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
The Amendment filed 06 May 2025 has been entered. Claims 1, 4, 6, 8, 12-13, 16-19, 27-30 and 33 are pending in the application with claim 23 canceled. Claim 1 is currently amended.
The prior 35 U.S.C. 102(a)(1) rejection is withdrawn as requested (Pg. 5-6) based on the amendment to the claims.
The present Office action is sent as a second Non-Final action as the prior examiner had failed to identify certain necessary rejections which are herein identified.
Drawings
The drawings filed 30 Sep 2024 are objected to because numeral 8 in Fig. 1 is not clearly directed at the inlet, numeral 9 is not clearly directed at the primary mixing chamber and numeral 10 is not clearly directed at the nozzle. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications (Fig. 14 of the instant application). The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention (see 37 CFR 1.84(b)(1)). The photograph of Fig. 14 should be replaced with a line drawing.
Claim Objections
Claim(s) 1, 4, 6, 8, 12-13, 16-19, 27-30 and 33 is/are objected to because of the following informalities:
Claim 1, Ln. 3-4 recites “the distal end” which should read “a distal end” as it is a first introduction
Claim 1, Ln. 6 recites “the chamber” which should read “the mixing chamber” for consistency
Claim 1, Ln. 6 recites “the atmospheric air” which should read “atmospheric air” as it is a first introduction
Claim 8, Ln. 1 & 2 each recite “said inlet” which should read “said at least one gas inlet” for consistency with claim 1
Claim 8, Ln. 2 recites “the cross-sectional area” which should read “a cross-sectional area” as it is a first introduction
Claim 13, Ln. 1 recites “said outlet/inlet” which should read “said inlet/outlet” for consistency with claim 1
Claim 16, Ln. 1 recites “said inlet” which should read “said at least one gas inlet” for consistency with claim 1
Claim 19, Ln. 1-2 recites “the axis of the inlet” which should read “an axis of the at least one gas inlet” as it is a first introduction
Claim 30, Ln. 3 should add a colon following “consisting of”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 16-18 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 recites the limitation “said inlet comprises an actuator that controls movement of air through said actuator.” The requirements of claim 1, with its valve or diaphragm at a constriction, are only found readable on the embodiment of Fig. 6. The actuator of the instant claim is instead only found disclosed in regard to the embodiment of Fig. 5. It is not evidently clear that the actuator of Fig. 5 is either compatible with or intended for use with the embodiment of Fig. 6. The instant claim thus appears to improperly mix and match limitations from conflicting embodiments not disclosed in the originally filed application as compatible with each other. There is thus lack of sufficient written description support in the application as originally filed for the overall requirements of the instant claim, with their apparent improper mixing and matching of particular features from the differing embodiments of Figs. 5 & 6.
Claim 17 recites the limitation “said device further comprises a secondary flow inlet.” The requirements of claim 1, with its valve or diaphragm at a constriction, are only found readable on the embodiment of Fig. 6. The secondary flow inlet of the instant claim is instead only found disclosed in regard to the embodiment of Fig. 10. It is not evidently clear that the secondary flow inlet of Fig. 10 is either compatible with or intended for use with the embodiment of Fig. 6. The instant claim thus appears to improperly mix and match limitations from conflicting embodiments not disclosed in the originally filed application as compatible with each other. There is thus lack of sufficient written description support in the application as originally filed for the overall requirements of the instant claim, with their apparent improper mixing and matching of particular features from the differing embodiments of Figs. 6 & 10.
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) 1, 4, 6, 8, 12-13, 16-19, 27-30 and 33 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 1 recites the limitation “said at least one mixing chamber” in Ln. 8. There is insufficient antecedent basis for this limitation in the claim. The claim has only previously introduced “a mixing chamber”. It is suggested to change the initial introduction in Ln. 1-2 of the claim to read “a plurality of mixing chambers” to properly match with the introduction in Ln. 8-9 of a primary, a secondary, and a tertiary mixing chamber. All subsequent recitations of “said mixing chamber” should be replaced with “said plurality of mixing chambers”.
Claim 1 recites the limitation “said mixing chamber comprises a point of constriction comprising a valve or diaphragm” in Ln. 11-12 which deems the claim indefinite. The claim has previously introduced three separate mixing chambers while the present limitation only refers to “said mixing chamber”. Further, amongst the recited three separate mixing chambers only the secondary mixing chamber is accurately disclosed as including a point of constriction comprising a valve or diaphragm (Fig. 6). The limitation lacks clarity and renders the metes and bounds of the claim indefinite. For the purposes of examination the limitation will be interpreted as reading “said secondary mixing chamber comprises a point of constriction comprising a valve or diaphragm”.
Claim 12 recites the limitation “said device further comprises two or more inlets and/or outlets” in Ln. 1-2 which deems the claim indefinite. Claim 1 has already recited at least one gas inlet as well as at least one inlet/outlet. It is unclear whether the present limitation refers to those same structures as claim 1 or to alternate inlets and/or outlets. It appears they must refer to the same structures as claim 1. However, claim 1 already requires at least one gas inlet as well as at least one inlet/outlet which would appear to fully satisfy the requirements of the instant claim. It is thus unclear what scope applicant is intending in the present claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 12 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 recites the limitation “said device further comprises two or more inlets and/or outlets” in Ln. 1-2. Claim 1 has already recited at least one gas inlet as well as at least one inlet/outlet which would appear to fully satisfy the requirements of the instant claim. Claim 12 thus fails to clearly further limitations beyond what is already required by claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Interpretation - 35 USC § 112(f)
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 limitation(s) 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 limitation(s) is/are: “adjustment component” in claim 6.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The corresponding structure for the “adjustment component” is best understood from the specification as at least: an electric motor with or without gears or chains, an infinity screw or a piezoelectric motor, pneumatic actuator, or any other material that can contract, expand, shift or rotate due to stimulus such as voltage, electrical current, and temperature (¶0041 of the PGPub copy of the instant application).
If applicant does not intend to have this/these limitation(s) 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(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Allowable Subject Matter
Claims 1, 4, 6, 8, 12-13, 16-19, 27-30 and 33 would be allowable if rewritten or amended 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art fails to teach or suggest a negative air pressure breathing device including all elements and functionality recited by the instant claim. It is initially noted that Examiner concurs with applicant’s assertion that the particular limitations of amended claim 1 patentably distinguish over the prior art of record (Pg. 5-6).
Claim 1 recites a particular set of structures which comprise the breathing device, to include: a nozzle at a distal end of said transport tube to accelerate exhaled air to create a negative pressure in a plurality of mixing chambers, a set of three sequential mixing chambers with the middle mixing chamber including a point of constriction comprising a valve or diaphragm that increases air velocity to generate negative pressure via the venturi effect, and at least one gas inlet which communicates atmospheric air or other gas or gases to enter the plurality of mixing chambers. This particular set of structures are specifically intended to interact with air exhaled by a user.
There is not found to be any prior art which either alone or in combination would have rendered the overall requirements of the instant claim as prima facie obvious at the time of the effective filing of the invention without improper hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, see PTO-892 for additional attached references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH D BOECKER whose telephone number is (571)270-0376. The examiner can normally be reached M-F 9:00 AM - 4:00 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, Kendra Carter can be reached at (571) 272-9034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785
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