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 .
Response to Arguments
Applicant has failed to overcome the previous Provisional Non-Statutory Double Patenting Rejection from the previous Notification of Refusal, mailed on 30 December 2024. The terminal disclaimer, filed on 27 March 2025, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the co-pending application 35/520,845 has been reviewed but was disapproved by the office. The reason for this disapproval of this terminal disclaimer is because an ADS is required for a terminal disclaimer to be processed. Therefore, the previous rejection based on the Provisional Non-Statutory Double Patenting remains and is made FINAL. Applicant is advised to file a new terminal disclaimer with an ADS so the terminal disclaimer can be processed.
Applicant's amendments and arguments filed 27 March 2025 have been considered and are found to be insufficient to overcome the drawing objection and previous rejection under 35 U.S.C. § 103. Please see the outstanding objection and rejection below, from the previous Notification of Refusal, mailed on 30 December 2024, along with the Examiner’s comments.
Additionally, the amendments to the drawings have necessitated a rejection under 35 U.S.C. 112(a) and (b) to further clarify the bottom of the claim, as it remains indefinite and non-enabled. See MPEP 706.07(a) and MPEP 1207.03(a)(II) for additional guidance.
Previous Objection from the Notification of Refusal mailed on 30 December 2024:
Drawings
The drawings are objected to for the following reason:
Blurry Quality of the Reproductions: The quality of the images are too blurry and the edges are jagged, which inhibits these Reproductions in their ability to clearly illustrate the details of the claimed design. All Reproductions must be made by a process which will give them satisfactory reproduction characteristics. "Every design patent application must include either a drawing or a photograph of the claimed design. As the drawing or photograph constitutes the entire visual disclosure of the claim, it is of utmost importance that the drawing or photograph be clear and complete, and that nothing regarding the design sought to be patented is left to conjecture." MPEP 1503.02. To overcome this objection, all Reproductions should be amended in which the quality and clarity of every detail in the design are well defined and clear enough to fully disclose the claimed design in totality.
See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement.
Replacement Reproductions
Corrected reproductions are required in reply to the Office action to avoid abandonment of the
application. Any amended replacement reproduction 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 reproduction 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. If all the figures on a reproduction sheet are canceled, a replacement sheet
is not required. A marked-up copy of the drawing sheet (labeled as “Annotated Sheet”)
including an annotation showing that all the figures on that reproduction sheet have been
canceled must be presented in the amendment or remarks section that explains the change to
the drawings. Each reproduction 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.
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APPLICANT’S COMMENT:
“The Office has objected to the figures due to alleged blurry quality. While Applicant does not necessarily agree, Applicant submits that this issue has been resolved by the amended figures.”
EXAMINER’S COMMENT:
The amended figures illustrate the same quality of the reproductions, in which the images are too blurry and the edges are jagged, which inhibits these Reproductions in their ability to clearly illustrate the details of the claimed design. Please see the illustration below and the arrows pointing to the jagged edges.
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original disclosure - 1.4 amended Reproduction - 1.4
Previous Rejection from the Notification of Refusal mailed on 30 December 2024:
Rejection - 35 U.S.C. § 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 difference 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 claim is rejected under 35 U.S.C. 103 as being unpatentable over Chinese Patent Registration No. 306173200, published 10 July 2020 (in the attached 892, page 2, citation N) in view of US Patent D1013532 S, published 06 February 2024 (in the attached 892, page 1, citation F). Although the invention is not identically disclosed or described as set forth in 35 U.S.C. 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, on 10 May 2024, to a designer having ordinary skill in the art to which the claimed invention pertains, the invention is not patentable.
The Chinese Patent Reg. No. 306173200 has an overall appearance with design characteristics that are visually similar to those of the claimed design.
These similarities include:
The overall size, proportion, and design characteristics. See “A” below. ·
The size, proportions, and design characteristics of the extruded triangular pump feature. See “B” below. ·
The size, proportions, and design characteristics of the extruded nozzle. See “C” below.
The size, proportions, and design characteristics of the antitamper feature at the base of the pump feature. See “D” below.
The size, proportions, and design characteristics of the curvature on both sides of the nozzle and triangular pump feature. See “E” below.
