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 .
Response to Amendments
The Amendment filed 2/9/2026 has been entered. Claims 1 and 38 were amended, claims 22 and 27-35 were cancelled, and claim 39 was new. Thus, claims 1-21, 23-26, and 36-39 are pending in the application.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “to to assist” in line 5, and is suggested to read --to assist-- in order to be grammatically correct. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a sealing device…adapted to increase the sealing effect…to reduce the sealing effect” in claim 8 lines 2-7, “pressure relief means to decrease the air pressure” in claim 13 line 2, and “an opening device adapted to open a seal” in claim 36 lines 2-3.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The limitation “a sealing device…adapted to increase the sealing effect…to reduce the sealing effect” in claim 8 is being interpreted as a seal placed in a circumferential tapered groove according to the Applicant’s specification page 38 lines 21-28. The limitation “pressure relief means to decrease the air pressure” in claim 13 is being interpreted as a bypass channel according to the Applicant’s specification page 40 lines 19-23. The limitation “an opening device adapted to open a seal” in claim 36 is being interpreted as a sharp/tapered end/tip to pierce a seal according to the Applicant’s specification page 33 lines 22-24.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 39 is 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.
Regarding claim 39, the limitation “container/liquid” in line 2 is confusing, as it is unclear whether the “/” is meant to mean “and”, “or” or “and/or”, and thus the claim is indefinite. Moreover, the limitation “becomes” in line 3 is confusing, as this appears to be a method step while the claim is for a device, and thus the scope of the claim is unclear. It is suggested to use claim language such as --configured to--, --adapted for--, or --able to-- in order to avoid such indefiniteness. Furthermore, the limitation "the volume" is recited in line 3. There is insufficient antecedent basis for this limitation in the claim.
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 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.
Claims 1-7, 12-21, and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Dunne et al. (US 2012/0090603 A1, hereinafter Dunne ‘603) in view of Dunne et al. (US 2011/0168175 A1, hereinafter Dunne ‘175).
Regarding claim 1, Dunne ‘603 discloses a nebulizer for nebulizing a liquid (device for dispensing a pressurized liquid) (abstract), comprising:
a replaceable container containing multiple doses of the liquid (cartridge 100 with liquid 103 inside is replaceable) (Figs. 5-6; para. [0121]),
a fluid pump for withdrawing a dose of the liquid from a flexible bag within the container and pressurizing the respective dose for nebulization (piston 155 and cylinder 157 form a pump to suck liquid 103 into cylinder 157 with the piston 155 movement, then pressurize and deliver the liquid 103; pump 117 with piston 155 and pressure chamber 122 function to suck liquid 103 into chamber 122 with the piston 155 movement, then pressurize and deliver the liquid 103; cartridge 100 has storage means 102 for the liquid which can be a collapsible or flexible bag) (Figs. 5-6; para. [0063]; para. [0110]; paras. [0113-0114]),
an air pump to to assist in withdrawing the liquid in doses from the container (control means 133 is used to provide a compression force to open valve 106, which thereby allows for the liquid 103 to be sucked up when the valve 106 is open; control means 133 has an adaptor 141 which forms a piston moveable in cylinder 142 with bottom part 137, this arrangement for pumping or compressing air) (Figs. 5-6, 10; para. [0157]; para. [0159]),
and a housing part which is configured to be detached from the nebulizer for inserting or replacing the container (manually operated housing part 127 can be removed from the device when replacing the cartridge 100) (Figs. 5-6; para. [0121]),
wherein the air pump comprises or forms a piston and cylinder arrangement for pumping air to help withdrawing the doses from the container (control means 133 has an adaptor 141 which forms a piston moveable in cylinder 142 with bottom part 137, this arrangement for pumping or compressing air used to provide a compression force to open valve 106, which thereby allows for the liquid 103 to be sucked up) (Figs. 5-6, 10; para. [0157]; para. [0159]).
Dunne ‘603 does not disclose the air pump is for pressurizing the liquid in the container, wherein the air pump is for pumping air into the container to to assist in withdrawing the liquid in doses from the container; the air pump as a means for compressing the liquid in the flexible bag to help in withdrawing doses without forming or growing of gas bubbles within the liquid.
