DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Prosecution Re-opened
In view of the Appeal Brief filed on 1/2/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733
Response to Arguments
Applicant's arguments filed 1/2/2026 in response to Office Action 8/4/2025 have been fully considered:
Regarding claims 1 and 7, Applicant argues that the prior art container is not a spirits container (page 8). Examiner and conferees disagree. Please see a detailed analysis in the rejection below.
Regarding claims 1 and 7, Applicant argues that the prior art combination cannot collapse the container such that the base bulges outward and downward away from the finish (page 8). Examiner and conferees agree. This is the reason for the new grounds Non-Final Action herein.
Regarding claims 1 and 7, Applicant argues that the prior art container would not be obvious to result in a flat collapsed width of 1.4 times greater than pre-collapsed (page 8). Examiner and conferees disagree, the reasoning provided below is sufficient.
Regarding claims 1 and 7, Applicant argues that the prior art bands do not extend to the neck (page 8). Examiner and conferees disagree.
Regarding claims 1 and 7, Applicant argues that the secondary prior art bands are longitudinal so cannot read onto the primary prior art vertical bands to create relative thickness as claimed (page 8). Examiner and conferees disagree.
Regarding claims 1 and 7, Applicant argues that “half” force to collapse is supported, so the 35 USC 112(b) is in error (page 8). Examiner and conferees agree, however the claim remains rejected by prior art in the analysis below.
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.
Claims 1 and 7 and dependents thereof are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention. The disclosure does not support how the specific force is produced or allowed in the claim limitation “bands are configured to collapse in response to a first amount of force that is half of a second amount of force required to collapse areas of the base and the body without the plurality of material bands”. What properties/number/location/dimensions of the material bands result in the force profile in Fig. 6? Applicant discloses only ranges for each without attributing a specific feature to producing/allowing the specific half force.
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 is incorrect, any correction of the statutory basis 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.
Claims 1-4, 6-15 and 18 are rejected under 35 U.S.C. 103 as unpatentable over WO 2014082026 by Glenn et al. (hereinafter “Glenn”) in view of JP H0826241 by Yoshiaki et al. (hereinafter “Yoshiaki”) in view of US Pat 6223932 issued to Usui (hereinafter “Usui”) in view US Pub 2005206044 by Higuchi (hereinafter “Higuchi”).
Regarding claim 1, Glenn teaches a container (Fig 16A, 1600) comprising:
a base extending across a bottom of the container, a longitudinal axis of the container extends through an axial center of the base (1600 has a bottom wall base from being a container with one opening shown at the top, through container [095], a central longitudinal axis);
a heel between the base and the body (Fig 16A, a rounded heel is shown between the base bottom wall and body wall);
a body extending from the heel such that the heel is between the base and the body (Fig 16A, body wall 1602 extends from the heel);
a finish defining an opening, the longitudinal axis of the container extends through centers of each of the opening, the body, and the base (Fig 16A, [095], a central longitudinal axis defines each center of a finish/opening 1606, the body and the base);
a shoulder between the finish and the body (Fig 16A, arced sloping shoulder 1608 is between finish/opening 1606 and body wall 1602);
a neck extending from the shoulder to the finish (Fig 16A, Fig 16C, [095], a neck 1604 extends from the shoulder 1608 to the finish 1606); and
a plurality of material bands configured as folding points of the container and (Fig 16A, fold pattern line bands 1610), the plurality of material bands extending continuously, across the heel, along the body, and to the shoulder (Figs 16A-16C show that 1610 extends continuously along the heel, body, shoulder); wherein:
the container is a round spirits container (Fig 16A, the container is round and capable of holding spirits);
the container is made of polyethylene, and blow molded from an injection molded preform ([008] container is of polyethylene terephthalate (PET), [0132] using a blow molded preform, [0111] in injection molding; wherein examiner also notes product by process is treated as a functional limitation. MPEP 2113 I);
the container is configured to collapse along the plurality of material bands ([094] container 1600 collapses along the fold bands 1610); and
the body and the base are configured to collapse to have a generally flat body and a generally flat base (Fig 16C, [097], a generally flattened base and body are shown, because of the collapsed bands 1610, with bands of the base directly pointed to);
an uppermost portion of the plurality of material bands terminates at the neck such that the plurality of material bands terminate below the finish (Fig 16A, an uppermost portion of 1610: terminates at the neck, and is below the finish 1606), the finish configured to maintain a round shape with the body and the base collapsed along the plurality of material bands (Fig 16C, 1606 maintains a round shape with the bands 1610 collapsed);
But Glenn does not explicitly teach specific dimensions and proportion.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at 5 cm height and width or greater, and generally 1.4 times wider base in collapsed state, recognizing that an increase in cylindrical height and base diameter are directly correlated to stability of the container when standing upright, increased amount of a product able to be contained, and increased saved space in transportation and storage upon flatter flattening, which are desirable characteristics, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233.