The size, proportions, and the planar design characteristics of the section below the curve (as mentioned above) and above the indented rim around the dispenser. See “F” below.
The size, proportions, and the design characteristics of the indented rim around the dispenser. See “G” below.
The size, proportions, and the planar design characteristics in the body of the dispenser. See “H” below.
The size, proportions, and the three dimensional design characteristics of the bottom of the dispenser. See “I” below.
The size, proportions, and the three dimensional design characteristics of the heel in the dispenser. See “J” below.
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Claimed Design Chinese patent Reg. No. 306173200 US Patent D1013532 S
The claimed design differs from Chinese Patent Reg. No. 306173200 in that the claimed design has a protruding circular band below the indented rim at the top of the body of the dispenser. See “K” above.
US Patent D1013532 S shows a design that has a protruding circular band below the indented rim at the top of the body of the dispenser. See “K” above.
It would have been obvious to a designer of ordinary skill in the art before the effective filing date of the claimed invention to modify Chinese Patent Reg. No. 306173200 by adding a protruding circular band below the indented rim at the top of the body as seen in US Patent D1013532 S since US Patent D1013532 S demonstrates that the ornamental feature of a protruding circular band on the body of a design is a commonplace feature in the field of designing bottles / dispensers / packaging and would therefore have been an obvious design choice.
The claimed design would have no patentable distinction over the examiner' s combination of references.
This modification of the primary reference in light of the secondary reference is proper because the applied references are visually similar enough that the appearance of features shown in one would suggest the application of those features to the other. Further, it is noted that case law has held that a designer skilled in the art is charged with knowledge of the related art; therefore, the combination of old elements, herein, would have been well within the level of ordinary skill. It is well settled that it is unobviousness in the overall appearance of the claimed design, when compared with the prior art, rather than minute details or small variations in design as appears to be the case here, that constitutes the test of design patentability. See In re Frick, 275 F.2d 741, 125 USPQ 191 (CCPA 1960) and In re Lamb, 286 F.2d 610, 128 USPQ 539 (CCPA 1961).
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APPLICANT’S COMMENT:
“A. Reproductions 1.1-1.5 (perspective and all four sides) show the protruding circular band of the applied-for design meeting the top of the body of the dispenser without material ridging, whereas Alluigi includes prominent ridges in this area.”
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EXAMINER’S COMMENT:
From the provided illustration, the Examiner is understanding the area in which the applicant is pointing to as the space / surface between the protruding circular band and the pump feature on the top area of the dispenser. However, this area is not the design element that is being taught by this secondary reference. In the previous rejection under 35 U.S.C. § 103, the Examiner states that US Patent D1013532 S “shows a design that has a protruding circular band below the indented rim at the top of the body of the dispenser”. The fact that one design has ridges in the indented area and the other design is free from ridges in this indented area is mute, as what is being taught is simply a “protruding circular band below the indented rim at the top of the body of the dispenser.”
Additionally, 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 Merk – Co., 800 F .2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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partial view of amended Reproduction - 1.4 partial view of US Patent D1013532 S
APPLICANT’S COMMENT:
B. Reproduction 1.2 (front) shows a rounded, soft curvature of the pump feature, which is not disclosed by CN '200; and the black portion of the pump feature of reproduction 1.2 covers substantially all of the top surface of the underlying area, whereas CN '200 includes white top surface to the left and right.
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C. Reproductions 1.4 and 1.5 (right and left) show that the rear of the body where it meets the pump feature are generally vertical, and shows the antitampering feature as generally vertical. CN '200 shows these features as being angled frontward.
D. Reproductions 1.4 and 1.5 (right and left) show the bottom portion of the pump feature protruding from the rear of the body. Such protrusion is not present in CN '200
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APPLICANT’S COMMENT:
E. Reproduction 1.6 (top) shows the pad of the pump feature with an arcuate front, whereas the front of the pump feature pad in CN ’200 is straight.
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EXAMINER’S COMMENT:
In response to Applicant’s argument B,C,D, and E, The Examiner submits that there are slight differences in the physical characteristics between the claimed design and Chinese Patent Registration No. 306173200.
