Beverage bottle

§102 §112

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 Acknowledgement / Traversal / Discussion of Groupings Applicant's provisional election of Group I with traverse is acknowledged. However, the requirement for restriction between Groups I through II is FINAL. Applicant's argument in traversal of the restriction requirement is that: “The restriction requirement is improper because the body of the bottle and the cap of the bottle do not constitute independent or distinct designs. Under established design patent practice, a single application may claim a combination of multiple parts embodied in a single article. The cap and the body possess a clear, dependent relationship. The cap is specifically contoured to fit the exact neck finish and profile of the claimed bottle body, thereby sharing identical surface ornamentation and a common design vocabulary. Separating the bottle from the cap destroys the overall aesthetic harmony of the complete article. Because Groups 1 and 2 form a single inventive concept, examining both groups creates no serious additional search burden for the Examiner.” In this particular application, there are two embodiments claimed, the first is for a “Beverage Bottle” and the second is for a “Bottle Cap”. The presently claimed design neither shows or describes the “Beverage Bottle” and “Bottle Cap” as being part of an assembly / unit. Thus, a restriction was made between these two patentably distinct designs within the previous action. The restriction requirement maintained in this application has been made FINAL. Applicant’s Comment: “The restriction requirement is improper because the body of the bottle and the cap of the bottle do not constitute independent or distinct designs. Under established design patent practice, a single application may claim a combination of multiple parts embodied in a single article. The cap and the body possess a clear, dependent relationship. The cap is specifically contoured to fit the exact neck finish and profile of the claimed bottle body, thereby sharing identical surface ornamentation and a common design vocabulary. Separating the bottle from the cap destroys the overall aesthetic harmony of the complete article.” Examiner’s Response: The titles of these embodiments are for two different articles of manufacture, “Beverage Bottle” and “Bottle Cap”. These two different articles of manufacture are neither shown nor described within the originally filed claim as being “a combination of multiple parts embodied in a single article.” MPEP 1503.01 (III) states that “A design patent application may only include a single claim.” MPEP 1503.01 (I) states that “When a design is embodied in an article having multiple functions or comprises multiple independent parts or articles that interact with each other, the title must clearly define them as a single entity, for example, combined or combination, set, pair, unit assembly.” Here, the two different embodiments are entitled “Beverage Bottle” and “Bottle Cap”. Neither of these titles illudes to either embodiment being part of a set, pair, unit, etc. Please note that: “The title of the design identifies the article in which the design is embodied by the name generally known and used by the public and may contribute to defining the scope of the claim.” See Curver Luxembourg, SARL v. Home Expressions, Inc. See MPEP § 1504.04, subsection I.A. "A design claim is limited to the article of manufacture identified in the claim; it does not broadly cover a design in the abstract." In re SurgiSil, L.L.P., 14 F.4th 1380, 1382, 2021 USPQ2d 1008 (Fed. Cir. 2021). Further, the Descriptions of the Reproductions do not describe, in either embodiment, that the designs are part of an assembly etc., such as “the cap portion of the design is shown separately from the rest of the BEVERAGE BOTTLE WITH CAP for illustrative clarity”. Additionally, within the Reproductions, the “Beverage Bottle” and “Bottle Cap” are not illustrated together, which would convey that they are part of a single article. Applicant’s Comment: “Because Groups 1 and 2 form a single inventive concept, examining both groups creates no serious additional search burden for the Examiner.” Examiner’s Response: Explanation of Restriction Differences – Utility / Design Under the statute an application with two or more independent and distinct inventions may be restricted only if each of the inventions is able to support a separate patent and is either independent or distinct. With a utility application, there are two criteria for properly requiring restriction between patentably distinct inventions: The inventions must be independent and There must be a serious burden on the examiner. The provisions of Title 35 relating to patents for inventions apply to patents for designs, except as otherwise provided. Restricting between distinct inventions is one area where other provisions have been made for design patents in at least two respects: Burden to the examiner, and Discretion to restrict In design practice there is only one criterion for properly requiring restriction between distinct inventions: The designs must be patentable over one another. The serious-burden-on-the-examiner requirement rarely applies. This difference in design practice stems from the decision made in the case of In re Rubinfield. In that case the court was dealing with the issue of multiple claims in a design application. The court concluded the regulation requiring a design application contain only one claim be preserved. The court held an applicant may illustrate more than one embodiment of a design invention under the single claim as long as the embodiments involve a single inventive concept. The USPTO understands “a single inventive concept” includes only patentably indistinct variations of a design according to the standard of obviousness double patenting. We find this statement in the MPEP §803: If the search and