Also, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device (i.e. given the claimed relative dimensions, the prior art container would collapse in the same fashion), the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV-A. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
But Glenn does not explicitly teach the bands extending from the base.
Yoshiaki, however, teaches a plurality of material bands (Fig 2, bands are notches 7) extending continuously from a base, across a heel (Fig 3, bands 7 extending on a base, extend continuously across a curved heel), along a body, and to a shoulder (Fig 1, and bands 7 extend continuously from across the curved heel, along a body, through a curved shoulder);
base portions of the plurality of material bands extends across the base in a direction that is nonparallel to body portions of the plurality of material bands extending along the body (Fig 3, bands 7 base portions are shown on the base, in a nonparallel direction to the bands’ body portions, Fig 1 (i.e. shown substantially perpendicular));
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the bands of Glenn to extend through the base as taught by Yoshiaki in order to advantageously increase the ease of collapsing the bottle for more variety of users versus an otherwise stiffer base.
But Glenn/Yoshiaki does not explicitly teach the base is configured to collapse along the plurality of material band outward and downward away from the finish.
Usui, however, teaches
the base is configured to collapse along the plurality of material bands outward and downward away from the finish (Figs 1b-2, the base collapses – along a plurality of material bands – bulging outward and downward away from a finish portion near 12; col 3, lines 4-5, “ends of the plastic bottle 10 dangle downwards at the bottom”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the base of Glenn/Yoshiaki to collapse in an outward and downward manner (e.g. bulging/protruding) as taught by Usui in order to advantageously increasingly “minimize the shape of the plastic bottle” (Usui, col 3, lines 15-16) versus not collapsing in that manner.
But Glenn/Yoshiaki/Usui does not explicitly teach a particular relative thickness of the bands.
Higuchi, however, teaches a plurality of material bands each having a thickness that is less than adjacent areas of the container (Fig 4, [0092], claim 2, peak fold bands Q each have a thickness less than their adjacent valley areas P) at blow mold parting lines of the container (MPEP 2113, this capability is necessarily met by being a product by process limitation); and
the plurality of material bands are configured to collapse in response to a first amount of force that is half of a second amount of force required to collapse areas of the base and the body without the plurality of material bands (MPEP 2112.01 because the prior art product is substantially identical, having thinner material bands spaced around the container would generally generate the force profile claimed; the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 USC § 102, on prima facie obviousness” under 35 USC § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products).
The purpose of thinner bands than the adjacent areas is further ease collapsibility. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the axial bands of Glenn/Yoshiaki/Usui to have reduced relative thickness as taught by Higuchi in order to advantageously increase the ease of collapse for a wider variety of users.
