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 .
Response to Amendment
In the Amended Claims of May 5, 2026, Claims 1-9, 11-13, 15-18 and 20 are pending. Claims 1 and 13 are amended.
Drawings
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, the “top portion including a textured top portion outer surface arranged only between the side indent of each of the sides” as recited in Claims 1 and 13 must be shown or the features canceled from the claim. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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 11-13, 15 and 20 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.
Nowhere is a textured surface and a side indent shown in the same embodiment. Therefore, this must be considered new matter as it has previously not been disclosed. In the Remarks and Arguments of November 17, 2025, Pages 11-12, Applicant argues that the scope of the present disclosure is not limited to only embodiments and features exemplified in the drawings. Applicant further points to language in the Specification which identifies that other embodiments are contemplated within the scope of the present disclosure.
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. If the new matter has been entered into the claims or affects the scope of the claims, the claims affected should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, on the ground that it recites elements without support in the original disclosure. See Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991) (A written-description question often arises when an applicant, after filing a patent application, subsequently adds "new matter" not present in the original application.); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). (MPEP 608.04)
When the subject matter is not shown in the drawing or described in the description, the words of the original claim must sufficiently describe the invention so that one of ordinary skill in the art would recognize that the inventor had possession of the full scope of the claimed invention. (MPEP 608.01 I)
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 1-9 and 11-13, 15 and 20 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 claims are indefinite because it is ambiguous as to where the textured portions are positioned relative to the side indent and the top portion.
The independent claims recite that the top portion includes a textured outer surface (46) arranged only between the side indent (54, 56) of each of the sides (50, 52).
However, it is unclear whether this textured portion is WITHIN the side indent or on the PLANAR FRONT SURFACES of the top portion as discussed previously.
Due to the ambiguity of the language and the absence of any drawings showing the relative locations of the textured portion to the side indent, the claims are indefinite. For the purposes of examination, it will be assumed that any location of the textured portion within or adjacent to the side indents will be considered to correspond to the claim language.
All dependent claims are rejected as dependent on a rejected independent claim.
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.
Claims 1-9, 11-13, 15-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shirley (US D824768) in view of Pleines (US D541162) and Hammel (US 6536977).
Regarding Claim 1, Shirley discloses a bottle capable of dispensing adhesives comprising a bottle body having an inner volume and including a bottom portion, a mid-portion and a top portion extending from a bottom surface of the bottle body to a shoulder surface of the bottle body in a longitudinal direction. Shirley also discloses a neck portion extending from the shoulder surface of the bottle body having an opening wherein the bottle includes sides with each side having a side indent to allow improved squeezing of the bottle, each side indent extending in the longitudinal direction along the bottom portion, mid portion, and top portion.
Shirley does not disclose the bottle is used to accommodate adhesive or that the bottle opening is used for dispensing adhesives. However, to recite the intended contents and use of the prior art bottle in Shirley is a statement of intended use.
In the present case, a person having ordinary skill in the art would recognize and find obvious that the container of Shirley may also be used to store and dispense adhesives. In other words, the claimed bottle structure is entirely found in Shirley and would be sufficient to hold and dispense adhesives. A recitation of the intended contents and use of the bottle does not add any structural limitations to the bottle itself.
As discussed in MPEP 2111.02, “[d]uring examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference…between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963)”
“To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) (anticipation rejection affirmed based on Board’s factual finding that the reference dispenser (a spout disclosed as useful for purposes such as dispensing oil from an oil can) would be capable of dispensing popcorn in the manner set forth in appellant’s claim 1 (a dispensing top for dispensing popcorn in a specified manner)) and cases cited therein.”
"[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention.…Without such reliance, however, a preamble generally is not limiting when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." Catalina Mktg. Int’l, 289 F.3d at 808-09, 62 USPQ2d at 1785.”
Therefore, a person having ordinary skill in the art would recognize and find obvious that the bottle of Shirley may be used to hold and dispense adhesives.
Furthermore, while Shirley does not disclose the bottle includes sides with side indents extending along the ENTIRE bottle height from the bottom surface, a person having ordinary skill would recognize and find obvious that the extent of the indent may be varied as an aesthetic variation as seen in Pleines.
Pleines discloses the side indents extend from the bottom surface and along the bottom, mid, and top portion of the bottle as seen in Pleines Figure 7.
The Examiner also notes MPEP 2144.04 Section 1 which discusses aesthetic design changes. Matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art. Applicant has not disclosed that such an extent of the longitudinal groove is used for a particular purpose or achieves a functional result. Therefore, this positioning of the groove must be considered a design variation that does not provide additional patentable utility over the designs shown in the prior art.
Shirley and Pleines do not disclose the top and bottom portions include two textured gripping surfaces at indentations.
Hammel discloses a similar bottle comprising two textured portions (30). Shirley, Pleines and Hammel are analogous inventions in the art of bottles.
