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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11 and 17-20, drawn to a bottle filler, classified in E03B 9/20.
II. Claims 12-16, drawn to a method of installing a bottle filler on a drinking fountain, classified in B67D 1/08.
The inventions are distinct, each from the other because of the following reasons:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the process as claimed can be used in installing non-beverage (like paint, ink and etc.) dispensing apparatus.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different
classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve 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 restriction 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 upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions 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 inventions 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 invention.
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.
During the return telephone conversation with Mr. MARSTALL, BRIAN, Registration # 73023, on 6/12/2025, a provisional election was made without traverse to prosecute the invention I, where claims 1-11 and 17-20 read on the elected invention. Affirmation of this election must be made by applicant in replying to this Office action.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
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 1-11 and 17-20 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.
In claim 1, line 4, the recitation “at least one of the drinking fountain and the structure” appears to be a double inclusion of the “drinking fountain that is supported by a structure” recited in line 1. Clarification is respectfully requested. Similar rejection applies to claim 17.
Claim 1 recites the limitation "the drinking fountain" in line 2. There is insufficient antecedent basis for this limitation in the claim. The drinking fountain recited in line 1 is insufficient because it is not a positively recited element. The term “for" in line 1 indicates that the drinking fountain is not a positively recited element (an optional element in the claimed invention). However, the drinking fountain in line 2 is positively recited to be in fluid communication with a water supply conduit (a must in the claimed invention). Therefore, the claim is indefinite because the claim is ambiguous and fails to define the metes and bounds of the subject matter to be protected by the patent grant. Clarification is respectfully requested. Similar rejection applies to all pending claims.
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 (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 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.
Claim(s) 1-10 and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morris et al. (US20220048751. Morris hereinafter).
With respect to claim 1, Morris discloses a bottle filler (40. Figs. 1-7) for (capable of) coupling to a drinking fountain (10) that is supported by a structure (12 and 36), the drinking fountain in fluid communication with a water supply conduit (17), the bottle filler comprising: a frame (Figs. 3A-3C and body of 40) configured to (capable of) be supported on at least one of the drinking fountain and the structure supporting the drinking fountain (Figs. 4-7); a spigot (58) for dispensing liquid, the spigot supported on the frame; and a connection line (connecting 58. Fig. 7) in fluid communication with the water supply conduit, the connection line providing water to the spigot.
With respect to claim 2, Morris discloses the bottle filler of claim 1, wherein the frame includes a lower portion (of 34) having a hole or slot (37), the hole or slot configured to (capable of) receive a portion of the structure (36) supporting the drinking fountain.
With respect to claim 3, Morris discloses the bottle filler of claim 1, wherein the structure supporting the drinking fountain includes a plurality of bolts (36) protruding from a wall (12), wherein the frame includes a lower portion (of 34) having a plurality of holes or slots (37), each of the plurality of holes or slots being configured to (capable of) slide down over one or more of the bolts.
With respect to claim 4, Morris discloses the bottle filler of claim 1, wherein the frame further includes an opening (for 58 or at 55. Fig. 7), the opening configured to (capable of) receive the water supply conduit therethrough.
With respect to claim 5, Morris discloses the bottle filler of claim 1, further comprising an actuator (64 or foot pedal, hand operated button/bar or another mechanical or pneumatic actuation mechanism. [0048]), wherein, while the actuator is activated, liquid is dispensed from the spigot, wherein, while the actuator is not activated, liquid is not dispensed from the spigot ([0047]-[0048]).
With respect to claim 6, Morris discloses the bottle filler of claim 5, wherein the actuator is a push button ( [0048]).
With respect to claim 7, Morris discloses the bottle filler of claim 5, wherein the frame includes a bottle receiving portion (66) having a central section (recess of 66) between two side sections (side walls of 66), wherein the actuator is supported (indirectly) on one of the side sections.
With respect to claim 8, Morris discloses the bottle filler of claim 5, further comprising a valve (16) for (capable of) controlling flow to the spigot through the connection line, the valve operable to be opened when the actuator is activated, thereby permitting liquid to be dispensed from the spigot ([0039] and [0047]-[0048]).
With respect to claim 9, Morris discloses the bottle filler of claim 1, wherein the frame includes a lower portion (of 34), a bottle receiving portion (66) positioned above the lower portion, and a header (60) positioned above the bottle receiving portion, the lower portion configured to (capable of) engage the drinking fountain and/or the structure supporting the drinking fountain, wherein the spigot is positioned on the header (Figs. 4-7).
With respect to claim 10, Morris discloses the bottle filler of claim 1, wherein the frame includes a lower portion (of 34), wherein the frame includes a panel (44) above the lower portion configured to (capable of) at least partially rest on an upper surface of the drinking fountain.
With respect to claim 17, Morris discloses a bottle filler (40. Figs. 1-7) for (capable of) coupling to a drinking fountain (10) that is supported on a wall (12 and 36), the drinking fountain in fluid communication with a water supply conduit (17 and supply main), the bottle filler comprising: a frame (Figs. 3A-3C and body of 40) configured to (capable of) be supported on at least one of the drinking fountain and a structure (36 and wall anchor. Fig. 2) supporting the drinking fountain on the wall, a lower portion (of 34) of the frame configured to (capable of) be positioned between the wall and the drinking fountain; a spigot (58) for dispensing liquid; and a connection line (58 and upstream line) configured to (capable of) be fluidly coupled to the water supply conduit to (capable of) provide water from the water supply conduit to the spigot.
With respect to claim 18, Morris discloses the bottle filler of claim 17, wherein the lower portion of the frame includes a plurality of holes or slots (37), the plurality of holes or slots configured to (capable of) receive a portion of the structure (36 and wall anchor) supporting the drinking fountain, wherein the structure supporting the drinking fountain includes a plurality of bolts (36) protruding from or through the wall, each of the plurality of holes or slots being configured to (capable of) slide down over one or more of the plurality of bolts.
With respect to claim 19, Morris discloses the bottle filler of claim 17, wherein the frame further includes an opening (for 58 or at 55. Fig. 7), the opening configured to (capable of) receive the water supply conduit therethrough.
With respect to claim 20, Morris discloses the bottle filler of claim 17, further comprising an actuator (64 or foot pedal, hand operated button/bar or another mechanical or pneumatic actuation mechanism. [0048]) and a valve (16) for (capable of) controlling flow to the spigot through the connection line, the valve operable to be opened when the actuator is activated, thereby permitting liquid to be dispensed from the spigot ([0039] and [0047]-[0048]).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morris in view of Lovern, IV (US 20210323727. Lovern hereinafter).
With respect to claim 11, Morris discloses the bottle filler of claim 1, Morris fails to disclose wherein the frame is formed of stainless steel having a powder coat.
However, Lovern teaches a drinkware (similar endeavor with a drinking fountain), wherein the body is formed of stainless steel having a powder coat (Abstract).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of the frame formed of stainless steel having a powder coat, as taught by Lovern, to Morris’s frame, in order to provide a protective layer for the first design layer and the stainless steel band. Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to design the frame formed of stainless steel having a powder coat in order to provide aesthetically pleasing appearance. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following patents are cited to show the art with respect to a drinking fountain: McCabe, Hartnig, Jones, Yoh, Beswick, Levey, Brenkus, Till, Brombin, Cedrone, Bruch, Gueguen and Baumgartner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHEE-CHONG LEE whose telephone number is (571)270-1916. The examiner can normally be reached on Monday-Friday 8am -5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arthur O. Hall can be reached on (571)270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHEE-CHONG LEE/Primary Examiner, Art Unit 3752 June 12, 2026
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