Regarding claim 7, Glenn teaches a container (Fig 16A, 1600) comprising:
a base extending across a bottom of the container, a longitudinal axis of the container extends through an axial center of the base (1600 has a base from being a container with one opening shown at the top, [095], a central longitudinal axis);
a heel between the base and the body (Fig 16A, a rounded heel is shown between the base bottom wall and body wall);
a body extending from the heel such that the heel is between the base and the body (Fig 16A, body wall 1602 extends from the heel);
a finish defining an opening, the longitudinal axis of the container extends through centers of each of the opening, the body, and the base (Fig 16A, a central longitudinal axis defines each center of a finish/opening 1606, the body and the base);
a shoulder between the finish and the body (Fig 16A, arced sloping shoulder 1608);
a neck extending from the shoulder to the finish (Fig 16A, Fig 16C, [095], a neck 1604 extends from the shoulder 1608 to the finish 1606); and
a plurality of material bands configured as folding points of the container and (Fig 16A, fold pattern line bands 1610), the plurality of material bands extending continuously, across the heel, along the body, along the shoulder, and to the neck (Figs 16A-16C show that 1610 extending continuously along the heel, body, shoulder and to the neck); wherein:
the container is a round spirits container (Fig 16A, the container is round and capable of holding spirits);
the container is made of polyethylene, and blow molded from an injection molded preform ([008] container is of polyethylene terephthalate (PET), [0132] using a blow molded preform, [0111] in injection molding; wherein examiner also notes product by process is treated as a functional limitation. MPEP 2113 I);
the container is configured to collapse along the plurality of material bands ([094] container 1600 collapses along the fold bands 1610); and
the base is configured to collapse along the plurality of material bands to have a generally flat body and a generally flat base (Fig 16C shows a collapsed generally flat body and base);
the body and the base are configured to collapse to have a generally flat body and a generally flat base (Fig 16C, [097], a generally flattened base and body are shown, because of the collapsed bands 1610, with bands of the base directly pointed to);
an uppermost portion of the plurality of material bands terminates at the neck such that the plurality of material bands terminate below the finish (Fig 16A, an uppermost portion of 1610: terminates at the neck, and is below the finish 1606), the finish configured to maintain a round shape with the body and the base collapsed along the plurality of material bands (Fig 16C, 1606 maintains a round shape with the bands 1610 collapsed);
But does not explicitly teach specific dimensions and proportion.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at 5 cm height and width or greater, and generally 1.4 times wider base in collapsed state, recognizing that an increase in cylindrical height and base diameter are directly correlated to stability of the container when standing upright, increased amount of a product able to be contained, and increased saved space in transportation and storage upon flatter flattening, which are desirable characteristics, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges of a result effective variable involves only routine skill in the art. In re Aller, 105 USPQ 233.
Also, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device (i.e. given the claimed relative dimensions, the prior art container would collapse in the same fashion), the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV-A. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
But Glenn does not explicitly teach the bands extending from the base.
Yoshiaki, however, teaches a plurality of material bands (Fig 2, bands are notches 7) extending continuously from a base, across a heel (Fig 3, bands 7 on a base, extend continuously across a curved heel), along a body, and to a shoulder (Fig 1, and bands 7 extend continuously from across the curved heel, along a body, through a curved shoulder);
base portions of the plurality of material bands extends across the base in a direction that is nonparallel to body portions of the plurality of material bands extending along the body (Fig 3, bands 7 base portions are shown on the base, in a nonparallel direction to the bands’ body portions, Fig 1 (i.e. shown substantially perpendicular));
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the bands of Glenn to extend through the base as taught by Yoshiaki in order to advantageously increase the ease of collapsing the bottle for more variety of users versus an otherwise stiffer base.
But Glenn/Yoshiaki does not explicitly teach the bands extending from the base.
Usui, however, teaches
the base is configured to collapse along the plurality of material bands outward and downward away from the finish (Figs 1b-2, the base collapses – along a plurality of material bands – bulging outward and downward away from a finish portion that is proximal to the label of element 2; col 3, lines 4-5, “ends of the plastic bottle 10 dangle downwards at the bottom”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the base of Glenn/Yoshiaki to collapse in an outward and downward manner (e.g. bulging/protruding) as taught by Usui in order to advantageously increasingly “minimize the shape of the plastic bottle” (Usui, col 3, lines 15-16) versus not collapsing in that manner.
But Glenn/Yoshiaki/Usui does not explicitly teach a particular relative thickness of the bands.
Higuchi, however, teaches a plurality of material bands each having a thickness that is less than adjacent areas of the container (Fig 4, [0092], claim 2, peak fold bands Q each have a thickness less than their adjacent valley areas P) at blow mold parting lines of the container (MPEP 2113, this capability is necessarily met by being a product by process limitation); and
the plurality of material bands are configured to collapse in response to a first amount of force that is half of a second amount of force required to collapse areas of the base and the body without the plurality of material bands (MPEP 2113, the bands necessarily collapse with less force required than proximal non-band areas of the container because they’re thinner; as a product by process limitation, the capability is met).
