Prosecution Insights
Last updated: April 19, 2026
Application No. 16/923,612

MEDICAL VIAL AND INJECTOR ASSEMBLIES AND METHODS OF USE

Final Rejection §103
Filed
Jul 08, 2020
Examiner
SCHMIDT, EMILY LOUISE
Art Unit
3783
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Enable Injections Inc.
OA Round
7 (Final)
59%
Grant Probability
Moderate
8-9
OA Rounds
3y 5m
To Grant
95%
With Interview

Examiner Intelligence

Grants 59% of resolved cases
59%
Career Allow Rate
581 granted / 992 resolved
-11.4% vs TC avg
Strong +36% interview lift
Without
With
+36.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 5m
Avg Prosecution
77 currently pending
Career history
1069
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
48.9%
+8.9% vs TC avg
§102
25.8%
-14.2% vs TC avg
§112
18.7%
-21.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 992 resolved cases

Office Action

§103
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application is being examined under the pre-AIA first to invent provisions. Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action: (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made. Claims 1-5 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Wall (US 2004/0116847 A1) in view of Gross et al. (US 5,527,288), Hadvary et al. (US 2013/0324884 A1), and Hessel (US 4,769,008). With regard to claim 1, Wall teaches a medical fluid injection device that may be adhered to the skin of a patient, the device including: a housing including a skin-facing surface and upper and lower housing portions with the lower housing portion including the skin-facing surface (Fig. 1d member 10, the lower housing is taken as the lower half of the housing and the upper housing is the upper half of the housing); a medical fluid reservoir defined by an expandable elastomeric bladder having a fixed proximal end and a distal end where the bladder is elongated between the proximal and distal ends and is expandable upon the pressurized introduction of medical fluid thereinto, the elastomeric bladder solely exerting a uniform pressure force on the medical fluid there within as the distal end of the bladder moves towards the proximal end (Figs. 1b-1d member 60, the proximal end facing the skin is fixed the opposing distal end 61 moves toward the proximal end [0061], the bladder is elongated between the proximal and distal ends as it extends the length between these ends, [0068] details the reservoir can be made of a material which contracts to reduce the volume, [0084] discloses that if a spring is used a constant force is applied for a constant rate which is interpreted as uniform pressure force, [0104] discloses various force means may be used/combined, the bladder is in contract with the fluid and is what is solely transferring pressure); an injection needle including an injection end movable between a retracted position within the housing and an injection position extending through the skin facing surface of the housing for injection into a patient, the needle being in fluid communication with the bladder in the injection position (Figs. 2a and 2e member 40). Wall does not disclose a protrusion surrounded by a remaining portion of the skin-facing surface and including a circumferential base portion tapering away from the remain portion of the skin-facing surface in a direction radially inwards towards the injection needle. However, Gross et al. teach a protrusion as recited (see Reference Figure 1 below), on an adhesively attached surface, which is beneficial for counter-acting the natural resilience of the skin to allow for better penetration (abstract, Col. 10 lines 42-46). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a protrusion with a circumferential base in Wall as Gross et al. teach this is beneficial for stretching the skin to aid in penetration. Wall does not disclose the remaining portion of the skin-facing surface includes a circumferential edge that is tapered or curved toward the upper housing. However, Gross et al. teach the remainder of the skin-facing surface may be curved toward the upper housing for counter-acting the natural resilience of the skin to allow for better penetration (Fig. 10, surface 104, Col. 10 lines 42-46). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a curved skin-facing surface in Wall as Gross et al. teach this is beneficial for enhancing penetration. Further, one of ordinary skill would combine both the embodiments of Figs. 10 and 11 since it has been held that combining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness and involves only routine skill in the art, Boston Scientific v. Cordis Fed. Cir. 2009. This would enhance penetration further by enhancing the stretching. Wall does not disclose an elastomeric needle shield. However, Hadvary et al. teach an elastomeric seal within a skin facing protrusion within which an injection needle is embedded prior to use which would prevent leaking and accidental needle sticks (Fig. 3 member 18, [0046], [0049]). Such a seal would also necessarily enhance sterility. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a shield in Wall as in Hadvary et al. as this would close the end of the needle to prevent leakage and would necessarily enhance sterility. As combined the protrusion extends from the skin-facing surface of the wall, a septum seal as in Hadvary et al. is placed within the opening of the protrusion. The device would still be able to operate to provide delivery. Wall does not disclose an inner plug in the expandable blader with a larger diameter to pre-stress the blader. However, Hessel teaches pressurized fluid dispensing with a bladder which pre-stresses the bladder so that constant pressure is provided during delivery to reliably delivery contents at a substantially constant flow rate (Col. 1 lines 10-26, 48-60, Fig. 2 plug 4 bladder 2). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use a pre-stressed bladder in place of the bladder and spring of Wall as Hessel teaches this is beneficial for providing constant pressure for a constant flow rate. This would yield the same predictable result of delivery. PNG media_image1.png 320 634 media_image1.png Greyscale With regard to claims 2-5, see Fig. 1b and exemplary Fig. 5 releasable member 120, adhesive portions 122 and 127, cover 129, 122 is pierced by the needle and remains on the skin ([0131], [0143], [0144]). This would be placed over the protrusion provided by the combination above. Response to Arguments Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. 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. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY L SCHMIDT whose telephone number is (571)270-3648. The examiner can normally be reached Monday through Thursday 7:00 AM to 4:30 PM. 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, Kevin Sirmons can be reached at 571-272-4965. 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. /EMILY L SCHMIDT/Primary Examiner, Art Unit 3783
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Prosecution Timeline

Jul 08, 2020
Application Filed
Sep 23, 2022
Non-Final Rejection — §103
Feb 27, 2023
Response Filed
Mar 13, 2023
Final Rejection — §103
Aug 10, 2023
Interview Requested
Aug 17, 2023
Applicant Interview (Telephonic)
Aug 17, 2023
Examiner Interview Summary
Aug 17, 2023
Request for Continued Examination
Aug 22, 2023
Response after Non-Final Action
Oct 10, 2023
Non-Final Rejection — §103
Mar 13, 2024
Response Filed
Apr 01, 2024
Final Rejection — §103
Sep 04, 2024
Request for Continued Examination
Sep 05, 2024
Response after Non-Final Action
Oct 04, 2024
Final Rejection — §103
Mar 07, 2025
Response after Non-Final Action
Apr 08, 2025
Request for Continued Examination
Apr 09, 2025
Response after Non-Final Action
May 22, 2025
Non-Final Rejection — §103
Oct 28, 2025
Response Filed
Dec 01, 2025
Final Rejection — §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

8-9
Expected OA Rounds
59%
Grant Probability
95%
With Interview (+36.0%)
3y 5m
Median Time to Grant
High
PTA Risk
Based on 992 resolved cases by this examiner. Grant probability derived from career allow rate.

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