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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-16, 18-21, 23-30 and 32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 13 recites wherein “at least one of the projections are free of any aperture”, but the projections of the original disclosure are formed by “pressing, deforming or pushing material from the peripheral wall inwardly towards the interior of container” (Specification, par. 0029). This requires that the projections have an aperture at the outer wall of the container and therefore they are not free of “any aperture”. Therefore, the limitation is new matter.
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 13-16, 18-21, 23-30 and 32 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.
Claim 13 recites wherein at least one of the projections is free of any aperture, but the projection has an internal channel which is an aperture. It is unclear how the projection can be free of any aperture if it is formed by an aperture.
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) 13-16, 18, 20, 21, 23-27, 29 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borowski et al. (US-8042704-B2) in view of Bosio et al. (US-20180127178-A1).
Borowski discloses a container (10) having a closed lower end (12), an upper end (16) with an opening and a peripheral wall (14) extending between the upper and lower ends defining an interior of the container (Fig. 1); a utensil (30) having a longitudinal axis, wherein a portion of the peripheral wall extends inwardly toward the interior of the container to form a first projection (36) and a second projection (36) extending from the peripheral wall to the interior of the container the projection being configured to removably retain the utensil within the interior of the container without insertion through an opening in the projection (col. 3, lines 9-19) and free of any apertures (Fig. 2, the apertures formed are not in the projection), a mating feature (20) for cooperating with a lid (26), wherein the projection is disposed between the mating feature and the closed lower end (Fig. 1), wherein the projection comprises an elongate body that forms a space (38) between the elongate body and an inner surface of the peripheral wall, wherein the space is sized to receive a portion of the utensil, wherein the at least a portion of the utensil extends through the space between the elongate body of the projection and the inner surface of the peripheral wall such that the utensil is retained below the upper end of the container (col. 3, lines 9-19), wherein projection is configured such that the utensil extends through the space in a direction having an angle of about 45 degrees to about 90 degrees relative to the closed lower end (Fig. 1), wherein the projection is a first projection, wherein the first and second projections each comprise an elongate body that together form a space (38) between the projections and an inner surface of the peripheral wall, wherein the space is sized to receive a portion of the utensil, wherein the first and second projections each have a first end adjacent an inner surface of the peripheral wall and a second end within the interior of the container, wherein the second ends are adjacent to each other (Fig. 2), a sealable lid (26) coupled to the container, wherein the utensil is disposed below the sealable lid within the interior of the container when the utensil is retained by the projection and wherein the lid and the projections are sized to create a space between a bottom of the lid and an end of the utensil small enough to inhibit or prevent the utensil from becoming loose and fall into the media (col. 3, lines 9-19), wherein the first and second projections are substantially aligned with each other (Fig. 2), wherein the container comprises a first portion and a second portion, wherein the first projection is molded with the first portion and the second projection is molded with the second portion (col. 2, lines 39-42), wherein the utensil comprises a scoop having a handle (32) and a bowl (34), wherein the handle extends through the space between the peripheral wall of the container and the projection and the bowl of the utensil rests on the projection below the upper end of the container (col. 3, lines 9-19), and a powdered infant formula (col. 2, lines 58-60).
Borowski fails to teach wherein the projection is formed by a continuous inward deformation of the peripheral wall, wherein the peripheral wall has an outer surface and the first and second projections each comprise an internal channel, wherein the internal channel of each of the first and second projections extends from the outer surface to the second end, wherein the projections extend in directions substantially perpendicular to the longitudinal axis of the utensil.
Bosio teaches that it is known in the art to manufacture utensil holding projections (42) formed by a continuous inward deformation of peripheral wall (par. 0062).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the projections as deformations, as taught by Bosio, in order to reduce the amount of material used and since such a modification would be the use of a known technique to produce a known structure for the same purpose. The modified projections of Borowski would each comprise an internal channel, wherein the internal channel of each of the first and second projections extends from the outer surface to the second end (based on the modified structure since the projections extend inward from the peripheral wall). The channels would extend perpendicularly to the axis of the utensil when the container of Borowski was modified.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borowski et al. (US-8042704-B2) in view of Bosio et al. (US-20180127178-A1), as applied above, and further in view of Shendelman (US-11147403-B1).
The modified container of Borowski teaches all the claimed limitations as shown above but fails to teach wherein the first and second ends contact each other.
Shendelman teaches that it is known in the art to manufacture a utensil holder with a second end (102) of a first projection that is in contact with a second end (104) of a second projection (Fig. 3).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the projections such that they were in contact, in order to adjust the container for different shaped utensils or to more securely hold a utensil.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borowski et al. (US-8042704-B2) and Bosio et al. (US-20180127178-A1), as applied above, and further in view of Mutschlechner (US-20110198262-A1).
Borowski fails to teach wherein the utensil comprises tweezers.
Mutschlechner teaches that tweezers can be used as a utensil in a container (par. 0013).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the container with tweezers, in order to adjust for different container contents an tweezers are a known utensil.
Claim(s) 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Borowski et al. (US-8042704-B2) and Bosio et al. (US-20180127178-A1), as applied above, and further in view of Zastar (US-20230312178-A1).
Borowski fails to teach wherein the container has cannabis.
Zastar teaches that containers can hold cannabis (par. 0004).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have manufactured the container with cannabis, in order to store cannabis and such a material is known in the art.
Allowable Subject Matter
Claims 1-5, 9, 11-12 and 32 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to teach or reasonably suggest the claimed container for use with a utensil with a first indentation in the outer surface of the peripheral wall, the indentation forming a first projection extending from the peripheral wall into an interior of the container, wherein the first projection has a length extending in a first direction from the peripheral wall into the interior of the container and a width extending in a second direction perpendicular to the first direction, wherein the length is greater than the width; and a second indentation in the outer surface of the peripheral wall, the indentation forming a second projection extending from the peripheral wall into the interior of the container, wherein the second projection has a length extending in a third direction from the peripheral wall into the interior of the container and a width extending in a fourth direction perpendicular to the third direction, wherein the length is greater than the width, wherein the first and second projections each have a first end adjacent an inner surface of the peripheral wall and a second end within the interior of the container and wherein the second end of the first projection is in contact with the second end of the second projection, the first and second projections being configured to removably retain the utensil within the interior of the container .
Response to Arguments
Applicant’s arguments, filed 4/13/2026, with respect to claims 1-5, 9, 11-12 and 31 have been fully considered and are persuasive. The rejection of claims 1-5, 9, 11-12 and 31 has been withdrawn.
Applicant's arguments with respect to claims 13-21, 23-30 and 32 have been fully considered but they are not persuasive. one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY R ALLEN whose telephone number is (571)270-7426. The examiner can normally be reached 9:00 am - 5:00 pm, Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Jenness can be reached at (571)270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY R ALLEN/Primary Examiner, Art Unit 3733
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