time that the invention was made to have made the capacity of the open space be 3.0 to 4.0 fluid ounces in order to hold a 3.0 to 4.0 fluid ounce dosage and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In. re Aller, 105 USPW 233. Additionally, it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also MPEP 2144.04.
Claim 16: The combination discloses the claimed invention except for said open space having a capacity of 1.5 to 2.0 fluid ounces.
It would have been obvious to one of ordinary skill in the art at the time that the invention was made to have made the capacity of the open space be 1.5 to 2.0 fluid ounces in order to hold a 1.5 to 2.0 fluid ounce dosage and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In. re Aller, 105 USPW 233. Additionally, it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also MPEP 2144.04.
Response to Arguments
The drawing objections in paragraph 3 of office action dated 3 April 2024 are withdrawn in light of the amended disclosure filed 31 December 2025.
The specification objections in paragraph 4 of office action dated 3 April 2024 are withdrawn in light of the amended disclosure filed 31 December 2025.
The 35 U.S.C. § 112 rejections in paragraphs 5-7 of office action dated 3 April 2024 are withdrawn in light of the amended claims filed 31 December 2025.
Applicant's arguments filed 9 April 2025 have been fully considered but they are not persuasive.
In response to applicant’s argument that the Applicant has amended the specification paragraph 0043, the Examiner replies that no such amendment has been made.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the stem extends from the shot glass portion equidistant with the rim, a collar that reaches the bottle shoulder when the shot glass bottom reaches the bottle mouth, a specialized rim having a collar portion adapted to rest on the bottle shoulder when the shot glass portion rests on the bottle mouth, the ability to easily remove the container and drink from the container and bottle in rapid succession) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant’s argument that in Lu the stem portion and stem base extend beyond the downward extend of the rim, the Examiner agrees and notes that this meets the limitation of claim 11 that “the rim extends downward from the shot glass portion equal to or less than the stem”.
In response to applicant’s argument that Lu is not configured such that the rim engages a bottle shoulder when the shot glass bottom engages the mouth of the same bottle when the stem portion is inserted into the bottle and that any such interpretation would rely on the existence of a hypothetical bottle, the Examiner responds that claim 11 is directed to the subcombination of a shot glass top only. The limitation that “the rim rests on the shoulder of the bottle at the same time that the bottom rests on the mouth of the bottle … when the stem portion is inserted into the bottle” is a functional limitation. 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. MPEP 2114 II. The rim inherently is capable of resting on the shoulder of some bottle at the same time that the bottom rests on the mouth of that bottle without engaging the neck of that bottle when the stem is inserted into the bottle as the prior art combination discloses a structurally identical shot glass top to the inventions claimed shot glass top. The burden is shifted to applicants to show that the rim cannot rest on the shoulder of a bottle at the same time that the bottom rests on the mouth of that bottle without engaging the neck of that bottle when the stem is inserted into that bottle. Otherwise a prima facie case of anticipation has been established. Applicant has not met the burden of showing that the Rim of Lu cannot engage a bottle shoulder when the shot glass bottom engages the mouth of the same bottle when the stem portion is inserted into the bottle. The rejection at hand relies solely on the structure depicted in figure 7 and not the combination of the cover 2 and base 1. As such, the annotated stem portion and stem base of the shot glass top are not sealed off and remain accessible. Some hypothetical bottle exists whose bottle shoulder engages the rim of Lu when the shot glass bottom of Lu engages a mouth of that same hypothetical bottle (see annotated fig. 7 above). Applicant has not provided any evidence that the prior art product of Lu does not necessarily or inherently possess the characteristics of the claimed product. MPEP 2112 V.
In response to applicant’s argument that just because the purported stem and rim of Lu could be arranged to engage a bottle as claimed in insufficient to establish inherency while citing In re Robertson, 169 F.3d 743,745 (Fed. Cir. 2002), the Examiner responds that once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. The Applicant has not provided any evidence that the prior art product of Lu does not necessarily or inherently possess the characteristics of the claimed product. MPEP 2112 V.
In response to applicant’s argument that Lu fails to disclose any associated bottle and teaches that the rim only engaged the outside mouth of a container due to the presence of the base sealing ring (7), base female thread (8) and base spline gear (9), the Examiner responds that base sealing ring (7), base female thread (8) and base spline gear (9) are not present on the annotated shot glass top disclosed by Lu (see annotated fig. 7 above) and as such cannot provide evidence against an inherent function, feature, or capability of the annotated shot glass top. Applicant has not provided any evidence that the prior art product of Lu does not necessarily or inherently possess the characteristics of the claimed product. MPEP 2112 V.