These differences include:
B. The ”soft curvature of the pump feature… and the black portion of the pump feature of reproduction 1.2 covers substantially all of the top surface of the underlying area…”. Please see the Examiner’s illustration below.
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partial view of amended Reproduction - 1.2 partial view of Chinese Patent 306173200
C. The “antitampering feature.. as being angled frontward” when compared to the vertical antitampering feature being “generally vertical” in the claimed design. However, the Examiner respectfully disagrees with the Applicant’s statement that “the rear of the body where it meets the pump feature are generally vertical” in the claimed design and that that same feature is “angled frontward” in Chinese Patent 306173200. From the Examiner’s analysis, these two design elements appear to be both “generally vertical”. Please see the Examiner’s illustration below.
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partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
D. “Reproductions 1.4 and 1.5 (right and left) show the bottom portion of the pump feature protruding from the rear of the body. Such protrusion is not present in CN '200”. Please see the Examiner’s illustration below.
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partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
E. The ”pad of the pump feature with an arcuate front, whereas the front of the pump feature pad in CN ’200 is straight.”. Please see the Examiner’s illustration below.
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partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
These differences (B, C, D, and E) , however, are considered de minimis in that the net effect of such nuanced differences does not affect the appearance of the claimed design as a whole and the impression that the design would make to the eye of a designer of ordinary skill. Further, these slight modifications in these design elements are seen as obvious modifications to one skilled in the art of toothpaste dispensers.
These small differences in these design elements are not defining features when the design is viewed as a whole. The preponderance of similarities between Chinese Patent Registration No. 306173200 along with US Patent D1013532 S design, when compared to the applicant’s own design, creates an overall appearance that is patentably indistinct.
Further, one can look to case law for the rational to make these minute modifications.
For instance, case law states that the change or omission or addition of a few minor details would not justify the multiplication of design patents even though the designs may readily be distinguished from each other by one or more features. Substantial differences are required to render one device patentable over another as a design. The novelty of a design must be judged by the test of ornament, and while the final merit of ornamentation may depend upon the harmonious blending of small details mechanical differences which may make a vast difference in the operativeness of the devices may make no appreciable difference between the devices as designs. In re Freeman 1904 C.D. 619; 109 O.G. 1339 (1904).
Further, “Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other.” Door-Master Corp. v. Yorktowne Inc., 256 F.3d 1308, 1313 (Fed. Cir. 2001) (citing Gorham Co. v. White, 81 U.S. 511, 528 (1871)).
APPLICANT’S COMMENT:
F. Reproduction 1.7 (bottom) includes features on the bottom of the toothpaste dispenser that are not disclosed by any of the cited references.
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EXAMINER’S COMMENT:
The Examiner submits that the bottom of the claimed design has features that are not present in US Patent D1013532 S or in Chinese Patent 306173200, which does not disclose a bottom view.
However, upon further review it has been determined that a new rejection under 35 U.S.C. 112(a) and (b) is necessary. This is necessary since the previous rejection did not encompass the entirety of the surfaces on the bottom of the claim that are considered indefinite and non-enabled. Please see the new rejection below.
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Claim Rejections - 35 USC § 112
The claim is rejected under 35 U.S.C. 112(a) and (b) as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim is indefinite and nonenabling due to the following:
Inadequate Visual Disclosure: The visual disclosure is inadequate such that the appearance and shape or configuration of the design for which protection is sought cannot be determined or understood (MPEP § 1504.04). These indefinite and nonenabling areas include:
BOTTOM: Although the design was amended as per the previous Notification of Refusal, mailed on 30 December 2024, further clarification is required. The configuration and depth of the bottom of the claimed design in Reproduction 1.7 cannot be understood from the single plan view. Since an inadequate amount of information is provided, the exact three dimensionality of the claimed design cannot be determined. The innermost surfaces of the bottom of the claimed design appear as if they could be either concave, flush, or a multitude of other spatial relationships to the adjacent surfaces within the claimed design. See the illustration below.
