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 Amendment
This office action is responsive to the claim amendments filed on 10/06/2025. As directed by the amendment: claims 36, 42, and 53-54 have been amended; claims 46, and 51 have been cancelled; and no claims have been added. Thus, claims 36-45, 47-50, and 52-54 are presently pending in this application.
Applicant’s amendments to claims 36 and 52 are sufficient to overcome Examiner’s rejection under 35 USC § 112 and are therefore withdrawn.
Response to Arguments
Applicant's arguments filed 10/06/2025, regarding claim 36 in light of claim amendments are considered persuasive. Specifically: 1) Applicant’s argument regarding claim 36 and the “milk storage unit” and “milk container” starting on line 1 of page 11, is considered persuasive. See amended claim rejections below. 2) Applicant’s argument regarding claim 36 and the “wherein the electrical breast pump comprises a light source to illuminate the breast cover” starting on line 4 of page 11, is considered persuasive. See amended claim rejections below.
Applicant’s arguments filed 10/06/2025, directed to amended subject matter of claims 53 and 54 is address below with amended claim rejections.
Applicant’s arguments filed 10/06/2025, regarding dependent claim 42 with respect to US 2002/0004657 A1 to Morgan are considered persuasive. See amended claim rejection below.
Claim Objections
Claim 36 is objected to because of the following informalities: Claim 36 lines 19-20 should read “illuminate the breast cover”. Appropriate correction is required.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(s) 53 is/are 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 pre-AIA the applicant regards as the invention.
Claim 54 recite(s) “the housing”. There is insufficient antecedent basis for this/these limitation(s) within the claim.
Claim Interpretation
Claims 36, 53, and 54 recite a virtual right generalized cylinder, as best understood by Applicant’s arguments filed 2/26/2025, wherein in a standing position of the electrical breast pump on a surface the breast cover and the pumping device lie within the virtual right generalized cylinder, the base are of the virtual right generalized cylinder corresponding to 2.5 times the area of the largest cross sectional area of the milk storage unit, wherein the cross sectional area is parallel to the surface. This limitation does not require the virtual right generalized cylinder to be circular or smooth. As best understood (see fig. 1 below, depicting circles as non-limiting example), the limitation requires
2.5
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2
=
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simplified as
r
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;
r
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; or
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. The limitation as currently written is considered to require the areas of the stated objects to be stretched by the factor of 2.5.
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Fig. 1
Claim Rejections - 35 USC § 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 36-41, 43-45, 47-50, and 52-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0361040 A1 to O’Toole et al. in view of US 2015/0141761 A1 to O’Malley et al.
In regard to claim 36:
O’Toole teaches, an electrical breast pump (Fig. 1) comprising: a breast cover (Fig. 2 element 7 and subcomponents thereof) having a breast funnel (Figs. 2 and 6 element 7) having an outer surface for at least partially receiving a breast (Fig. 6 elements 7 and 7a. Para. 101 “The inner flange 7A is substantially oval-shaped. While the inner flange 7A is concave, it is relatively shallow such that it substantially fits the body form of the user's breast.”); a pumping device having a motor (para. 134 “pumps 83A, 83B”); and a milk storage unit (Fig. 7 elements 3, 35, 37, and Fig. 5 elements 9 and 9A. Elements 9 and 9a are considered the milk storage unit as they form the flow path and are chambers where milk is stored, temporarily, during use of the device, prior to ending in the milk storage of element 3. Element 37 para. 119 “spout 35 and includes a rubber duck-bill valve that stays sealed when there is negative air-pressure being applied by the air pump; this ensures that negative air-pressure does not need to be applied to the milk container and hence adds to the efficiency of the system”. As the pump is cycled (para. 576 “length of a single pumping session, negative air pressure or vacuum level, peak negative air pressure or vacuum level, pump cycle time or frequency”), milk is therefore held temporarily within element 9 during the vacuum portion of the pump cycle as element 37 would be closed. Therefore, during the vacuum portion of the pump cycle element 9 is a milk container and part of the milk storage unit.) having a milk container