OFFICE ACTION
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
Please direct all written correspondence with the correct application serial number for this application to Art Unit 1774.
Telephone inquiries regarding this application should be directed to the Electronic Business Center (EBC) at http://www.uspto.gov/ebc/index.html or 1-866-217-9197 or to the Examiner at (571) 272-1139. All official facsimiles should be transmitted to the centralized fax receiving number (571)-273-8300.
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 .
Election/Restriction Requirement
A requirement for restriction is made pursuant to 37 CFR §§1.141, 1.142 reproduced below:
§ 1.141 Different inventions in one national application.
(a) Two or more independent and distinct inventions may not be claimed in one national application, except that more than one species of an invention, not to exceed a reasonable number, may be specifically claimed in different claims in one national application, provided the application also includes an allowable claim generic to all the claimed species and all the claims to species in excess of one are written in dependent form (§ 1.75) or otherwise include all the limitations of the generic claim.
(b) Where claims to all three categories, product, process of making, and process of use, are included in a national application, a three way requirement for restriction can only be made where the process of making is distinct from the product. If the process of making and the product are not distinct, the process of using may be joined with the claims directed to the product and the process of making the product even though a showing of distinctness between the product and process of using the product can be made.
§ 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed in a single application, the examiner in an Office action will require the applicant in the reply to that action to elect an invention to which the claims will be restricted, this official action being called a requirement for restriction (also known as a requirement for division). Such requirement will normally be made before any action on the merits; however, it may be made at any time before final action.
(b) Claims to the invention or inventions not elected, if not canceled, are nevertheless withdrawn from further consideration by the examiner by the election, subject however to reinstatement in the event the requirement for restriction is withdrawn or overruled.
This application contains claims directed to the following patentably distinct species listed below. The species are independent or distinct. In addition, these species are not obvious variants of each other based on the current record.
SPECIES A: Figures 1A-3
SPECIES B: Figures 4-5C
SPECIES C: Figure 6
SPECIES D: Figures 7-8
SPECIES E: Figures 9A-9C and
SPECIES F: the kit described in [0080] – [0081] but not shown in the drawing Figures of record.
These species are independent or distinct because claims to the different species recite the mutually exclusive characteristics of such species. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claim 1 appears to be generic to each of the species.
There is an examination and search burden for these patentably distinct species due to their mutually exclusive characteristics. The species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); and/or the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election of the species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species.
Should applicant traverse on the ground that the species are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the species to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the species unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
Applicant’s representative, Umar Bakhsh, kindly elected SPECIES D (Figures 7-8) on 11 SEP 2025 with claims 1-3, 5-6, 8-14, 16, and 19 stated to read on the elected Species. The election was made without traverse.
Priority
Acknowledgment is made of applicant's claim for domestic priority under 35 U.S.C. § 119(e).
Information Disclosure Statement
Note the attached PTO-1449 forms submitted with the Information Disclosure Statements.
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 subject matter of elected claim 12 must be shown or the feature(s) canceled from the claim(s). The subject matter of elected claim 16 must be shown with respect to the elected Species D or the feature(s) canceled from the claim(s). If claimed at some point during the prosecution, the kit of claim 20 (although nonelected) must also be shown or the claim cancelled. 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.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities:
In ¶ [0051], all occurrences “slot end 20” should be --slot end 18-- to agree with Figures 1A and 1B.
Appropriate correction is required.
The abstract is acceptable.
The title is acceptable.
Claim Rejections - 35 U.S.C. § 112(b)
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.
The inquiry during examination is patentability of the invention as the inventor or a joint inventor regards such invention. If the claims do not particularly point out and distinctly claim that which the inventor or a joint inventor regards as his or her invention, the appropriate action by the examiner is to reject the claims under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989).
Claim 16 is 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 joint inventor regards as the invention.
Claim 16 is rejected under 112(b) since it does not appear to be readable on elected Species D (Figures 7-8). Note these Figures fail to show a tubular section extending from the tab and defining the slot in the tubular section - compare to nonelected Figures 9A-9C. Claim 16 thus appears mutually exclusive to the subject matter of elected Species D. Moreover, “the tab” in line 1 lacks antecedent basis.
