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 .
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.
Claims 9-13 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.
Claims 9-10, and 12-13 depend on claim 1. Please see relevant amended portion of independent claim 1: “(…) an indicator coupled to a post extending from the cap and into the lumen of the handle (…)”. The amended limitation has support in the specification ([0042]; Embodiment of Fig 2 and 4).
Claim 9 limitation: “(…) one or more springs configured to bias the indicator in the first position (…)”, and claim 10 depends on claim 9. Claim 9-10 limitations have support in ([0048]; Embodiment of Fig 6A-6B). However, embodiment of Fig 6A-6B does not have support for “ an indicator coupled to a post extending from the cap and into the lumen of the handle” as necessitated by claim 1 resulting in an impermissible combination of embodiments of Fig 2, 4 and Fig 6A-6B, which is not supported by the specification.
Claim 12 limitation: “(…) indicator includes a projection configured to move in a direction radially outward of the handle (…)” have support in ([0048]; Embodiment of Fig 6A-6B). Claim 13 depends on claim 12. The embodiment of Fig 6A-6B does not have support for “ an indicator coupled to a post extending from the cap and into the lumen of the handle” as necessitated by claim 1 resulting in an impermissible combination of embodiments of Fig 2, 4 and Fig 6A-6B, which is not supported by the specification.
Claim 11 depend on claim 1. Please see relevant amended portion of independent claim 1: “(…) an indicator coupled to a post extending from the cap and into the lumen of the handle (…)”. The amended limitation has support in the specification ([0042]; Embodiment of Fig 2 and 4).
Claim 11 limitation: “(…) indicator includes a movable member configured to rotate about an axis within a housing based on a pressure of the pressurized fluid flowing into the device from the container (…)” Claim 11 limitations have support in ([0052]; Embodiment of Fig 7A-7C). However, embodiment of Fig 7A-7C does not have support for “an indicator coupled to a post extending from the cap and into the lumen of the handle” as necessitated by claim 1 resulting in an impermissible combination of embodiments of Fig 2, 4 and Fig 7A-7C, which is not supported by the specification.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8, 14-15, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boeck et al. (US 20070107720 A1).
Regarding claim 1, Boeck discloses a device (nebulizer 1, Fig 40) for delivering pressurized fluid (fluid 2 is pressurized inside the container 3, Fig 37), the device comprising: a handle (manually operable housing part 18, Fig 25) having a lumen (lumen defined by interior of part 18, Fig 25) configured to receive a container (container 3, Fig 25) of pressurized fluid (2); a cap (base element 51, Fig 33) configured to close the lumen (lumen defined by interior of part 18, Fig 25); and an indicator (peripheral, preferably differently colored part of the securing element 68, particularly of a locking element 69; [0191]) coupled to a post (gripper arms 48, Fig 26) extending from the cap (51; [0183]); and into the lumen (lumen defined by interior of part 18, Fig 25) of the handle (18), the indicator (69) configured to move from a first position ([0184], secured state or transportation state shown) to a second position ([0191]; activated state or the opened state), wherein the first position indicates disconnection of the container from a fluid path ([0184]), and the second position indicates connection of the container to the fluid path ([0191]).
Regarding claim 2, Boeck discloses the device according to claim 1, further comprising the container (3), wherein the lumen (lumen defined by interior of part 18, Fig 25) is outside the fluid path ([0076]; [0196]).
Regarding claim 3, Boeck discloses the device according to claim 2, further comprising: a pierce pin (piercing element 22, Fig 40) within the handle (18) that is configured to pierce a seal (vent opening 26, Fig 22)of the container ([0125]).
Regarding claim 4, Boeck discloses the device according to claim 1, wherein the indicator includes one or more markings (differently colored part; [0191]) configured to indicate when the container (3) is in the second position (activated state; [0191]), wherein the one or more markings are visible to a user when the container (3) is in the second position ([0191]) and not visible to the user when the container is in the first position ([0184]).
Regarding claim 5, Boeck discloses the device according to claim 1, wherein the indicator (69) is connected to the cap (51) via the post (48), the post (48) including an elongate member that is radially offset from a longitudinal axis of the handle (Fig 37 shows the post 48 offset radially from the longitudinal axis of handle 18).
Regarding claim 6, Boeck discloses the device according to claim 1, wherein the indicator (69) includes an annular member (securing element 68, Fig 37) that is coupled to the post (48), and wherein the indicator (69) is configured to move relative to the handle (18) and the container (3) as the indicator moves between the first position ([0184]) and the second position ([0191]).
Regarding claim 7, Boeck discloses the device according to claim 6, wherein an opening (opening of annular member 68, Fig 37)in the annular member (68) accommodates the container (3).
Regarding claim 8, Boeck discloses the device according to claim 1, wherein a diameter of the indicator is greater than an outer diameter of the container and less than an inner diameter of the handle (Fig 37 shows both the internal (ID) and external diameter (OD) of indicator 69 being greater the OD of the container 3 and less than the inner diameter of handle 18).
Regarding claim 14, Boeck discloses the device according to claim 1, wherein the device further includes an actuator (inner part 17, Fig 34)configured to release the fluid from a downstream end of the device (1), and wherein the actuator (17) is configured to be actuatable only when the indicator is in the second position ([0178]-[0179])
Regarding claim 15, Boeck discloses the device according to claim 1, wherein the indicator (69) is configured to indicate the pressurized fluid is flowing from the container at a rate sufficient to operate the device when the indicator is in the second position ([0191]).
Regarding claim 20, Boeck discloses a method for delivering pressurized fluid (fluid 2 is pressurized inside the container 3, Fig 37) to a device (nebulizer 1, Fig 40), the method comprising: inserting a container (container 3, Fig 37) of pressurized fluid into a handle (manually operable housing part 18, Fig 37) of the device (1), wherein the container (3) is held within the handle (18) by a cap (base element 51, Fig 37); moving an indicator (69) from a first position ([0184], secured state or transportation state shown) to a second position ([0191]; activated state or the opened state), wherein the indicator (peripheral, preferably differently colored part of the securing element 68, particularly of a locking element 69; [0191]) is coupled to a post (gripper arms 48, Fig 26) extending from the cap (51) and into a lumen of the handle (lumen defined by interior of part 18, Fig 25), wherein the first position ([0184], secured state or transportation state shown) indicates disconnection of the container (3) from a fluid path ([0184]), of the device (1), and the second position ([0191]; activated state or the opened state) indicates connection of the container (3) to the fluid path of the device ([0191]); and actuating the device (1) when the indicator is in the second position ([0178]-[0179]).
Response to Arguments
Applicant’s arguments with respect to claims 1-20 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GUILLERMO G PAZ ESTEVEZ whose telephone number is (703)756-5951. The examiner can normally be reached Monday- Friday 8:00-5:00.
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/GUILLERMO G PAZ ESTEVEZ/ Examiner, Art Unit 3783
/Lauren P Farrar/ Primary Examiner, Art Unit 3783
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