for receiving pumped milk (Fig. 7 element 9, as explained above temporarily contains milk during vacuum portion of pump cycle.); wherein in a standing position of the electrical breast pump on a surface the breast cover and the pumping device lie within a virtual right generalized cylinder (fig. 1), wherein the electrical breast pump has a housing (Housing formed from exterior surfaces of Fig. 1 elements 1, 2, 3, and 5) enclosing the pumping device (Para. 82 “a closed-loop pneumatic system powered by piezoelectric pumps located in the housing 1.”) and milk container (Fig. 5 element 9 enclosed within the housing elements 1, 2, 3, and 5 during use of the breast pump) wherein the housing incorporates the outer surface of the breast funnel (Fig. 2 element 7, para. 102 “The breast shield 7 substantially aligns with the outer edge 1B of the housing 1.”) and the outer surface of the milk storage unit (Fig. 1 elements 3 Para 86 “The milk collection container 3 is attached to a lower face 1A of the housing 1 and forms an integral part of the housing when connected”(emphasis added)); wherein the breast funnel forms an opening in the housing (fig. 2 element 7b); wherein the housing is flush, with the exception of the breast funnel (Para 86 “The milk collection container 3 is attached to a lower face 1A of the housing 1 and forms an integral part of the housing when connected”(emphasis added) considered to be flush as the housing forms a smooth integral component with element 1 without jagged or abrupt protrusions.).
O’Toole discloses the invention essentially as claimed as described above. However, O’Toole does not explicitly describe the relative dimensions as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of O’Toole to have the base area whereof corresponds to the area of the largest cross-section of the milk storage unit parallel to the surface stretched by a factor of 2.5, wherein the area centroid of the base area is identical to the area centroid of the area of the largest cross-section and the height of the virtual general straight cylinder is infinite in both directions. Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed relative dimensions and would continue to function appropriately with the claimed relative dimensions. Further Applicant does not have criticality for the claimed relative dimension, instead indicating multiple relative dimensions are preferred (specification pg. 2 lines 8-27 “e base area whereof corresponds to the area of the largest cross-section of the milk storage unit parallel to the surface, stretched by a factor of 2.5, preferably by a factor of 2, particularly preferably by a factor of 1.8, wherein the area centroid of the base area is identical to the area centroid of the area of the largest cross- section and the height of the virtual general straight cylinder is infinite in both directions.“).
O’Toole does not appear to explicitly disclose the light source illuminating the breast cover as described. O’Malley teaches, wherein the electrical breast pump comprises a light source to illuminate the breast cover (Fig. 2C elements 305 “light pack”, 310 “LED”, and para. 22).
It would have been obvious to one having ordinary skill in the art, prior to the effective date of filing, to modify the breast cover taught by O’Toole to include a light source to illuminate the breast cover as taught by O’Malley. This would have been motivated by O’Malley paras. 4, 5, and 6. These describe a problem known in the art solved by adding a light source to illuminate the breast funnel.
In regard to claim 37:
The electrical breast pump according to claim 36, wherein: the housing has a holding section which has a shape of a lateral surface area of a generalized cylinder or truncated cone having an elliptical base area (Fig. 5 element 3 as best understood, due to elliptical cross section and generalized cylinder lateral surface area).
In regard to claim 38:
The electrical breast pump according to claim 36, wherein: the milk storage unit is removable (Fig. 5 element 3).
In regard to claim 39:
The electrical breast pump according to claim 36, wherein: the electrical breast pump has a flat standing area on which the electrical breast pump can stand in the standing position (see annotated Fig. 3 below).
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In regard to claim 40:
The electrical breast pump according to claim 36, wherein: the breast cover has a hose section via which the breast funnel is detachably connected to the milk container (Fig. 6 element 9. Connected to element 3 through elements 11, 37, and 35. Para. 104 “This breast shield nipple tunnel 9 defines a milk-flow path from the inner surface of the breast shield 7A, through the breast shield nipple tunnel 9 and into the milk collection container 3”. Para 103 “However, it is appreciated that separate removable/interchangeable nipple tunnels may be used”).