examination of an entire application can be made without serious burden, the examiner must examine it on the merits, even though it includes claims to independent or distinct inventions. However, the statement does not apply to design applications because this is an instance where other provisions have been made for design practice. In addition, because of the single-claim regulation, once the presence of patentably distinct designs in the application has been determined, the decision to restrict is not at the examiner’s discretion. In brief, please refer to MPEP 1502.01(C),(D): (C) Design patent applications include only a single claim, while utility patent applications can have multiple claims. (D) Restriction between plural, distinct inventions is discretionary on the part of the examiner in utility patent applications (see MPEP § 803), while it is mandatory in design patent applications (see MPEP § 1504.05). Election/Restriction Group II (2.1 – 2.14) are withdrawn from further consideration by the Examiner, 37 CFR 1.142(b), as being for the nonelected design. Election was made with traverse in the reply filed on 05 August 2026. Reproductions The drawings are objected to for the following reason: Drafting Errors / Inconsistencies within the Reproductions: There appears to be drafting errors and / or inconsistencies within the disclosure. As an example, there appears to be drafting errors / drawing inconsistencies in Reproductions 1.3 and in 1.4 when compared to the rest of the drawing disclosure. See the illustration below. In order to overcome this objection, amended drawings should be submitted that consistently illustrate the same design. Further, for clarity in the claim, any visual breaks in the lines, throughout the drawing disclosure, should be amended. PNG media_image1.png 751 1303 media_image1.png Greyscale 1.4 1.16 See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement. While the examiner has highlighted many of the inconsistencies between the views, the list may not be exhaustive and the onus is on the applicant to locate and correct all inconsistencies and provide a full, clear and concise disclosure. Note that, any amendments to the Reproductions, in which to clarify the claim, must not introduce new matter and must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that the applicant was in possession of the amended design at the time of filing. When responding to this objection, the Examiner requests that a clean copy of the amended Reproductions be submitted of the elected Group I. Specification The disclosure is objected to because of the following informalities: Need to Cancel Descriptions of the Unelected Reproductions: In response to the election made on 05 August 2026, in which the applicant elected Group I: Embodiment 1: 1.1-1.14. The current 2.1-2.14 descriptions of the Reproductions are objectionable because they are directed to a non-elected invention. In order to overcome this objection, the 2.1-2.14 descriptions of the Reproductions should be canceled from the Specification. Extraneous Description: Portions of the paragraph, following the descriptions of the Reproductions, which begins with “The design is a gin bottle….” And ends with “…no colour is claimed” are extraneous information describing what is shown in the reproductions, which adds no new information to the understanding of the claimed design. Any description of the design in the specification other than a brief description of the drawing is generally not necessary, since as a general rule, the illustration in the drawing views is its own best description. See In re Freeman, 23 App. D.C. 226 (App. D.C. 1904). In order to overcome this objection, the paragraph described above should be amended to remove the portions of this statement that solely describe what is seen in the drawing disclosure and may retain the portions in regards to the usage (gin bottle) and scope of the claim (no colour is claimed). See Hague Rule 7(5)(a), 37 CFR 1.1024, MPEP 2920.04(a) ll. The Examiner suggests that the descriptive statement, removing the extraneous portions of the descriptions of the drawings, be amended to the following: - - The design is for a gin bottle. No colour is claimed. - - When responding to these objections, the Examiner requests that a clean copy of the amended Specification be submitted. Appropriate correction is required. Examiner’s Comment The presently claimed design appears to be a complex three-dimensional product. The Applicant, however, failed to provide an adequate visual disclosure that sufficiently conveys this complex design, which may have included for example; shading, and / or photographs within an Appendix. Therefore, the Examiner is limited to interpreting the claimed design with the provided line drawings. The lack of details within the line drawings contribute to the Examiner’s position of non-enablement and indefiniteness set forth within this action. 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 / Inconsistencies within the Reproductions: Due to both an inadequate visual disclosure as well as inconsistencies within the Reproductions, the claim is indefinite and non-enabled. These areas with an inadequate visual disclosure / inconsistencies include: The “feet” portion of the design is indefinite and non-enabled due to both an inadequate visual disclosure as well as inconsistencies between the views. The quantity and physical characteristics of these gently curving “scalloped” design elements appear vague and inconsistent within the disclosure. Please see the illustration on the following page in which this area is highlighted in grey. PNG media_image2.png 537 1020 media_image2.png Greyscale 1.1 1.3 1.14 1.13 The “tail feathers” portion of the design is indefinite and non-enabled due to both an inadequate visual disclosure as well as inconsistencies between the views. The quantity and physical characteristics of these gently