To overcome this rejection, the applicant may disclaim the areas or portions of a claimed design which are considered indefinite and nonenabling in the rejection under 35 U.S.C. 112 above by converting them to broken lines, shown as forming no part of the claimed design. Due to the rendering method in this application, the applicant may convert any nonenabled surfaces to the lightest grey tone in the Reproductions / reducing the saturation and surrounding these nonenabled areas with broken lines. Note that the perimeter of this nonenabled area, the outer edge of the bottom of the claim, is enabled and should remain rendered as is.
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Discussion of the Merits of the Case:
All discussions between the applicant and the examiner regarding the merits of a pending application will be considered an interview and are to be made of record. See MPEP 713. The examiner will not discuss the merits of the application with applicant’s representative if the representative is not registered to practice before the USPTO. Appointment as applicant’s representative before the International Bureau pursuant to Rule 3 of the Common Regulations under the Hague Agreement does NOT entitle such representative to represent the applicant before the USPTO. Furthermore, an applicant that is a juristic entity must be represented by a patent attorney or agent registered to practice before the USPTO. Additional information regarding interviews is set forth below.
Telephonic or In Person Interviews
A telephonic or in person interview may only be conducted with an attorney or agent registered to practice before the USPTO (“registered practitioner”) or with a pro se applicant (an applicant who is the inventor and who is not represented by a registered practitioner).
The registered practitioner may either be of record or not of record. To become “of record”, a power of attorney (POA) in accordance with 37 CFR 1.32 must be filed in the application. Form PTO/AIA /80 “Power of Attorney to Prosecute Applications Before the USPTO”, may be used for this purpose:
https://www.uspto.gov/patent/forms/forms-patent-applications-filed-or-after-september-16-2012
See MPEP 402.02(a) for further information. Interviews may also be conducted with a registered practitioner not of record provided the registered practitioner can show authorization to conduct an interview by completing, signing and filing an “Applicant Initiated Interview Request Form” (PTOL-413A) (available at the USPTO web page indicated above). See MPEP 405. For acceptable ways to submit forms to the USPTO, see “When Responding to Official USPTO Correspondence” below.
If a pro se applicant or registered practitioner located outside of the United States wishes to communicate by telephone, it is suggested that such person email the examiner at darcey.gottschalk@uspto.gov to arrange a time and date for the telephone interview. Please include proposed days and times for the proposed call. When proposing a day/time for the interview, please take into account the examiner’s work schedule indicated in the last paragraph of this communication. The email should also be used to determine who will initiate the telephone call.
Email Communications
The merits of the application will not be discussed via email (or other electronic medium) unless appropriate authorization for internet communication is filed in the application. Form PTO/SB/439 “Authorization for Internet Communications in a Patent Application or Request to Withdraw Authorization for Internet Communications” may be used to provide such authorization and is available at the USPTO web page indicated above. The authorization may not be sent by email to the USPTO. For acceptable ways to submit the authorization form to the USPTO, see “When Responding to Official USPTO Correspondence” below. See MPEP 502.03 II for further information.
When Responding to Official USPTO Correspondence
When responding to an official correspondence issued by the USPTO, including refusals, Ex Parte Quayle, Notice of Allowances, or Notice of Abandonments, please note the following:
The USPTO transacts business in writing. Applicants may submit replies to Office actions only by:
Online via the USPTO's Electronic Filing System-Web (EFS-Web) (Registered eFilers only)
https://www.uspto.gov/patents-application-process/applying-online/efs-web-guidance-and-resources
Mail: Commissioner For Patents, P.O. Box 1450, Alexandria, VA, 22313-1450
Facsimile to the USPTO's Official Fax Number (571-273-8300)
Hand-carry to USPTO's Alexandria, Virginia Customer Service Window
https://www.uspto.gov/patents-maintaining-patent/responding-office-actions
Conclusion
The claim stands rejected under 35 U.S.C. 103. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE E. MORRIS whose telephone number is (571)272-9621. The examiner can normally be reached M-F, 9-5 ET.
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, Shawn Gingrich can be reached on (571)270-0218. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/K.E.M/
Examiner, Art Unit 2934
/CHRISTIAN P. MCLEAN/Supervisory Patent Examiner, Art Unit 2923
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