In regard to claim 41:
The electrical breast pump according to claim 40, wherein: the pumping device comprises a vacuum pump which is suitable for generating a negative pressure in the hose section (Para. 104 “By reducing the distance covered by the milk, the device is also reduced in size and complexity of small intermediate portions. In particular, the breast shield nipple tunnel 9 may extend less than 70 mm from its start to end, more preferably less than 50 mm. In use, the nipple tunnel 9 is substantially aligned with the user's nipple and areolae. The nipple tunnel comprises a first opening 9A for depositing milk into the collection container and a second opening 19A for transferring negative air pressure generated by the pump to the user's nipple.”. Para 135 “pumps 83A, 83B generates a negative air pressure which is transmitted via an air channel to a first side of the diaphragm 13 mounted on the diaphragm housing 19A”).
In regard to claim 43:
The electrical breast pump according to claim 36, wherein: the pumping device comprises a vacuum pump which is suitable for generating a negative pressure in the milk container (Para. 135 “Once the breast pump 100 is activated and a pumping cycle is begun, the pumps 83A, 83B generates a negative air pressure which is transmitted via an air channel to a first side of the diaphragm 13 mounted on the diaphragm housing 19A.” as the container is fluidly connected to element 9 and element 19a the pump is considered fully capable of generating a negative pressure in the milk container as the pressure of the whole system is affected by the negative pressure generated by pumps 83a-b).
In regard to claim 44:
The electrical breast pump according to claim 40, wherein: the pumping device is connected to a closed space which is in pressurized communication with the breast funnel or the hose section or the milk container so that by periodically generating a negative pressure in the closed space a vacuum can be periodically generated in the breast funnel or in the hose section (para. 135 “Operation of the breast pump 100 will now be described. Once the breast pump 100 is activated and a pumping cycle is begun, the pumps 83A, 83B generates a negative air pressure which is transmitted via an air channel to a first side of the diaphragm 13 mounted on the diaphragm housing 19A. This side of the diaphragm 13 is denoted the pumping side 13B of the diaphragm 13.”).
In regard to claim 45:
The electrical breast pump according to claim 36, wherein: the breast cover comprises a transparent material so that a milk flow is visible for a user of the electrical breast pump (Para. 179 “The transparent breast shield allows the user to observe the nipple while adjusting the position of the breast shield”).
In regard to claim 47:
The electrical breast pump according to claim 36, wherein: and/or the milk storage unit has a fixed and rigid shell (Fig. 6 element 3. Para. 79 “a detachable rigid milk collection container attachable”);
the pumping device comprises a control circuit so that a user can operate the pumping device; and/or the milk container is structured and arranged to be a flexible storage bag; and/or a bottle body of a baby milk bottle is provided as the milk container of the milk storage unit (considered optional limitations due the uses of “and/or”).
In regard to claim 48:
The electrical breast pump according to claim 36, wherein: the pumping device is accommodated in a watertight manner (para. 118 “The diaphragm 13 self-seals in this diaphragm housing 19 around its outer edge, to form a watertight and airtight seal.”. Diaphragm fluidically isolates the pumps from the milk flow channel of element 9).
In regard to claim 49:
The electrical breast pump according to claim 37, taught by O’Toole as described in parent rejection above.
wherein: an external height contour of the cylinder or truncated cone encloses an angle of less than 30° with a plane defined by the circumference of the breast funnel.
O’Toole discloses the invention essentially as claimed as described above. However, O’Toole does not explicitly describe the relative angle as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of O’Toole to have wherein an external height contour of the cylinder or truncated cone encloses an angle of less than 30° with a plane defined by the circumference of the breast funnel. Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed relative dimensions and would continue to function appropriately with the claimed relative dimensions. Further Applicant does not appear to have criticality for the claimed relative dimension, instead indicating multiple relative dimensions are preferred (specification pg. 3 lines 3-29 “substantially has the shape of the lateral surface of a general cylinder or truncated cone having a substantially elliptical base area, wherein preferably an external height contour of the cylinder or truncated cone has an angle of between 300 and -30*, preferably between -15* and 15*, with respect to a plane defined by the circumference of the breast funnel and particularly preferably is substantially parallel to this.”).
