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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on November 17, 2025 has been entered.
In the Amended Claims of November 17, 2025, Claims 1-9, 11-13,15-18, 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 textured portions arranged between the side indents must be shown or the features canceled from the claims. 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, 11-13, 15-18, and 20 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.
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.
The Examiner respectfully disagrees.
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, 11-13, 15-18 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 and bottom portions.
The independent claims recite that the top and bottom 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 bottle as illustrated below.
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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.
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 Key (US 6129802).
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.”
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 reproduced below.
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Pleines also 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 a textured outer surfaces.
Key discloses a similar bottle with textured top and bottom outer surfaces (146, 604, 606, 704, 710). Shirley, Pleines and Key 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 bottles of Shirley and Pleines with the textured top and bottom outer surfaces as disclosed in Key in order to assist a user in gripping the container by increase the coefficient of friction associated with the outer surface and facilitate secure gripping of the container (Col. 4 Lines 27-39; Col. 8 Lines 1-12).
Furthermore, regarding the additional limitations of November 17, 2025, Key discloses textured portions on the upper and lower sections as seen in Figure 7. 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 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, Key discloses the top and bottom surfaces are textured and knurled.
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 Claim 15, 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 top portion cross-section is greater than the mid portion cross-section. Key discloses the top portion includes a textured surface.
Regarding Claims 16, 17, and 18 these limitations are disclosed in Shirley, Pleines, and Key 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 filed November 17, 2025 have been fully considered but they are not persuasive.
On pages 8-10, Applicant first correctly notes that Shirley and Pleines do not disclose the top and bottom portions that include a textured outer surface. However, while Applicant agrees that Key discloses the cited gripping surfaces on top and bottom outer surfaces, the reference shows such textured surfaces as being arranged on the entire circumference of the container. In contrast to this, the textured surfaces claimed by Applicant are arranged only between the side indents of the bottle.
The Examiner disagrees.
Firstly, as discussed above, this selective disposal of the textured outer surfaces relative to the side indents is new matter and was never shown or directly contemplated in the original disclosure.
Secondly, even assuming, arguendo, that having textured outer surfaces on most or some of the top and bottom surfaces relative to a side indent is disclosed, the relative placement of textured surfaces configured to enhance a user’s grip on the bottle would not provide a patentable distinction. A person having ordinary skill in the art would recognize from the disclosure of Key that textured surfaces would be advantageously placed wherever a user would likely grip the bottle.
On Pages 10-11, Applicant argues that the references do not disclose limitations relating to the heights of the top and bottom portions as discussed in Claim 16. Applicant alleges that such variations are not a mere aesthetic variation in the bottle’s proportions. Applicant believes that there are functional considerations which relate to the bottle’s center of gravity. For example, if a bottle’s top portion is larger than its bottom portion, it may accommodate a larger proportion of the contained substance.
The Examiner disagrees.
Applicant appears to be arguing for the criticality of the dimension. In essence, there is some kind of functional limit for the vertical extent of the top portion relative to the bottom portion to impact the overall stability of the bottle.
If this is so, Applicant is invited to provide references, experimental results, and comparative analysis for the dimensions of various bottles, along with arguments showing by how much greater the top portion must extend than the bottom portion. The examiner believes that typically the dimensions of the bottom portion holding more contents would be greater, in order to increase the weight of the bottom portion, thereby providing additional stability. The Examiner also notes that there is no criticality claimed regarding the relative bottle dimensions, nor is there any discussion of the HEIGHTS of the bottle section being critical to the stability of the bottle. In Paragraphs 0004 and 0056, the bottom portion cross section (area and width) is recited to be greater than the mid portion cross-section to provide stability to the bottle. There is no discussion relating to the height of the top portion as providing any functional advantage.
Therefore, absent a showing of such persuasive evidence, the Examiner believes that varying the relative heights of the bottle sections must be considered an obvious matter of aesthetic design choice.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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/Examiner, Art Unit 3736