However, Dunne ‘603 does teach the canister may have a second valve for preventing pressure reduction in the canister as liquid is removed (Dunne ‘603; para. [0031]). Furthermore, Dunne ‘175 teaches an inhaler (Dunne ‘175; abstract) including a valve structure for pressurizing the liquid in the container, characterized in that the valve structure is for putting air into the container to to assist in withdrawing the liquid in doses from the container (valve 111 which connects the air space 105 of the cartridge 100 with the atmosphere when depressed open for air space 105 replenishing) (Dunne ‘175; Figs. 6, 8; paras. [0104-0106]) after a seal 114 on the valve 111 is opened by the piercer 115 (Dunne ‘175; Fig. 8; para. [0121]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Dunne ‘603 air pump mechanism to include another valve connecting the air space of the canister to the atmosphere having a seal on the valve and the piercer needed to open the seal, as taught by Dunne ‘175, for the purpose of replenishing lost air in the air space of the canister (Dunne ‘175; para. [0106]).
With this modification, the modified Dunne ‘603 device would thus teach wherein the air pump is for pressurizing the liquid in the container, wherein the air pump is for pumping air into the container to to assist in withdrawing the liquid in doses from the container; the air pump as a means for compressing the liquid in the flexible bag to help in withdrawing doses without forming or growing of gas bubbles within the liquid (Dunne ‘603 piston adaptor 141 and cylinder 142 pumps air when depressed and also has a connection to the atmosphere by way of venting hole 140; by adding the Dunne ‘175 valve 111 to the bottom of Dunne ‘603 canister 100, the Dunne ‘603 air pump would then also force air into the Dunne ‘603 air space 105 as the liquid 103 is being sucked up, thereby pressurizing the gas in the canister 100 which in turn would compress the storage means bag 102 holding the liquid 103; as the modified Dunne ‘603 device teaches the claimed structure, it would then inherently be able to help in withdrawing doses without forming or growing of gas bubbles within the liquid as functionally claimed) (Dunne ‘603, Figs. 5-6 and 10, para. [0063], para. [0154], para. [0157], para. [0159]; Dunne ‘175, Figs. 6 and 8, paras. [0104-0106]).
Regarding claim 2, the modified Dunne ‘603 device teaches wherein the air pump is arranged in the housing part (piston 141 and cylinder 142 with bottom part 137 are inside housing part 127) (Dunne ‘603; Figs. 5-6, 10).
Regarding claim 3, the modified Dunne ‘603 device teaches wherein at least one of: the air pump is connectable or connected to at least one of an outer casing, a base and a venting hole of the container (Dunne ‘603 piston 141 and cylinder 142 are at least indirectly physically connected to the Dunne ‘603 outer canister 101, Dunne ‘603 bottom of canister 100, and the hole in the bottom of canister 100 in which the Dunne ‘175 valve 111 would sit) (Dunne ‘603, Figs. 5-6 and 10; Dunne ‘175, Figs. 6 and 8, paras. [0104-0106]), and the air pump is pneumatically connectable or connected to at least one of the outer casing, the base, and the venting hold of the container (with the Dunne ‘175 valve 111 added to the bottom of Dunne ‘630 canister 100 as previously detailed, the Dunne ‘603 piston 141 and cylinder 142 would be pneumatically connected to the Dunne ‘603 outer canister 101, Dunne ‘603 bottom of canister 100, and the hole in the bottom of canister 100 in which the Dunne ‘175 valve 111 would sit) (Dunne ‘603, Figs. 5-6 and 10; Dunne ‘175, Figs. 6 and 8, paras. [0104-0106]).
Regarding claim 4, the modified Dunne ‘603 device teaches wherein the air pump is actuated by a movement of the container at least one of within and relative to at least one of the housing part and a housing of the nebulizer (piston and cartridge 100 move back and forth with each other within the nebulizer housing and housing part 127; the piston is compressed by the canister during the suction stoke, which is the downward movement of the canister) (Dunne ‘603; Figs. 5-6, 10; para. [0148-0149]; para. [0158]).
Regarding claim 5, the modified Dunne ‘603 device teaches wherein the container is axially moveable in the nebulizer at least one of during a stroke of withdrawing the dose of liquid and during at least one of pressurizing and dispensing the dose of the liquid (during the suction stoke, the canister 100 is moved downwards relative to the housing part 127 to withdraw liquid; during the pump stroke, the canister 100 is moved upwards relative to the housing part 127 to dispense the liquid) (Dunne ‘603; Figs. 5-6, 10; para. [0113]; para. [0150]).
