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 .
Election/Restrictions
Claims 8-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/15/2025.
This action is non-final.
Claim Rejections - 35 USC § 112
Claim 3 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 a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “popped air bubble” in claim 3 is a relative term which renders the claim indefinite. The term “ popped air bubble” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This limitation as currently claimed does not add any structure to the claim and further more does not define anything more that air which is inherently present in all such coating.
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 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 1, 3-7 and 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hughes et al. (US 2020/0079073) in view of Weiss et al. (US 2011/000802).
In re claim 1: Hughes et al. discloses a beverage container, comprising: a container body comprising an outer surface ([0002]); and a textured graphic disposed on a portion of the outer surface ([0008]), wherein: the textured graphic comprises a plurality of protrusions that are randomly oriented on the portion of the outer surface ([0036]); at least some of the plurality of protrusions have a lateral dimension that is at least 1 mm ([0021]); at least some of the plurality of protrusions have a maximum height of in microns relative to a lowest point on the portion of the outer surface ([0014] and [0045]); and each of the plurality of protrusions comprises an ink and a varnish ([0008]).
Hughes et al. discloses the claimed invention as discussed above with the exception of the following claimed limitations that are taught by Weiss et al.:
Weiss et al. teaches the provision of a printed textured graphic with at least some of the plurality of protrusions have a maximum height of at least 40 microns which can provide a better three-dimensional look and to increase the gripability
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the protrusions height of Hughes et al. with the ranges discussed above as taught by Weiss et al. in order to provide the desired texture for gripping (see [0018] of Weiss et al.).
In re claim 3: an upper surface of at least some of the plurality of protrusions comprises at least one popped air bubble. Hughes et al. inherently discloses the claimed invention except for the expressed disclosure of at least one popped air bubble . The determination of patentability in a product-by-process claim is based on the product itself, even though the claim may be limited and defined by the process. That is, the product in such a claim is unpatentable if it is the same as or obvious from the product of the prior art, even if the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). A product-by-process limitation adds no patentable distinction to the claim, and is unpatentable if the claimed product is the same as a product of the prior art. (Same cite as above)
In re claim 4: at least some of the plurality of protrusions have a lateral dimension that is at least 2 mm ([0021]).
In re claim 5: substantially all of the plurality of protrusions comprise irregular shapes ([0036] and figure 2).
In re claim 6: the container body comprises a neck; and the portion of the outer surface is disposed below the neck ([0002]).
In re claim 7: the portion of the outer surface extends entirely about a circumference of the outer surface ([0002]-{0008]).
In re claim 21: at least some of the plurality of protrusions have a maximum height of at least 80 microns relative to a lowest point on the portion of the outer surface (see [0018] of Weiss et al.).
In re claim 22: at least some of the plurality of protrusions have a maximum height of at least 100 microns relative to a lowest point on the portion of the outer surface (see [0018] of Weiss et al.).
In re claim 23: at least some of the plurality of protrusions have a maximum height of at least 125 microns relative to a lowest point on the portion of the outer surface (see [0018] of Weiss et al.).
In re claim 24: at least some of the plurality of protrusions have a maximum height of between 40 microns and 150 microns relative to a lowest point on the portion of the outer surface (see [0018] of Weiss et al.).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the protrusions height of Hughes et al. with the ranges discussed above as taught by Weiss et al. in order to provide the desired texture for gripping (see [0018] of Weiss et al.).
Response to Arguments
Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive. In regard to claim 1, Hughes discloses the nominal thickness can be 10 microns ([0008]), and that the maximum thickness of the varnish may be three times the nominal thickness of the applied varnish ([0014]) which would create a height of the protrusion around 30 microns, the prior art of Weiss et al. teaches the provision of heights of protrusions (raised features) of 10 microns to 500 microns for providing a better three-dimensional look and to increase the gripability.
Claimed invention need not be expressly suggested in any one or all of the references. Rather, the test for obviousness is what the combined teachings of the applied references, taken as a whole, would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) and In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
See also In re Sneed, 710 F.2d 1544, 1550, 218 USPQ 385, 389 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”); and In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”). In this case, Weiss et al. teaches thicker protrusions to create a desired effect.
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERNESTO A GRANO whose telephone number is (571)270-3927. The examiner can normally be reached M-F 7:00-3:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERNESTO A GRANO/ Primary Examiner, Art Unit 3735