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 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 terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000). "A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. Inc. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. "The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness." In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent disclosure in one of the references). See also In re Grasselli, 713 F.2d 731, 739, 218 USPQ 769, 775 (Fed. Cir. 1983). See MPEP 2112.
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.
Claims 1, 2, 3, 9, 12, 13, 14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by HOLLOWAY et al. (US 2515711) that discloses a rigid body 25; slot of the recited length 26 with opposite rounded slot ends; the slot 26 is offset toward the left end of the body (Figure 6); finger tab 27 having a component of width extending perpendicular to the slot 26; the slot 26 extending along a straight line (Figure 6).
Claims 1, 2, 3, 8, 9, 12, 13, 14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by NAVOT et al. (US 6263772 B1) that discloses a rigid body 2; slot 22 of the recited length with opposite rounded slot ends; the slot 22 is offset toward the end 14 of the body (Figures 1-2); finger tab 14 having a component of width extending perpendicular to the slot 22; the slot 22 extending along a straight line (Figures 1-2); the body 2 defining a rounded body edge at 10 across a thickness of the body (Figures 1-2).
Claims 1, 2, 3, 8, 9, 11, 12, 13, 14, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2007/039889 that discloses in at least Figures 1-5 a rigid body 1; slot 20 of the recited length with opposite rounded slot ends proximate 16 and at 31; the slot 20 is offset toward the end 18 of the body (Figure 2); finger tab 30 having a component of width extending perpendicular to the slot 20; the slot 20 extending along a straight line (Figure 2); the body 1 defining a rounded body edge at 25 across a thickness of the body (Figures 1-5); and a tear-drop rounded and shaped slot end at 31 (Figures 1-2).
Claim Rejections - 35 USC § 103
The terms used in this respect are given their broadest reasonable interpretation in their ordinary usage in context as they would be understood by one of ordinary skill in the art, in light of the written description in the specification, including the drawings, without reading into the claim any disclosed limitation or particular embodiment. See, e.g., In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). The Examiner interprets claims as broadly as reasonable in view of the specification, but does not read limitations from the specification into a claim. Elekta Instr. S.A.v.O.U.R. Sci. Int'l, Inc., 214 F.3d 1302, 1307 (Fed. Cir. 2000).
To determine whether subject matter would have been obvious, "the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved .... Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented." Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966).
The Supreme Court has noted:
Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.
KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740-41 (2007). "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." (Id. at 1742).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The instant office action conforms to the policies articulated in the Federal Register notice titled “Updated Guidance for Making a Proper Determination of Obviousness” at 89 Fed. Reg. 14449, February 27, 2024, wherein the Supreme Court’s directive to employ a flexible approach to understanding the scope of prior art is reflected in the frequently quoted sentence, ‘‘A person of ordinary skill is also a person of ordinary creativity, not an automaton.’’ Id. at 421, 127 S. Ct. at 1742. In this section of the KSR decision, the Supreme Court instructed the Federal Circuit that persons having ordinary skill in the art (PHOSITAs) also have common sense, which may be used to glean suggestions from the prior art that go beyond the primary purpose for which that prior art was produced. Id. at 421–22, 127 S. Ct. at 1742. Thus, the Supreme Court taught that a proper understanding of the prior art extends to all that the art reasonably suggests, and is not limited to its articulated teachings regarding how to solve the particular technological problem with which the art was primarily concerned. Id. at 418, 127 S. Ct. at 1741 (‘‘As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’’). ‘‘The obviousness analysis cannot be confined . . . by overemphasis on the importance of published articles and the explicit content of issued patents.’’ Id. at 419, 127 S. Ct. at 1741. Federal Circuit case law since KSR follows the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA. The Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. An argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art. For example, in Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), the Federal Circuit vacated a determination of nonobviousness by the Patent Trial and Appeal Board (PTAB or Board) because it had not properly considered a PHOSITA’s perspective on the prior art. Id. at 1364. The Randall court recalled KSR’s criticism of an overly rigid approach to obviousness that has ‘‘little recourse to the knowledge, creativity, and common sense that an ordinarily skilled artisan would have brought to bear when considering combinations or modifications.’’ Id. at 1362, citing KSR, 550 U.S. at 415–22, 127 S. Ct. at 1727. In reaching its decision to vacate, the Federal Circuit stated that by ignoring evidence showing ‘‘the knowledge and perspective of one of ordinary skill in the art, the Board failed to account for critical background information that could easily explain why an ordinarily skilled artisan would have been motivated to combine or modify the cited references to arrive at the claimed inventions.’’ Id.