Regarding claim 6, the modified Dunne ‘603 device teaches wherein the piston and cylinder arrangement of the air pump comprises a pump piston and a cylinder, wherein the pump piston is axially moveable within the cylinder (adaptor or piston 141 moves back and forth within cylinder 142 with bottom part 137 or alternatively the bottom part of housing 127) (Dunne ‘603; Fig. 10; para. [0156]; para. [0158]).
Regarding claim 7, the modified Dunne ‘603 device teaches wherein the cylinder is formed by the housing part or an insert attached thereto (cylinder 142 is an insert in housing 127; the cylinder can alternatively be the bottom part of part 127 itself) (Dunne ‘603; Fig. 10; para. [0156]).
Regarding claim 12, the modified Dunne ‘603 device teaches wherein during use of the nebulizer, the air pump and the fluid pump pressurize alternately (suction stroke and pump stroke performed alternatingly; the air pump with piston 141 is pressurized during the suction stroke, and the fluid pump with pressure chamber 122 is pressurized during the pump stroke) (Dunne ‘603; Figs. 5-6, 10; paras. [0113-0115]; para. [0157]).
Regarding claim 13, the modified Dunne ‘603 device teaches wherein the air pump comprises pressure relief means to decrease the air pressure in the air pump or a pump chamber thereof, and wherein the pressure relief means is adapted to open automatically dependent on a position of the pump piston within the cylinder of the air pump (aeration valve 138 opens the aeration opening 139 when under pressure occurs, or in other words after the piston 141 was compressed downwards in cylinder 142 the aeration valve 141 then opens to expand the piston and cylinder arrangement with environmental air; aeration valve 138 is an automatic valve) (Dunne ‘630; Fig. 10; para. [0151]; para. [0153]).
Regarding claim 14, the modified Dunne ‘603 device teaches wherein the pressure relief means is embodied as a bypass channel integrated into the air pump, through the cylinder (aeration opening 139 is in cylinder 142) (Dunne ‘630; Fig. 10; para. [0151]; para. [0153]).
Regarding claim 15, the modified Dunne ‘603 device teaches wherein at least one of the nebulizer and the air pump comprises a control valve preventing any underpressure in the air pump or a pump chamber thereof, and wherein opening of the control valve is pressure-dependent (aeration valve 138 opens the aeration opening 139 when under pressure occurs, or in other words after the piston 141 was compressed downwards in cylinder 142 the aeration valve 141 then opens to expand the piston and cylinder arrangement with air from the environment, which thereby counters the under pressure) (Dunne ‘630; Fig. 10; para. [0151]; para. [0153]).
Regarding claim 16, the modified Dunne ‘603 device teaches wherein an outer casing of the container at least one of acts on and drives the pump piston (piston and cartridge 100 move back and forth with each other within the nebulizer housing and housing part 127; the piston is compressed by the canister during the suction stoke, which is the downward movement of the canister) (Dunne ‘603; Figs. 5-6, 10; para. [0148-0149]; para. [0158]).
Regarding claim 17, the modified Dunne ‘603 device teaches wherein during use of the nebulizer, the air pump is only temporarily at least one of pneumatically and mechanically connected to the container, and only during withdrawal of the dose of liquid from the container (Dunne ‘175 valve 111 is only temporarily open to pneumatically connect the canister to the air in its environment, which would include the Dunne ‘603 air pump when the air pump is depressed during the suction stroke) (Dunne ‘603, para. [0148-0149], para. [0158]; Dunne ‘175, para. [0033], paras. [0104-0105]).
Regarding claim 18, the modified Dunne ‘603 device teaches wherein a movement of the container controls a temporary pneumatic connection of the container with the air pump (Dunne ‘175 valve 111 is only temporarily open to pneumatically connect the canister 100 to the air in its environment, which would include the Dunne ‘603 air pump when the air pump is depressed by the canister 100 during the suction stroke) (Dunne ‘603, para. [0148-0149], para. [0158]; Dunne ‘175, para. [0033], paras. [0104-0105]).
Regarding claim 19, the modified Dunne ‘603 device teaches wherein the pump piston comprises a seal for temporarily connecting to at least one of the container, a casing thereof, and a base thereof (lip of Dunne ‘603 adaptor 141 seals tightly against the bottom of cartridge 100/canister 101 during suction stroke and opens during the opposite stroke) (Dunne ‘603; Fig. 10; para. [0156-0157]).