In response to applicant’s argument that characterizing Lu as having a “shot glass portion” exceeds the broadest reasonable interpretation of Lu and is unreasonably because the body of the graduated container almost totally occludes the asserted “shot glass portion” and trying to use the portion of Lu indicated as a shot glass would be impossible since it would only hold a minimal amount of fluid, where typical shot glasses hold 1.5oz(ml) which is more than the graduated container itself, and that characterizing Lu as having a “shot glass portion” exceeds the broadest reasonable interpretation standard by expanding the term “shot glass portion” to include virtually any structure capable of holding a liquid in any configuration, the Examiner replies that applicant has not provided any special definition for shot glass. As such, the plain meaning must be looked to. The Oxford Languages dictionary defines “shot glass” as a small glass used for serving liquor. Therefore, the broadest most reasonable interpretation of a shot glass portion is a small glass which is capable of being used to serve liquor. As the annotated shot glass portion of annotated fig. 7 above has a volume which is capable of retaining liquor it meets the BRI of a small glass which is capable of being used to serve liquor. It appears that applicant agrees with this broadest most reasonable interpretation as applicant has not supplied a different BRI. Additionally, it is noted that the feature upon which applicant relies (i.e., holding 1.5oz (44ml) is not recited in rejected claim 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, the original disclosure that “The open space 114 of the shot glass top 100 may have a liquid capacity of between 1.5 ounces to 2.0 ounces. While this liquid capacity is utilized for the first embodiment described herein, other capacities of liquid may be used without departing from the concepts disclosed herein” makes clear that a volume of 1.5oz (44ml) is not a requirement of the claimed shot glass portion.
In response to applicant’s argument that there is no motivation to combine the references, the Examiner responds that it would have been obvious to have modified the rim to extend downward equal to the stud 63 (stem), as taught by Miner, in order to stand better and since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also MPEP 2144.04. Additionally, it would have been obvious to have modified the measuring cup portion 60 (shot glass top) to inset the sidewall from the skirt 72, as taught by Carr, in order to hold a lesser quantity of liquid and since it has been held that changing the size or range of an article is not ordinarily a matter of invention. Appropriate selection of size, weight, ratios, etc. is considered routine, and is typically a matter of design choice. See In re Rose 105 USPQ 237 (CCPA 1955) and also MPEP 2144.04.
In response to applicant’s argument that Swartwout, Carr, and Miner are non-analogous art as the asserted references are designed to solve a different problem than the problem solved by the Applicant’s invention and do not solve the problem solved by the Applicant’s invention which is not simply a cap with a built-in container used to seal a bottle but rather a bottle topper, where the applicant’s field of endeavor is in the alcoholic beverages market and the applicant’s invention solves the problem of serving separate alcoholic drinks intended for rapid sequential individual consumption (i.e., a “shot” and a “chaser”), the Examiner responds that it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Examiner disagrees that the field of the inventor’s endeavor is restricted solely to the alcoholic beverage market and notes that “alcohol” is not mentioned anywhere in the original disclosure, rather P. 0005 provides that “this shot glass top can be filled with a liquid of choice”. Examiner additionally disagrees that the particular problem with which the inventor was concerned is restricted to serving separate alcoholic drinks intended for rapid sequential individual consumption. The Examiner believes that the field of the inventor’s endeavor is caps with fluid chambers and that the particular problem with which the inventor was concerned involves providing fluid chambers which are carried upon a bottle. Each of Startwout, Carr, and Miner are in the field of the inventor’s endeavor of caps with fluid chambers and reasonably pertinent to the particular problem of providing fluid chambers which are carried upon a bottle. Examiner notes that “bottle topper” cannot be located anywhere within the original disclosure.