From Norgren Inc. v. Int’l Trade Comm’n, 699 F.3d 1317, 1322 (Fed. Cir. 2012) (‘‘A flexible teaching, suggestion, or motivation test can be useful to prevent hindsight when determining whether a combination of elements known in the art would have been obvious.’’); Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1370–71 (Fed. Cir. 2017) (‘‘Any motivation to combine references, whether articulated in the references themselves or supported by evidence of the knowledge of a skilled artisan, is sufficient to combine those references to arrive at the claimed process.’’). In keeping with this flexible approach to providing a rationale for obviousness, the Federal Circuit has echoed KSR in identifying numerous possible sources that may, either implicitly or explicitly, provide reasons to combine or modify the prior art to determine that a claimed invention would have been obvious. These include ‘‘market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.’’ Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013), quoting KSR, 550 U.S. at 418–21, 127 S. Ct. at 1741–42.
The Federal Circuit has also clarified that a proposed reason to combine the teachings of prior art disclosures may be proper, even when the problem addressed by the combination might have been more advantageously addressed in another way. PAR Pharm., Inc. v. TWI Pharms., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014) (‘‘Our precedent, however, does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.’’) (emphasis in original). One aspect of the flexible approach to explaining a reason to modify the prior art is demonstrated in the Federal Circuit’s decision in Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 796 (Fed. Cir. 2021), which confirms that a proposed reason is not insufficient simply because it has broad applicability. Patent challenger Intel had argued in an inter partes review before the Board that some of Qualcomm’s claims were unpatentable because a PHOSITA would have been able to modify the prior art, with a reasonable expectation of success, for the purpose of increasing energy efficiency. Id. at 796–97. The Federal Circuit explained that ‘‘[s]uch a rationale is not inherently suspect merely because it’s generic in the sense of having broad applicability or appeal.’’ Id. The Federal Circuit further pointed out its pre-KSR holding ‘‘that because such improvements are ‘technology independent,’ ‘universal,’ and ‘even common-sensical,’ ‘there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’ ’’ Id., quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (emphasis added by the Federal Circuit in Intel). When formulating an obviousness rejection, the PTO may use any clearly articulated line of reasoning that would have allowed a PHOSITA to draw the conclusion that a claimed invention would have been obvious in view of the facts. MPEP 2143, subsection I, and MPEP 2144. Acknowledging that, in view of KSR, there are ‘‘many potential rationales that could make a modification or combination of prior art references obvious to a skilled artisan,’’ the Federal Circuit has also pointed to MPEP 2143, which provides several examples of rationales gleaned from KSR. Unwired Planet, 841 F.3d at 1003.
When considering the prior art in its entirety, note Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed. Cir. 2016) ("Although modification of the movable blades may impede the quick change functionality disclosed by Caterpillar, ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))). However, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In view of the above guidance, claims 1, 2, 3, 9, 11, 12, 13, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over KELLY et al. (US 5071036) that discloses in Figures 1-4 a rigid body 10; slot 14 having a length with opposite rounded slot ends proximate 11 (Fig. 2) and at end 16; the slot 14 is offset toward the end 11 of the body (Figure 2); angled finger tab 11 having a component of width extending perpendicular to the slot 14; the slot 14 extending along a straight line (Figure 2); and a tear-drop rounded and shaped slot end at 16 (left side of Figure 2).
KELLY et al. thus discloses all the recited subject matter but does not disclose the recited total length of the slot with respect to the length of the body. The instant specification discloses throughout that “[a] total length of the slot may be less than 80% of a total length of the body” (emphasis added).