Regarding claim 20, the modified Dunne ‘603 device teaches wherein at least one of a port thereof and a seal thereof is axially spaced from the container when the nebulizer is in a non-tensioned state or after dispensing the dose of liquid (canister 100 is always axially spaced from the valve 138, opening 136, opening 139, and opening 140) (Dunne ‘603; Fig. 10).
Regarding claim 21, the modified Dunne ‘603 device teaches wherein an axial end of the container comprises or forms the pump piston of the air pump (the cartridge 100 or canister 101 end can alternatively form the piston 141) (Dunne ‘603; Fig. 10; para. [0156]).
Regarding claim 36, the modified Dunne ‘603 device teaches wherein at least one of the air pump and the housing part comprises or forms an opening device adapted to open a seal that seals an axial end of the container (in Dunne ‘175 there is a seal 114 on the valve 111 on the bottom of container 100 which is opened by the piercer 115 in the bottom of the nebulizer housing) (Dunne ‘175; Fig. 8; para. [0121]).
Regarding claim 37, the modified Dunne ‘603 device teaches wherein at least one of the cylinder and the opening device are formed integrally (for the cylinder, the Dunne ‘603 cylinder 142 is a complete piece, and is thus formed integrally; alternatively, the cylinder 142 is integral for the Dunne ‘603 device, as the piston must be moveable within the cylinder 142 for the device to function; for the opening device, the Dunne ‘175 piercer 115 is a complete piece, and is thus formed integrally; alternatively, the Dunne ‘175 piercer would be integral to the modified Dunne ‘603 device which has a second valve and seal which must be ruptured, i.e. by a piercer as taught by Dunne ‘175) (Dunne ‘603, Fig. 10, para. [0031], para. [0156]; Dunne ‘175, Fig. 8, para. [0121]).
Regarding claim 38, the modified Dunne ‘603 device teaches wherein said air pump is configured for producing a pressure pulse that acts on the liquid in the container for providing said help in withdrawing doses without said forming or growing gas bubbles within the liquid (Dunne ‘603 piston adaptor 141 and cylinder 142 pumps air when depressed and also has a connection to the atmosphere by way of venting hole 140, and each pump action would produce a pulse of pressurized air; by adding the Dunne ‘175 valve 111 to the bottom of Dunne ‘603 canister 100, the actuation stroke of the Dunne ‘603 air pump would force a pulse of air into the Dunne ‘603 air space 105 as the liquid 103 is being sucked up, thereby pressurizing the gas in the canister 100 which in turn would compress the storage means bag 102 holding the liquid 103; as the modified Dunne ‘603 device teaches the claimed structure, it would then inherently be able to help in withdrawing doses without said forming or growing of gas bubbles within the liquid as functionally claimed) (Dunne ‘603, Figs. 5-6 and 10, para. [0063], para. [0154], para. [0157], para. [0159]; Dunne ‘175, Figs. 6 and 8, paras. [0104-0106]).
Claims 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Dunne ‘603 in view of Dunne ‘175 as applied to claim 6 above, and further in view of Wold (US 2008/0257915 A1).
Regarding claim 8, the modified Dunne ‘603 device teaches the invention as previously claimed, but does not teach wherein: the air pump comprises a sealing device acting between the pump piston and the cylinder, a sealing effect of the sealing device depends on a direction of movement of the pump piston relative to the cylinder, and the sealing device is adapted to increase the sealing effect during withdrawing the dose of liquid from the container and to reduce the sealing effect when pressurizing the dose of the liquid for nebulization.
However, Wold teaches a fluid dispenser (Wold; abstract) comprising a sealing device acting between the pump piston and the cylinder (o-ring 124 between movable wall 54, 102 and housing 33) (Wold; Figs. 5I-5J; para. [0026]), a sealing effect of the sealing device depends on a direction of movement of the pump piston relative to the cylinder (groove 245 has a slope which allows for firmer and reduced friction engagement with the o-ring seal 124 depending upon the direction of o-ring 124 movement within the groove 245, thereby varying the sealing effect) (Wold; Figs. 5I-5J; paras. [0028-0029]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Dunne ‘603 piston and cylinder to include a sealing device, as taught by Wold, for the purpose of providing the piston and cylinder mechanism with a seal structure which permits movement between the two structures (Wold; para. [0029]).