In response to applicant’s argument that since skirt 72 of Swartwout is only configured to extend around the bottle mouth, it cannot function as a rim that engages the shoulder of a bottle when the stem portion is inserted into the mouth of the bottle, the Examiner responds that this is a piecemeal analysis as it does not take into account the combination of references. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that Miner teaches against a shoulder-engaging limitation, the Examiner replies that this is a piecemeal analysis of the references as Miner was not relied upon to teach this limitation. In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that since Swartwout, Carr, and Miner all contemplate firmly affixed closures there is no suggestion or motivation for modifying any of them to teach the Applicant’s limitation of a collar that reaches the bottle shoulder when the shot glass bottom reaches the bottle mouth, the Examiner responds that claim 11 is directed to the subcombination of a shot glass top only. The limitation of “a collar that reaches the bottle shoulder when the shot glass bottom reaches the bottle mouth” is a not presently claimed. The claimed limitation that “the rim rests on the shoulder of the bottle at the same time that the bottom rests on the mouth of the bottle without engaging the neck of the bottle when the stem portion is inserted into the bottle” has been deemed to be functional as claim 11 is directed to the subcombination of the shot glass top only and not the combination of the shot glass top and bottle. 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. MPEP 2114 II. As this functional limitation is inherent or in the alternative obvious in the combination, as outlaid in the claim 11 above, the limitation.
In response to applicant’s argument that none of the cited references teach a specialized rim having a collar portion adapted to rest on the bottle shoulder when the shot glass portion rests on the bottle mouth as Swartwout, Carr, and Miner all have portions positioned outside the bottle mouth but they are designed to hew closely only to the bottle mouth in order to enclose and seal the bottle’s contents and prevent spillage, the Examiner initially responds no collar portion is claimed. The claimed limitation that “the rim rests on the shoulder of the bottle at the same time that the bottom rests on the mouth of the bottle without engaging the neck of the bottle when the stem portion is inserted into the bottle” has been deemed to be functional as claim 11 is directed to the subcombination of the shot glass top only and not the combination of the shot glass top and bottle. 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. MPEP 2114 II. As this functional limitation is inherent or in the alternative obvious in the combination, as outlaid in the claim 11 above, the limitation. Examiner notes that the rejection at hand relies on the measuring cup portion 60 to meet the shot glass top and not the combination of the measuring cup portion 60 and closure portion 61.
In response to Applicant’s argument that Swartwout has a sub-structure that make it unsuitable for solving the Applicant's problem and is not from an analogous art as Swartwout has flexible disks for securely anchoring its stopper portion in a bottle, which teaches away from the ability to easily remove the container and drink from the container and bottle in rapid succession, the Examiner replies that it is noted that the features upon which applicant relies (i.e., the ability to easily remove the container and drink from the container and bottle in rapid succession) are not recited in rejected claim 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Swartwout is in the field of the inventor’s endeavor of caps with fluid chambers and is also reasonably pertinent to the particular problem of providing fluid chambers which are carried upon a bottle. In response to Applicant's argument that Swartwout teaches away from the ability to easily remove the container and drink from the container and bottle in rapid succession, the Examiner replies that nothing the disclosure of Swartwout criticizes, discredits, or otherwise discourages the solution as is required for a teaching away.
In response to Applicant’s argument that Carr has a sub-structure that make it unsuitable for solving the problem solved by the Applicant's invention and is not from an analogous art as Carr has pressed-in threads (ref. no. 6) corresponding to bottle threads (ref. no. 7), making it impossible to simply lift the container from the bottle and that Carr's invention is an eye cup bottle closure, unrelated to consumable beverages, the Examiner replies that it is noted that the features upon which applicant relies (i.e., the ability to simply lift the container from the bottle) are not recited in rejected claim 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Carr is in the field of the inventor’s endeavor of caps with fluid chambers and is also reasonably pertinent to the particular problem of providing fluid chambers which are carried upon a bottle.
In response to Applicant’s argument that Miner has a sub-structure that make it unsuitable for solving the problem solved by the Applicant’s invention and is not from an analogous art as Miner provides a bottle cap which cannot be easily lifted from a bottle and rather is made of a "material having a slightly yielding quality and also a slightly-expansible quality when compressed in order that the neck of the bottle may be forced...onto the neck in such a manner that the adhesion of the closure device to the walls of the neck will securely close the bottle or other vessel and also retain the closure device in place." See page 2, lines 20- 28, such that Miner teaches a closure that cannot be easily removed and affirmatively depicts the rim as not approaching the shoulder of the bottle as seen in Figs. 1-4, the Examiner responds that it is noted that the features upon which applicant relies (i.e., a bottle cap which can easily be lifted from a bottle) are not recited in rejected claim 11. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Further, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Miner is in the field of the inventor’s endeavor of caps with fluid chambers and is also reasonably pertinent to the particular problem of providing fluid chambers which are carried upon a bottle.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALLAN D STEVENS/Primary Examiner, Art Unit 3736