It would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the bottle of Shirley in view of Pleines with the textured surface of Hammel in order to provide a non-slip area that is placed in such a manner that it is easy for a user to wrap his fingers in a firm grasp around the entire dispenser (Col. 3 Lines 26-43).
Furthermore, a person having ordinary skill in the art would recognize and find obvious that such textured surfaces may be arranged on major bottle surfaces which a user would be expected to grip.
Regarding Claim 2, as shown in Figure 42, Shirley discloses the bottom portion, mid portion, and top portion each have a bottom portion cross section, a mid-portion cross-section and a top portion cross section, respectively, and wherein the bottom portion cross section is larger and would therefore be capable of holding a greater amount of adhesive therein than the mid portion cross-section of the bottle.
Regarding Claim 3, Shirley discloses the top portion cross-section is greater than the mid portion cross-section.
Regarding Claim 4, Shirley discloses the bottom portion cross-section is approximately the same as the top portion cross-section.
Regarding Claim 5, Shirley discloses the top portion cross-section is greater than the mid portion cross-section.
Regarding Claim 6, Shirley discloses the bottom portion with increased bottom portion cross-section extends in the longitudinal direction.
Regarding Claim 7, Shirley does not disclose the bottom portion with increased bottom portion cross-section extends in the longitudinal direction the same distance as the top portion with increased top portion cross-section, a person having ordinary skill in the art would recognize and find obvious the variation of the different heights of components of the bottle as an obvious variation in the shape, size and proportion of the bottle that would not perform any differently than the prior art device. See MPEP 2144.04 IV Section A.
Regarding Claim 8, Shirley discloses each side extends substantially straight in the longitudinal direction and wherein each side indent has a concave profile. This is also shown in Pleines.
Regarding Claim 9, Shirley discloses he bottom portion with increased bottom portion cross-section extends in the longitudinal direction different distance as the top portion with increased top portion cross-section.
Regarding Claim 11, the textured surface of Hammel may be considered to be knurled.
Regarding Claim 12, Shirley discloses the bottom portion, mid portion and top portion each have a bottom portion cross-section, a mid-portion cross-section and a top portion cross-section, respectively; and wherein the bottom portion cross-section is greater than the mid portion cross-section to provide stability to the bottle.
Regarding Claim 13, Shirley discloses a bottle capable of dispensing adhesives as discussed in Claim 1 above. Shirley discloses a bottom portion, a mid-portion and a top portion extending from a bottom surface of the bottle body to a shoulder surface of the bottle body in a longitudinal direction. A neck portion extends from the shoulder surface of the bottle body having an opening for dispensing the bottle contents. As shown in the cross-section of Figure 42, a bottle wall of the bottle body has approximately the same thickness throughout the bottom portion, the mid portion and the top portion. The bottle includes sides with each side having a side indent to allow improved squeezing of the bottle, each side indent extending in the longitudinal direction along the bottom portion, mid portion and top portion. Furthermore, as disclosed in Pleines grooves are known to be provided from the bottom surface along the vertical body as a known aesthetic variation in the formation of longitudinal grooves. Furthermore, Hammel discloses two surfaces are textured and knurled.
Regarding Claim 15, the relative dimensions of the bottle and placement of the textured surface may be modified by one having ordinary skill in the art as an obvious variation as discussed above.
Regarding Claim 16, as discussed above, in Claim 1, Shirley discloses the limitations of this claim. Shirley also discloses the neck portion has a threading for accommodating a cap or a pump. While Shirley does not disclose the top portion extends a greater distance in the longitudinal direction than the bottom portion, a person having ordinary skill in the art would recognize and find obvious that the proportions and shape of the container may be varied as an obvious variation in the aesthetic design of the container that would provide no unexpected results.
Regarding Claims 17 and 18 these limitations are disclosed in Shirley, Pleines, and Hammel as discussed above.
Regarding Claim 20, Shirley does not disclose a first circumferential step is provided between the bottom portion and the mid portion of the bottle body, and a second circumferential step is provided between the top portion and the mid portion of the bottle body. However, a person having ordinary skill in the art would recognize and find obvious that the continuous shape of Shirley may be modified to have a circumferential step as seen in Kuzma (US D394211) as a similar bottle design having a side indent as an aesthetic variation that would provide no unexpected results in the functioning of the bottle.
Response to Arguments
Applicant’s arguments with respect to the previously submitted claim have been considered but are moot because the new ground of rejection does not rely on the combination of reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
On Page 9, Applicant stresses that the present invention is now drawn to TWO discrete textured gripping portions. This limitation is explicitly provided in Hammel (US 6536977).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GIDEON R. WEINERTH whose telephone number is (571)270-5121. The examiner can normally be reached Monday-Friday 10AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GIDEON R WEINERTH/Primary Examiner, Art Unit 3736
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