Accordingly, with respect to the limitation of the parameter related to the total length of the slot which is present in the claim(s) at issue, the examiner has found that the specification, as noted above, contains no disclosure of any unexpected results arising therefrom, and that as such the parameter of the slot length is arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) and MPEP 2144.05(III).
With respect to the limitation of the length of the slot, it would have been obvious to one of ordinary skill in the art to have provided the device defined by the disclosure of KELLY et al. with the configurations and/or dimensions recited in the claims which are considered at most optimum choices, lacking any disclosed criticality. Thus, the examiner argues a PHOSITA could form the length of the slot in the prior art device to KELLY et al. to be of any desired length, including less than 80% of the total length of the body, since such a modification would have been understood by the PHOSITA to be well within the realm of obviousness. e.g., by way of common sense, common knowledge generally, common knowledge in the relevant art, manufacturing considerations, the adaptation of the slot length to the shape and size of the squeezable container for which the device is to be employed, and the like.
Applicant has the burden of proving such criticality. In re Swenson et al., 56 USPQ 372; In re Scherl, 70 USPQ 204. However, even though applicant's modification may result in great improvement and utility over the prior art, it may still not be patentable if the modification was within the capabilities of one skilled in the art. In re Sola, 25 USPQ 433; In re Normannet et al., 66 USPQ 308; In re Irmscher, 66 USPQ 314. More particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); In re Swain et al., 70 USPQ 412; Minnesota Mining and Mfg. Co. v. Coe, 38 USPQ 213; Allen et al. v. Coe, 57 USPQ 136; MPEP 2144.05(II)(A).
No probative evidence is of record to demonstrate that the recited slot length dimension and/or other variables of the invention are significant or are anything more than one of numerous dimensions a person of ordinary skill in the art would find obvious for purposes of merely changing the configurations and/or dimensions to obtain different results. Graham v. John Deere Co., 148 USPQ 459.
Accordingly, the examiner argues that the parameter related to the slot length is rather arbitrary and thus obvious over the prior art per MPEP 2144.05(II)(III).
Furthermore, the Federal Circuit has explained that a reason to optimize prior art parameters may be found in a PHOSITA’s desire to improve on the prior art. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (‘‘The normal desire of artisans to improve upon what is already generally known can provide the motivation to optimize variables such as the percentage of a known polymer for use in a known device.’’).
In view of the above guidance, claims 1, 2, 3, 13, 14, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over NEIMY et al. (US 2809770) that discloses in Figures 1-6 a rigid body 10; slot 16 having a length (Figure 6); finger tab 11 having a component of width extending perpendicular to the slot 16; the slot 16 extending along a straight line (Figure 6); and the body defining a tubular section defined by 14, 15, 15 that extends from the tab 11 and defines the slot 16 (Figure 6).
NEIMY et al. thus discloses all the recited subject matter but does not disclose the recited total length of the slot with respect to the length of the body. The instant specification discloses throughout that “[a] total length of the slot may be less than 80% of a total length of the body” (emphasis added).
Accordingly, with respect to the limitation of the parameter related to the total length of the slot which is present in the claim(s) at issue, the examiner has found that the specification, as noted above, contains no disclosure of any unexpected results arising therefrom, and that as such the parameter of the slot length is arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical as explained above.
With respect to the limitation of the length of the slot, it would have been obvious to one of ordinary skill in the art to have provided the device defined by the disclosure of NEIMY et al. with the configurations and/or dimensions recited in the claims which are considered at most optimum choices, lacking any disclosed criticality. Thus, the examiner argues a PHOSITA could form the length of the slot in the prior art device to NEIMY et al. to be of any desired length, including less than 80% of the total length of the body, since such a modification would have been understood by the PHOSITA to be well within the realm of obviousness. e.g., by way of common sense, common knowledge generally, common knowledge in the relevant art, manufacturing considerations, the adaptation of the slot length to the shape and size of the squeezable container for which the device is to be employed, and the like as argued above.