In regard to claim 50:
The electrical breast pump according to claim 36, wherein: the pumping device has an energy storage device (Para. 79 “The housing inside also includes a pump for generating a negative pressure in the breast shield, as well as battery and control electronics”).
O’Toole discloses the invention essentially as claimed as described above. However, O’Toole does not explicitly describe the relative dimension as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of O’Toole to have the motor and the energy storage device are arranged in the standing position below a plane which is parallel to the surface and whose height above the surface corresponds to 2.0 times the maximum extension of the milk storage unit parallel to the surface. Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed relative dimensions and would continue to function appropriately with the claimed relative dimensions. Further Applicant does not appear to have criticality for the claimed relative dimension, instead indicating multiple relative dimensions are preferred (specification pg. 5 lines 1-10 “the motor and/or the storage unit is arranged in the standing position substantially below a plane which is parallel to the surface and whose height above the surface corresponds to 3.0 times, preferably 2.5 times, particularly preferably 2.0 times the maximum extension of the milk storage unit parallel to the surface”).
In regard to claim 52:
The electrical breast pump according to claim 36, taught by O’Toole as described in parent rejection above.
O’Toole does not explicitly teach the angle claimed but does render obvious the claimed range, wherein a circumference of the breast funnel lies in a plane, wherein in the standing position of the electrical breast pump on the surface, the plane on the side on which the breast funnel is located encloses an angle between 60° and 110° with the surface (Fig. 5 element 7).
It would have been obvious to one of ordinary skill in the art, prior to the effective date of filing, to modify the angle of the breast funnel cone plane taught by O’Toole to be enclosed in an angle between 60° and 110°, with the surface since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed angle of funnel plane and therefore it would function appropriately having the claimed funnel plane angle with respect to the surface. Further, it appears that applicant places no criticality on the range claimed, indicating simply that angle may be within the claimed range or preferably in the range 75° and 105° (See specification page 9 lines 6-13).
In regard to claim 53:
An electrical breast pump (Fig. 1) comprising: a breast cover having a breast funnel for at least partially receiving a breast (Fig. 6 elements 7 and 7a. Para. 101 “The inner flange 7A is substantially oval-shaped. While the inner flange 7A is concave, it is relatively shallow such that it substantially fits the body form of the user's breast.”); a pumping device having a motor (para. 134 “pumps 83A, 83B”); and a milk storage unit (Fig. 7 elements 3, 35, 37, and Fig. 5 elements 9 and 9A. Considered the milk storage unit is it is the flow path and various chambers where milk is stored, temporarily or otherwise, during use of the device. The end point of the milk storage in element 3. Element 37 para. 119 “spout 35 and includes a rubber duck-bill valve that stays sealed when there is negative air-pressure being applied by the air pump; this ensures that negative air-pressure does not need to be applied to the milk container and hence adds to the efficiency of the system”. As the pump is cycled (para. 576 “length of a single pumping session, negative air pressure or vacuum level, peak negative air pressure or vacuum level, pump cycle time or frequency”), milk is therefore held within element 9 during the vacuum portion of the pump cycle as element 37 would be closed. Therefore, during the vacuum portion of the pump cycle element 9 is a milk container and part of the milk storage unit) having a milk container for receiving pumped milk (Fig. 7 element 9); wherein in a standing position of the electrical breast pump on a surface the breast cover and the pumping device lie within a virtual right generalized cylinder (fig. 1), a and wherein the pumping device and the motor of the pumping device are arranged between the breast cover and the milk storage unit (Figs. 3-7 elements 83a-b, 19a, and 13 located between the breast cover elements 7 and 7a and container element 3 as they are located along the fluid bath between elements 7 and 3), and the breast cover (Fig. 2 element 7) and a part of the housing (Housing Fig. 2 elements 1, 2, 3 and 5. Para 86 “The milk collection container 3 is attached to a lower face 1A of the housing 1 and forms an integral part of the housing when connected”(emphasis added)); surrounding the breast cover (Fig. 2 element 3 partially surrounding bottom portions of element 7) comprises a transparent material so that a milk flow is visible to a user of the electrical breast pump (transparency of element 3 para. 129 “the removable milk collection container or bottle includes a clear or transparent wall or section to show the amount of milk collected. Additionally, measurement markings (3A)”. Transparency of element 7, para. 179 “The transparent breast shield allows the user to observe the nipple while adjusting the position of the breast shield”).