With this modification, the modified Dunne ‘603 would thus teach the sealing device is adapted to increase the sealing effect during withdrawing the dose of liquid from the container and to reduce the sealing effect when pressurizing the dose of the liquid for nebulization (Wold backwards motion 266 would decrease the sealing effect and is caused by expansion of gas, and thus would occur when the Dunne ‘603 piston is moving upwards in the pump stroke; therefore, the forward motion would provide the firmer sealing effect during the opposite piston movement, which would be during the suction stroke in Dunne ‘603) (Wold; Figs. 5I-5J; paras. [0028-0029]).
Regarding claim 9, the modified Dunne ‘603 device teaches wherein the sealing device, comprises an elastic seal acting between the pump piston and the cylinder (o-ring 124 between movable wall 54, 102 and housing 33; o-ring 124 can expand and contract) (Wold; Figs. 5I-5J; para. [0026]; paras. [0028-0029]), wherein the elastic seal is movably attached to the pump piston (o-ring 124 moves within the groove 245 on the moveable wall 54, 102) (Wold; Figs. 5I-5J; paras. [0028-0029]).
Regarding claim 10, the modified Dunne ‘603 device teaches wherein the sealing effect of the sealing device, via the seal, depends on a position of the seal relative to the pump piston (Wold backwards motion 266 would decrease the sealing effect and is caused by expansion of gas, and thus would occur when the Dunne ‘603 piston is moving upwards in the pump stroke; therefore, the forward motion would provide the firmer sealing effect during the opposite piston movement, which would be during the suction stroke in Dunne ‘603) (Wold; Figs. 5I-5J; paras. [0028-0029]).
Regarding claim 11, the modified Dunne ‘603 device teaches wherein at least one of the sealing device and the pump piston comprises a groove for the seal, wherein the groove is at least one of tapered and comprises a variable depth (movable wall 54, 102 has a groove 245 which is sloped) (Wold; Figs. 5I-5J), such that the sealing effect varies depending on a position of the seal within the groove (Wold backwards motion 266 would decrease the sealing effect and is caused by expansion of gas, and thus would occur when the Dunne ‘603 piston is moving upwards in the pump stroke; therefore, the forward motion would provide the firmer sealing effect during the opposite piston movement, which would be during the suction stroke in Dunne ‘603) (Wold; Figs. 5I-5J; paras. [0028-0029]).
Claims 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Dunne ‘603 in view of Dunne ‘175 as applied to claim 1 above, and further in view of Dunne (US 2017/0203056 A1, hereinafter Dunne ‘056).
Regarding claim 23, the modified Dunne ‘603 device teaches the invention as previously claimed, including wherein the container comprises a rigid casing (cartridge 100 has a rigid outer canister 101) (Dunne ‘603; para. [0062]), but does not teach a fluid piston moveable within the casing.
However, Dunne ‘056 teaches a nebulizer (Dunne ‘056; abstract) wherein the container comprises a fluid piston moveable within the casing (piston 12 inside cartridge 10) (Dunne ‘056; Figs. 4a-4b; para. [0067]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Dunne ‘603 casing to include a fluid piston moveable within the casing, as taught by Dunne ‘056, for the purpose of providing a mechanism to help collapse the collapsible container full of liquid associated with the cartridge (Dunne ‘056; para. [0067]).
Regarding claim 24, the modified Dunne ‘603 device teaches wherein the fluid piston and the casing form a volume containing the liquid (cartridge 10 and piston 12 form a volume for liquid 15) (Dunne ‘056; Figs. 4a-4b), wherein the volume is reduced or reducible by an axial movement of the fluid piston within the casing (liquid pressurized, i.e. the volume reduced, when the air cavity 32 exerts force on piston 12, thereby moving the piston 12 upwards) (Dunne ‘056; Figs. 4a-4b; para. [0010]; para. [0070]).
Regarding claim 25, the modified Dunne ‘603 device teaches wherein the container comprises a seal acting between the fluid piston and the casing, wherein the fluid piston and the seal are formed integrally (piston forms a seal with the walls of cartridge 10) (Dunne ‘056; Figs. 4a-4d; paras. [0083-0084]).
Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Dunne ‘603 in view of Dunne ‘175 and Dunne ‘056 as applied to claim 24 above, and further in view of Von Schuckmann et al. (US 2010/0300441 A1).
Regarding claim 26, the modified Dunne ‘603 device teaches the invention as previously claimed, but does not teach wherein the fluid piston comprises at least one of a first central recess on a side turned away from the volume and a second central recess on a side facing the volume.
However, Von Schuckmann teaches a dosing device (Von Schuckmann; abstract) wherein the fluid piston comprises a first central recess on a side turned away from the volume (recess of the cup-like pressure-exerting base 16 with annular lip 22 faces the substance of storage chamber 15) (Von Schuckmann; Fig. 1; para. [0047]; para. [0049])
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the modified Dunne ‘603 device’s fluid piston from Dunne ‘056 such that the fluid piston comprises a first central recess on a side turned away from the volume, as taught by Von Schuckmann, for the purpose of enabling the piston to strip substance off the wall of the storage chamber (Von Schuckmann; para. [0049]).
Allowable Subject Matter
Claim 39 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 39, as best understood, the prior art of record does not disclose nor sufficiently teach further comprising a control valve that is configured to limit or control air pressure acting on the container/liquid so that the pressurization of the liquid becomes independent of the volume of liquid in the container.
Response to Arguments
Applicant's arguments filed 2/9/2026 have been fully considered but they are not persuasive.
On page 7 in the second paragraph of the Applicant’s remarks, the Applicant argues that the claims have been amended to overcome the claim objection and 35 U.S.C. 112(b) rejection of the previous office action. The Examiner agrees, and has thus withdrawn that claim objection and 35 U.S.C. 112(b) rejection. However, the newly amended claims have raised a new claim objection and 35 U.S.C. 112(b) rejection as detailed above.
On page 7 in the fourth paragraph of the Applicant’s remarks, the Applicant argues that the PTAB clearly distinguished between a pumping function and an assisting/helping function, and thus cannot be taught by Dunne ‘603. However, the Examiner respectfully disagrees. The Patent Board Decision of 8/26/2025 for this application recites in pages 8-9, “First, we note that a proper interpretation of limitation L1 of claim 1 is that claim 1 requires an air pump (i.e., a piston and cylinder arrangement) that performs at least two functions: (1) pressurize the liquid in the container; and (2) help withdraw the liquid. As a matter of claim construction, the plain language of claim 1 requires that the air pump only ‘help withdrawing the liquid’ (claim 1, limitation L1) (emphasis added). Limitation L1 of claim 1 does not require (as Appellant's arguments imply) that the air pump be solely responsible for performing the recited function of pressurizing the liquid. In fact, the fluid pump is explicitly recited in claim 1 as being ‘for withdrawing a dose of the liquid [] from the container [] and pressurizing the respective dose’ (claim 1) (emphases added). In other words, the air pump (e.g., piston 141, cylinder 142, bottom part 137, control means 133) only need help or assist the fluid pump (e.g., the piston 155, cylinder 157, pump 117, pressure chamber 122 of Dunne '603 (see Final Act. 6) (findings for the fluid pump)), in order to meet the claim language at issue. And, Dunne '603 teaches an air pump (e.g., piston 141, cylinder 142, bottom part 137, control means 133) that helps or assists the fluid pump (e.g., the piston 155, cylinder 157, pump 117, pressure chamber 122) in withdrawing dose of the liquid from the container using pressurization (see e.g., Dunne '603 Figs. 5, 6, 10; ¶¶ 110, 113, 114,157, 159)”. The Dunne ‘603 reference therefore teaches the air pump with both the pumping and assisting/helping functions as claimed by the Applicant. Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 7 in the last paragraph and page 8 in the second paragraph of the Applicant’s remarks, the Applicant argues that the combination of Dunne ‘603 and ‘175 use hindsight and the present application to render the claim obvious. However, the Examiner respectfully disagrees. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the modification of the Dunne ‘603 air pump mechanism to include another valve connecting the air space of the canister to the atmosphere having a seal on the valve and the piercer needed to open the seal, as taught by Dunne ‘175, is for the purpose of replenishing lost air in the air space of the canister (Dunne ‘175; para. [0106]). Thus, the current prior art of record can still be used to teach the Applicant’s claimed invention.
