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
The Examiner acknowledges the cancellation of Reproduction 1.7, therefore the previous rejection under 35 U.S.C. 112(a) and (b) has been overcome. However, no amended Specification was submitted that corresponds with the cancelation of Reproduction 1.7. Please see the objection to the Specification below.
The arguments filed 27 January 2026 have been considered and are found to be insufficient to overcome the previous rejection under 35 U.S.C. § 103. Therefore, the claim is again and FINALLY rejected under 35 U.S.C. § 103 as being unpatentable over Chinese Patent Registration No. 306173200 (published 10 July 2020) in view of US Patent D1013532 S (published 06 February 2024) and Chinese Patent Registration No. 303504640 (published 16 December 2015) because 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 on 18 March 2024.
Specification
The disclosure is objected to because of the following informalities:
Improper Descriptions of the Reproductions: Descriptions of the figures are not required to be written in any particular format; however, they must describe the views of the drawing clearly and accurately. See MPEP 1503.01(I)(II). Currently, although Reproduction 1.7 was cancelled in the drawing disclosure, the description of said drawings is still within the Specification. In order to correspond with the Reproductions, and to overcome this objection, un update Specification should be submitted in which the description for Reproduction 1.7 is cancelled.
Appropriate correction is required.
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.
On page 8 of the Office Action of August 28, 2025, the Office argues that the Office has not cited this area of Alluigi for the element being referred to, and thus "[t]he 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 intended rim at the top of the body of the dispenser. "' Nevertheless, Applicant respectfully submits that this is improper because this area is necessarily imputed to the combination of CN '200 with Alluigi, because the Office is citing the protruding circular band of Alluigi and the top of the protruding circular band includes this distinct ridging. Thus, when one of ordinary skill in the art combines the protruding circular band of Alluigi with CN '200, that combination would include the ridging. Moreover, if the Office is not citing Alluigi for this element, then this distinctive element is not disclosed or suggested by any of the prior art, providing an independent ground for non-obviousness.”
PNG
media_image1.png
457
656
media_image1.png
Greyscale
EXAMINER’S COMMENT:
For further clarity in regards to the rationale for this rejection, the Examiner has added additional comments to each “difference” between the prior art and the claimed design. These additional explanations satisfy the new requirements of factual inquiries under the current standard set forth under LKQ Corporation v. GM Global Technology Operations LLC.
EXAMINER’S COMMENT:
In regards to US Patent D1013532 S, Alluigi, the ridge above the band is not a design element that is necessarily a part of the band, which is the design element that is being taught by this secondary reference. Therefore, 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.”
Further, the presence of a ridge within the teaching reference, even though this is not the portion that is being taught by the teaching reference, is such a small portion of these designs compared to the overall design, that any minute difference within the section of the designs would be viewed as de minimis in nature and unrelated to the overall aesthetic appearance of the design. Ex parte Pappas (BdPatApp&Int) 23 USPQ2d 1636; In re Blum, 153 USPQ 177 (CCPA 1967). This difference between the claimed design and the prior art is considered de minimis because the net effect of the difference 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. Ex parte Pappas (BdPatApp&Int 1992) 23 USPQ2d 1636.
In the case of In re Lamb 128 USPQ 539 (1961), the court ruled that an applicant's design is not patentable over prior art design since minor differences between designs do not create impression of a new or different design; the overall appearance is the same; fact that some dimensions are changed in a different degree than others is not patentably significant. Further, in the case of In re Lapworth, 172 USPQ 129 (C.C.P.A. 1971), the Board’s opinion was that “It is distinctiveness in overall appearance of an object, when compared with the prior art, rather than minute details or small variations in configuration as appears to be the case here, that constitutes the test of design patentability.
PNG
media_image2.png
499
1239
media_image2.png
Greyscale
Claimed Design Chinese patent Reg. No. 306173200 US Patent D1013532 S
APPLICANT’S COMMENT:
B. Reproduction 1.1 (perspective) shows the transparent cap as having softer, rounded edges at the top, and a top surface that is substantially flat as it moves inward from the top edge until dropping off into a cavity; whereas the cap of CN '640 includes a harder, sharper top edge; and a bowl shaped top surface that tapers downward from the edge moving inward.
C. 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.
D. 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.
E. 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
F. 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.
Beginning on page 12 of the outstanding Office Action, the Office "submits that there are slight differences in the physical characteristics between the claimed design," on the one hand, and CN '200 and CN '640 on the other hand. Nevertheless, as outlined on page 17 of the Office Action, the Office has considered these differences to be "de minimis in that the net effect of such nuanced differences does not affect the appearance of the claimed design as a whole."
Applicant respectfully disagrees and submits that the rejection is improper. The Office has piecemealed together three different references and then discounted no less than six different design differences as "de minimis" in nature, without providing any rationale for the exclusion of these elements to the overall visual impression of the design. Under LKQ Corp. v. GM Global Tech. Operations LLC 71 F.4th 1381(Fed. Cir. 2024) (en banc) and the USPTO's memorandum issued thereafter (see https:www.uspto.gov/sites/defult/files/documents/updated obviousness determination designs 22may2024.pdf, last visited January 27, 2026), the Office must make factual inquiries into (1) the scope and content of the prior art, (2) differences between the prior art and the design as claimed at issue, and (3) the level or ordinary skill in the art. While the Office here has acknowledged the six differences raised in Applicant's response, the Office has not made the other factual inquiries, and thus has failed to make out a prima facie case of obviousness. Instead, the Office has impermissibly used hindsight from Applicant's drawings to simply discount no less than six design differences as "de minimis." Applicant submits that this improper, and thus requests the withdrawal of the rejection.