O’Toole discloses the invention essentially as claimed as described above. However, O’Toole does not explicitly describe the relative dimensions as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of O’Toole to have the base area whereof corresponds to the area of the largest cross-section of the milk storage unit parallel to the surface stretched by a factor of 2.5, wherein the area centroid of the base area is identical to the area centroid of the area of the largest cross-section and the height of the virtual general straight cylinder is infinite in both directions. Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed relative dimensions and would continue to function appropriately with the claimed relative dimensions. Further Applicant does not have criticality for the claimed relative dimension, instead indicating multiple relative dimensions are preferred (specification pg. 2 lines 8-27 “e base area whereof corresponds to the area of the largest cross-section of the milk storage unit parallel to the surface, stretched by a factor of 2.5, preferably by a factor of 2, particularly preferably by a factor of 1.8, wherein the area centroid of the base area is identical to the area centroid of the area of the largest cross- section and the height of the virtual general straight cylinder is infinite in both directions.“).
Claim(s) 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0361040 A1 to O’Toole et al. in view of US 2016/0206794 A1 to Makower et al. as evidenced by US 2017/0172961 A1 to Heller et al.
In regard to claim 42:
The electrical breast pump according to claim 36, taught by O’Toole as described in parent rejection above.
O’Toole does not explicitly teach the peristaltic pump as claimed. Makower teaches, wherein: the pumping device comprises a peristaltic pump (Fig. 3 element 30. Figs. 4A-4D demonstrate the peristaltic pump and its actions upon element 32. Para. 21 “FIGS. 4A-4F illustrate the interaction between compression elements and resilient tubing, and a pumping sequence according to an embodiment of the present disclosure”. Merriam-webster definition for peristaltic: of, relating to, resulting from, or being peristalsis. Merriam-webster definition for peristalsis: successive waves of involuntary contraction passing along the walls of a hollow muscular structure (such as the esophagus or intestine) and forcing the contents onward) wherein: the peristaltic pump (Fig. 1 element 30) generates the pumping power by mechanical action on a hose section, which connects the breast funnel with the milk container (Fig. Fig. 3 element 30. Figs. 4A-4D demonstrate the peristaltic pump and its actions upon element 32. Para. 21 “FIGS. 4A-4F illustrate the interaction between compression elements and resilient tubing, and a pumping sequence according to an embodiment of the present disclosure”).
It would have been obvious to one of ordinary skill in the art, prior to the effective date of filing, to modify the pump taught by O’Toole to be a peristaltic pump as taught by Makower. This would have been motivated as design choice, as merely picking between known alternative pumps types is considered to be within the level of ordinary skill in the art. Heller teaches peristaltic pumps and piezoelectric pumps are known alternative pump types para. 130 “As used herein, “pump” refers to any mechanism capable of administering a fluid formulated drug product over a period of 4 or more hours. Examples of pumps include battery-powered pumps (e.g., syringe pumps, piezoelectric, peristaltic pumps, or diaphragm pumps), mechanical devices with or without moving parts that are not battery-powered (e.g., gas-driven pumps, spring-driven pumps, shape memory alloy driven pumps, and elastomeric pumps), and battery operated [sic] electroosmotic pumps (with or without moving parts)” (emphasis added).
Claim(s) 54 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0361040 A1 to O’Toole et al. in view of US 2016/0206794 A1 to Makower et al.