On page 7 in the last paragraph of the Applicant’s remarks, the Applicant argues that the PTAB partly rejected the Examiner’s combination of Dunne ‘603 and ‘175 to teach the a venting hole for feeding air to both compensate under pressure and create overpressure. However, the Examiner respectfully disagrees. The Patent Board Decision of 8/26/2025 for the instant application recites in pages 7-8, “We also agree with and adopt out fact finding, reasoning, and conclusions with regard to (i) limitation L1 of claim 1 in co-pending and related Appeal No. 2024-003457 (Application No. 16/631,667) (Related Decision 11-14), which recites identical subject matter regarding an air pump as L1 before us in the instant application; and (ii) the air pump having a pump piston and cylinder recited in L5 of claim 33 in co-pending and related Appeal No. 2024-003457 (Application No. 16/631,667) (Related Decision 23), which recites similar subject matter regarding the air pump (e.g., having a piston and cylinder) of limitation L1 before us in the instant application”. With regards to the Examiner’s use of the venting hole, the Patent Board Decision of 8/26/2025 for application 16/631,667, which was incorporated in the Patent Board Decision of 8/26/2025 for the instant application, recites on page 23, “As to limitation L5 in claim 33, the Examiner finds, and we agree, that Dunne '603 discloses a venting hole 140 that performs the function of connecting the air pump to ambient air in cooperation with piston 141 and cylinder 142 to move the piston (see Final Act. 29-30), and that the venting hole 140 teaches or suggests the recited actuation element for actuating the pump piston. We also agree with the Examiner that ‘[t]here is nothing in [] claim 33 which recites an ‘active element' is required’ (Ans. 17), as opposed to a ‘passive’ element, as argued by Appellant (see Appeal Br. 13). The Examiner's conclusion that the venting hole 140 of Dunne '603 serves to actuate the piston 141 is reasonable in view of (i) the plain language of claim 33; and (ii) the cogent facts pointed out by the Examiner regarding Appellant's own Specification disclosing that the use of a venting passage 52 in combination with the actuation element 51 (see Fig. 10) serve to actuate the pump piston 31 (see Spec. 28:6-14) (describing Fig. 10). Appellant's Specification is very clear: ‘Preferably, the actuation element 51 comprises at least one venting passage 52 allowing an air exchange’ (Spec. 28:10-11)”. Thus, the PTAB affirmed the Examiner’s use of the venting hole to teach the Applicant’s claimed invention, and so the current prior art can still be used to teach the Applicant’s claimed invention.
On page 8 in the first paragraph of the Applicant’s remarks, the Applicant argues that both Dunne ‘603 and Dunne ‘175 act to eliminate bubble formation by overpressurizing the container but not with the pump used to dispense contents or by creating a pressure pulse, and so cannot be used to teach the Applicant’s claimed invention. However, the Examiner respectfully disagrees. According to the MPEP 2112(III), a 35 U.S.C. 103 rejection can be made when the prior art is the same as that of the claim but the function is not explicitly disclosed. Moreover, according to the MPEP 2112.01(I), when the claimed and prior art products are identical or substantially identical in structure, a prima facie case of obviousness is established. As the modified Dunne '603 device teaches the Applicant's claimed structure of the air pump comprising a piston and cylinder arrangement for pumping air into the container as a means for compressing the liquid in the flexible bag (Dunne '603 piston adaptor 141 and cylinder 142 pumps air when depressed and also has a connection to the atmosphere by way of venting hole 140; by adding the Dunne '175 valve 111 to the bottom of Dunne '603 canister 100, the actuation stroke of the Dunne '603 air pump would then also force air into the Dunne '603 air space 105 as the liquid 103 is being sucked up, thereby pressurizing the gas in the canister 100 which in turn would compress the storage means bag 102 holding the liquid 103) (Dunne '603, Figs. 5-6 and 10, para. [0063], para. [0154], para. [0157], para. [0159]; Dunne '175, Figs. 6 and 8, paras. [0104-0106]), it would then inherently be able to help in withdrawing doses without forming or growing of gas bubbles within the liquid as functionally claimed. Thus, the combination of Dunne '603 and Dunne '175 references can still be used to teach the Applicant's newly amended claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/JACQUELINE M PINDERSKI/Examiner, Art Unit 3785
/RACHEL T SIPPEL/Primary Examiner, Art Unit 3785