The purpose of thinner bands than the adjacent areas is further ease collapsibility. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the axial bands of Glenn/Yoshiaki/Usui to have reduced relative thickness as taught by Higuchi in order to advantageously increase the ease of collapse for a wider variety of users.
Regarding claims 2 and 8 (similar limitation, different dependency), Glenn/Yoshiaki/Usui/Higuchi does not explicitly teach the container has a capacity of about 50 ml or greater.
However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to optimize and arrive at 50 ml or greater, recognizing that an increase in volume of the container is directly correlated to increased container size increasing the amount and variety of products that can be held, which are desirable characteristics, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 167 F.2d 272, 205 USPQ 215 (CCPA 1980). Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Regarding claims 3 and 9 (similar limitation, different dependency), Glenn/ Yoshiaki/Usui/Higuchi further teaches each one of the plurality of material bands has a thickness that is about 58%-75% less than the adjacent areas of the container (Higuchi, [0092], claim 2, 40-87.5% less thickness; examiner notes anticipation from Higuchi (which is obviousness over Glenn) here is due to having “sufficient specificity”. MPEP 2131.03 II.). See details in the parent claims 1 and 7 rejection above, respectively, including the motivation for a person of ordinary skill in the art to modify.
Regarding claims 4 and 11 (similar limitation, different dependency), Glenn further teaches at least two of the plurality of material bands extend along the body parallel to the longitudinal axis (Figs 16A-16C, [094], at least two of the bands 1610 are shown parallel to the central axis).
Regarding claims 6 and 18 (similar limitation, different dependency), Glenn further teaches the container is blow molded from an injection molded preform having core geometry configured to form the plurality of material bands ([008] container is of polyethylene terephthalate (PET), [0132] using a blow molded preform, [0111] in injection molding, necessarily meaning a preform core to form the bands; wherein examiner notes product by process is treated as a functional limitation. MPEP 2113 I. “capable of construction”).
Regarding claim 10, Glenn further teaches the plurality of material bands are configured as folding points of the container (Fig 16A, fold pattern line bands 1610).
Regarding claim 12, Glenn further teaches the plurality of material bands are evenly spaced apart (Fig 16B, bands 1610 are evenly spaced from each other; wherein examiner notes that “evenly” under broadest reasonable interpretation does not means “equally” spaced, it means “generally evenly”; also this matches the Applicant’s definition in light of the specification [0024] “can [be]… evenly… and… need not be evenly”).
Regarding claim 13, Glenn further teaches at least two of the plurality of material bands extend along the base perpendicular to the longitudinal axis (Figs 16A-16C show that bands 1610 is along the base, heel, body, shoulder and neck (especially Fig 16C, wherein the base is shown perpendicular to the central axis)).
Regarding claim 14, Glenn further teaches at least two of the plurality of material bands are adjacent (Fig 16A, bands 1610 are adjacent each other).
Regarding claim 15, Glenn (the cited embodiment)/Yoshiaki/Usui/Higuchi does not explicitly teach a particular size/length of bands.
Glenn, however, considers other patterns including wherein at least two material bands intersect (Fig 16C points 1610 is in the bottom; [096] “other patterns of fold lines are possible and are within the scope of the present disclosure, particularly patterns that may help the container 1600 collapse into a generally flat shape”).
Thereby, it would have been obvious to one having ordinary skill in the art at the time the invention was made to increase the size/length of the bands across the base bottom wall in such a way that at least two bands intersect one another, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device (i.e. given the claimed increased size/length, because that’s how they would intersect, the prior art container would collapse in the same fashion), the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV-A. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation (i.e. the drawings and specification entirely prefer and support not intersecting, without any further support for intersecting other than the claimed limitation).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
US 0972095 – vertical and horizontal bands are obviously interchangeable
US 3456850 – collapse bands extend from shoulder along body along heel across the bottom (Figs 1 & 3)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC C BALDRIGHI whose telephone number is (571)272-4948. The examiner can normally be reached M-F 7:30-5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached on 5712705055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC C BALDRIGHI/Examiner, Art Unit 3733
/NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733 9 February 2026