In regard to claim 54:
An electrical breast pump (Fig. 1) comprising: a breast cover having a breast funnel for at least partially receiving a breast (Fig. 6 elements 7 and 7a. Para. 101 “The inner flange 7A is substantially oval-shaped. While the inner flange 7A is concave, it is relatively shallow such that it substantially fits the body form of the user's breast.”); a pumping device having a motor (para. 134 “pumps 83A, 83B”); and a milk storage unit (Fig. 7 elements 3) wherein in a standing position of the electrical breast pump on a surface the breast cover and the pumping device lie within a virtual right generalized cylinder (fig. 1),
O’Toole discloses the invention essentially as claimed as described above. However, O’Toole does not explicitly describe the relative dimensions as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of O’Toole to have the base area whereof corresponds to the area of the largest cross-section of the milk storage unit parallel to the surface stretched by a factor of 2.5, wherein the area centroid of the base area is identical to the area centroid of the area of the largest cross-section and the height of the virtual general straight cylinder is infinite in both directions. Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed relative dimensions and would continue to function appropriately with the claimed relative dimensions. Further Applicant does not have criticality for the claimed relative dimension, instead indicating multiple relative dimensions are preferred (specification pg. 2 lines 8-27 “e base area whereof corresponds to the area of the largest cross-section of the milk storage unit parallel to the surface, stretched by a factor of 2.5, preferably by a factor of 2, particularly preferably by a factor of 1.8, wherein the area centroid of the base area is identical to the area centroid of the area of the largest cross- section and the height of the virtual general straight cylinder is infinite in both directions.“).
O’Toole discloses the invention essentially as claimed as described above. However, O’Toole does not explicitly describe the relative dimension as claimed. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of O’Toole to have and wherein the pumping device is positioned below a plane which is parallel to the surface at a height from the surface that corresponds to 2.0 times the maximum extension of the milk storage unit from the surface. Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of O’Toole would not operate differently with the claimed relative dimensions and would continue to function appropriately with the claimed relative dimensions. Further Applicant does not appear to have criticality for the claimed relative dimension, instead indicating multiple relative dimensions are preferred (specification pg. 5 lines 1-10 “the motor and/or the storage unit is arranged in the standing position substantially below a plane which is parallel to the surface and whose height above the surface corresponds to 3.0 times, preferably 2.5 times, particularly preferably 2.0 times the maximum extension of the milk storage unit parallel to the surface”).
O’Toole does not explicitly disclose the milk container is a bottle body of a baby milk bottle as claimed. Makower teaches, a milk container for receiving pumped milk (Fig. 20 element 60); wherein a bottle body (Fig. 22 element 20, considered bottle body under broadest reasonable interpretation due Meriam-Webster definition of body: the main, central, or principal part. Element 20 holds, contains, and delivers the milk of the baby bottle (element 72) and is therefore considered the central and principal part of the baby bottle (element 72)) of a baby milk bottle (Fig. 22 elements 60, 70, 72, 74, and 76. Elements 74 considered analogous to O’Toole milk storage unit element 3) is provided as the milk container of the milk storage unit (Fig. 22 element 60).
It would have been obvious to one having ordinary skill in the art, prior to the effective date of filling, to modify the milk storage unit taught by O’Toole to include a milk container (bag) as taught by Makower. This would have been motivated by reducing the chances of contaminating and improving sterilization by using disposable milk bags within the container. This is further motivated by making allowing the device to easily fill multiple milk containers easily as taught by Makower para. 193 “removal of the container 60 when full or needed to be used, and replacement of another container 60 on the system 100.”. Further motivated by O’Toole para. 11 (“Fully integrated wearable breast pump systems have begun to enter the market, such as described in US 2016 0206794 A1. In such pump systems, the suction source, power supply and milk container are contained in a single, wearable device; there is no need for bulky external components or connections. Such devices can be provided with a substantially breast shaped convex profile so as to fit within a user's bra for discrete pumping, as well as pumping on-the-go without any tethers to electrical sockets or collection stations.”).
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 Mark A Igel whose telephone number is (571)272-7015. The examiner can normally be reached Monday through Thursday 11 am to 5 pm EST.
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, Bhisma Mehta can be reached at (571) 272-3383. 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.
/M.A.I./Examiner, Art Unit 3783
/BHISMA MEHTA/Supervisory Patent Examiner, Art Unit 3783