curving “scalloped” design elements appear vague and inconsistent within the disclosure. Please see the illustration on the following page. Consistency and clarity are required. PNG media_image3.png 512 828 media_image3.png Greyscale 1.10 1.9 1.5 In order to overcome this rejection, amended Reproductions should be submitted in which the visual disclosure is adequate, clear, and consistent between the views. "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. The Examiner suggests that the Applicant may add shading in order to aid in the visual understanding of the claim. Please note though that, any amendment must not introduce new matter and must meet the written description requirement of 35 USC 112(a). That is, it must be apparent that the applicant was in possession of the amended design at the time of filing. See 37 CFR 1.1026 and Rule 9 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement. Note: While every attempt has been made to address all possible issues with the disclosure, additional instances may exist. Applicant is reminded on the necessity to set forth a clear and consistent disclosure. Because of the inconsistencies, and insufficient information in the drawings provided, the claimed design is in fact subject to multiple interpretations, and one of ordinary skill in the art would not be able to reproduce the design without the use of conjecture. This renders the claim non-enabled. In order to overcome this rejection, it is suggested that the design be shown clearly and consistently among the views. All inconsistencies should be remedied or otherwise satisfactorily explained, amended to form no part of the claim, or figures cancelled [if such does not negatively impact understanding of the remaining disclosure]. Inconsistency that cannot be either corrected or satisfactorily explained should be amended to form no part of the claim with lightweight broken lines. However, care must be taken to not introduce new matter. If applicant chooses to exclude portions of the design from the claim by converting those portions of the article to broken lines, the amendment must meet the written description requirement of 35 USC 112(a). It must be apparent that applicant was in possession of the amended design at the time of original filing. When preparing new or replacement drawings, be careful to avoid introducing new matter. New matter is prohibited by 35 U.S.C. 132 and 37 CFR 1.121(f). Replacement Reproductions Applicant is reminded that any reply to this Refusal must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b). Additionally, renumbering of the drawing figures in any elected Group is neither required nor permitted. For ease of comparison with the International Registration, and for compliance with 37 CFR 1.1026 and Section 405 of the Administrative Instructions, the numbering of the drawing figures included in the elected Group must not be changed. In response to the election, applicant is requested to direct cancellation of all drawing figures and corresponding description from the nonelected Group(s). In as much as the appearance of the design can be understood, the claim is rejected under: Claim Rejections - 35 U.S.C. § 102(a)(1) The claim is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aquila_Aquilagin.com (Citation “U”, on the attached (and on the former) PTO-892) 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. Aquila_Aquilagin.com was first made publicly available on 15 January 2025, which is before the effective filing date of the presently claimed design on 19 September 2025. The appearance of Aquila_Aquilagin.com is substantially the same as that of the claimed design. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02. PNG media_image4.png 635 530 media_image4.png Greyscale Claimed Design Aquila_Aquilagin.com “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)). “The mandated overall comparison is a comparison taking into account significant differences between the two designs, not minor or trivial differences that necessarily exist between any two designs that are not exact copies of one another. Just as ‘minor differences between a patented design and an accused article's design cannot, and shall not, prevent a finding of infringement,’ so too minor differences cannot prevent a finding of anticipation.” Int'l Seaway, 589 F.3d at 1243 (citing Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed. Cir. 1984)). Applicant may overcome this rejection by providing convincing evidence (or filing an affidavit or declaration under 37 CFR 1.130(a) or 1.130(b)) that the disclosure was made one year or less before the effective filing date of the claimed invention, and 1) the disclosure was made by the inventor, a joint inventor, or by another who obtained the subject matter directly or indirectly from the inventor or joint inventor; or 2) before such disclosure, the subject matter disclosed had been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or joint inventor. For guidance, please see MPEP § 717.01. - - - - - - - - Reply Reminder Applicant is reminded that any reply to this communication must be signed either by a patent practitioner (i.e., a patent attorney or agent registered to practice before the United States Patent and Trademark Office) or by the applicant. If the applicant is a juristic entity, the reply must be signed by a patent practitioner. See 37 CFR 1.33(b). 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 prose 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 Katherine.Morris@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) o 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 USC § 112(a)and(b), as set forth above. The claim stands rejected under 35 U.S.C. § 102(a)(1) , as set forth above. Cited Art The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. 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 /WENDY L ARMINIO/Supervisory Patent Examiner, Art Unit 2923