In view of the above guidance, claims 1, 2, 3, 8, 9, 10, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over HARWICK (US 2083603) that discloses in the Figures a rigid body 12; slot 14 having a length (Figure 2) and rounded slot ends at each end of the body (Figure 2); the body 12 having a rounded body edge at 28 across a thickness of the body 12 (Figure 6); the slot 14 has a rounded slot edge across a thickness of the body (Figures 5 ,6 and 7); and the slot 14 extends along a straight line (Figure 2).
HARWICK thus discloses all the recited subject matter but does not disclose the recited total length of the slot with respect to the length of the body. The instant specification discloses throughout that “[a] total length of the slot may be less than 80% of a total length of the body” (emphasis added).
Accordingly, with respect to the limitation of the parameter related to the total length of the slot which is present in the claim(s) at issue, the examiner has found that the specification, as noted above, contains no disclosure of any unexpected results arising therefrom, and that as such the parameter of the slot length is arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical as explained above.
With respect to the limitation of the length of the slot, it would have been obvious to one of ordinary skill in the art to have provided the device defined by the disclosure of HARWICK with the configurations and/or dimensions recited in the claims which are considered at most optimum choices, lacking any disclosed criticality. Thus, the examiner argues a PHOSITA could form the length of the slot in the prior art device to HARWICK to be of any desired length, including less than 80% of the total length of the body, since such a modification would have been understood by the PHOSITA to be well within the realm of obviousness. e.g., by way of common sense, common knowledge generally, common knowledge in the relevant art, manufacturing considerations, the adaptation of the slot length to the shape and size of the squeezable container for which the device is to be employed, and the like as argued above.
In view of the above guidance, claims 1 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over the references to HOLLOWAY et al., NAVOT et al., WO 2007/039889, KELLY et al., NEIMY et al., or HARWICK since these references are considered to disclose the recited slot lengths in claim 1 and the slot widths of claims 5 and 6 as derived from the drawings/proportions in said references, but assuming, arguendo, that the recited slot lengths of claim 1 and the slot widths of claims 5-6 are not shown or disclosed, with respect to the limitation of the parameter related to the slot lengths of claim 1 and the slot widths which are present in the claims 5-6, the examiner has found that the specification contains no disclosure of any unexpected results arising from these slot parameters, and that as such these parameters of the slot length and width are also arbitrary and therefore obvious. Such unsupported limitations cannot be a basis for patentability, since where patentability is said to be based upon particular chosen parameters or upon another variable recited in a claim, the applicant must show that the chosen dimensions are critical as explained above.
With respect to the limitation of the lengths and widths of the slot, it would have been obvious to one of ordinary skill in the art to have provided the device defined by the disclosures of HOLLOWAY et al., NAVOT et al., WO 2007/039889, KELLY et al., NEIMY et al., or HARWICK with the configurations and/or dimensions recited in the claims which are considered at most optimum choices, lacking any disclosed criticality. Thus, the examiner argues a PHOSITA could form the length and width of the slot in the prior art devices to HOLLOWAY et al., NAVOT et al., WO 2007/039889, KELLY et al., NEIMY et al., or HARWICK to be of any desired length and width, including within the lengths of claim 1 and the widths recited in claims 5 and 6, since such a modification would have been understood by the PHOSITA to be well within the realm of obviousness. e.g., by way of common sense, common knowledge generally, common knowledge in the relevant art, manufacturing considerations, the adaptation of the slot width to the shape and size of the squeezable container for which the device is to be employed, and the like as argued above.
NOTE: With regard to the recited slot lengths and slot widths referenced in the above 103 rejections, the examiner notes that there are a finite number of identified and predictable lengths and widths of the slot within the body of the device and that one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Accordingly, the rationale to support a conclusion that the claims would have been obvious is that ''a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.'' Thus, for one skilled in the art to form the slot to be of any desired length and width is not indicia of innovation but merely the result of ordinary skill and common sense. KSR Int'l Co. v. Teleflex Inc., supra.
Allowable Subject Matter
No elected claims stand allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art discloses stirrers/container expelling aids similar to the claimed invention.
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/CHARLES COOLEY/
Examiner, Art Unit 1774
DATED: 16 SEP 2025