EXAMINER’S COMMENT:
In response to Applicant’s argument B, C, D, E, and F The Examiner submits that there are slight differences in the physical characteristics between the claimed design and the prior art.
These differences include:
B. A ” transparent cap as having softer, rounded edges at the top, and a top surface that is substantially flat as it moves inward from the top edge until dropping off into a cavity; whereas the cap of CN '640 includes a harder, sharper top edge; and a bowl shaped top surface that tapers downward from the edge moving inward.” Please see the Examiner’s illustration below. It appears to the Examiner that the caps of these two design characteristics are visually similar. Both caps have a rounded outer edge, and three concentric circular design elements. Any modifications in the proportions of curvature or slight depth changes within these design elements are such minute and nuanced differences that they would be considered de minims in nature. Further, case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949).
PNG
media_image3.png
380
765
media_image3.png
Greyscale
partial view of amended Reproduction - 1.1 partial view of CN303504640
PNG
media_image4.png
847
1293
media_image4.png
Greyscale
partial view of amended Reproduction - 1.1 partial view of CN303504640
C. The claimed design has 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. Please see the Examiner’s illustration below.
PNG
media_image5.png
593
946
media_image5.png
Greyscale
partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
D. The “antitampering feature.. as being angled frontward” when compared to the vertical antitampering feature in the claimed design. However, the Examiner respectfully disagrees with the Applicant in the 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.
PNG
media_image6.png
742
1218
media_image6.png
Greyscale
partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
E. That the claimed design “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.
PNG
media_image7.png
721
1178
media_image7.png
Greyscale
partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
F. 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.
PNG
media_image8.png
538
1099
media_image8.png
Greyscale
partial view of amended Reproduction - 1.4 partial view of Chinese Patent 306173200
No new evidence or arguments are presented that would place this application in a better condition for an allowance.
These differences (B, C, D, E, and F) 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 and CN303504640, 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 rationale to make these minute modifications.
The Examiner submits that the following prior art has design features that have slightly different proportions in some of the design features than that of the claimed design, please refer to “C”, “D”, and “E” above. However, case law states that the presence of invention is as essential to granting of design patent as to granting of mechanical patent; obvious changes in arrangement and proportioning are no more patentable in one case than in the other. In re Stevens 624 O.G. 366; 81 USPQ 362(1949).
In regards to “F” above, where the claimed design has a soft inward curve, while Chinese Patent 306173200 has a straight edge in that same location. The modification a straight edge to a curved edge, on the top portion of the designs, does not influence the overall appearance of the toothpaste dispensers to the extent that it can be said that it establishes such novelty and originality in its configuration that the average observer would accept it as an appearance wholly different; that the average observer would merely view it as a modification that appellants have merely impressed upon the fundamental configuration of the prior art which per se are obvious expedients to a routine designer and which in nowise changes the general overall appearance of the configuration.
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).
“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)).
- - - - - -
Previous Rejection from the Notification of Refusal mailed on 31 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 G) and CN303504640, published 16 December 2015 (in the attached 892, page 1, citation T). 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.
PNG
media_image9.png
684
917
media_image9.png
Greyscale
Claimed Design Chinese patent Reg. No. 306173200 US Patent D1013532 S CN303504640
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 “L” above. Additionally, the claimed design differs from Chinese Patent Reg. No. 306173200 in that the claimed design has a planar transparent cap. 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 “L” above. Chinese Patent Reg. No. 303504640 has a planar transparent cap. 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 and a planar transparent cap as seen in Chinese Patent Reg. No. 303504640. These referenced design features in US Patent D1013532 S and Chinese Patent Reg. No. 303504640 demonstrates that these ornamental features of a protruding circular band on the body of a design and a planar transparent cap are commonplace features 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.
Additionally, the claimed design has a body that is free from surface ornamentation whereas the
Chinese Patent Reg. No. 306173200 has a body with a sticker or surface ornamentation. However, the surface ornamentation on the body of Chinese Patent Reg. No. 306173200 is mere indicium and removal thereof would not override the underlying design of Chinese Patent Reg. No. 306173200 as a whole. In re Daniels, 144 F.3d 1452, 1456-57, 46 USPQ2d 1788, 1790 (Fed. Cir. 1998). Similarly, the lack of a sticker on the claimed design is considered de minimis and unrelated to the overall aesthetic appearance of the dispensers. In re Lapworth, 172 USPQ 129 (CCPA 1971); In re Lamb, 286 F.2d 610, 128 USPQ 539 (1961).
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).
- - - - - -
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, 8-4 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, Wendy Arminio, can be reached on (571)270-0221. 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.
/K.E.M/
Examiner, Art Unit 2923
/ANDREW KERR/Primary Examiner, Art Unit 2921
Prosecution Insights