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 § 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.
Claim(s) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Erni (20110061795).
Claim 15: Erni teaches a mold including a mold cavity for molding of the body by injection of a thermoplastic material; at least one punch, for cutting a membrane portion out of a web of membrane material (Claim 1 teaches that there is a step to punch out an inner portion from the skin and to attach the outer portion the inner portion is placed in a cavity of an injection mold so the outer portion is molded by means of injection molding.); wherein, for each punch, the apparatus comprises a channel connected to the mold cavity, wherein the punch is arranged to slide in the channel from a first position distant from the mold cavity, where it cuts a membrane portion, to a second position, closing the mold cavity while surrounded by the channel, where it holds the cut membrane portion such that it faces an end of the mold cavity in which the distal edge surface of the corresponding tubular projection is formed (Figures 5-7 and [0038]-[0040] shows the punching tool being moved from a first location outside that of the cavity in 38 to a second location to cut the portion. This would cut the membrane to be where it needed to be set. The channel is where the ram 58 is positioned and the mold cavity is where the depression area is set in the second punching plate 52. These are seen to be connected in figures 6 and 7.).
The limitation of the apparatus being used to make an element of claim 1 is considered to be intended usage. Limitations drawn to the contents of an apparatus do not impart patentability to the claim (see MPEP 2115). Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining the patentability of the apparatus claim (Ex parte Thibault, 164 USPQ 666,667).
The limitations “for molding of the body by injection of a thermoplastic material,” “for cutting a membrane portion out of a web of membrane material,” and “wherein, for each punch, the apparatus comprises a channel connected to the mold cavity, wherein the punch is arranged to slide in the channel from a first position distant from the mold cavity, where it cuts a membrane portion, to a second position, closing the mold cavity while surrounded by the channel, where it holds the cut membrane portion such that it faces an end of the mold cavity in which the distal edge surface of the corresponding tubular projection is formed” are also considered to be intended usage. Since the prior art teaches the structure of the claims, it would be capable of this limitation. Claims directed to an apparatus must be distinguished in the prior art in terms of structure rather than function. MPEP 2114.
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 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Taskis (US6247604) in view of Taskis2 (US5947274) further in view of Rolland (US20070178133).
Claim(s) 2-7, 9, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taskis (US6247604) in view of Taskis2 (US5947274) further in view of Rolland (US20070178133).
Claim(s) 8 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taskis in view of Taskis2 in view of Rolland further in view of Hurley (US20120073443).
Rejection in view of Taskis, Taskis2, and Rolland
Claim 1: Taskis teaches in figures 1-3 a receptacle comprising a receptacle base to receive an active material in its inner volume and a gas-permeable element to close a receptacle base of a receptacle, wherein the receptacle base contains an active material in its inner volume, wherein the receptacle is suitable for regulation of an atmosphere out of the receptacle in a container in which the receptacle is placed , (Abstract and figure 1 shows the receptacle base being the opening of 1, a gas permeable element 4 that closes this opening, and the base has an active material in the inner volume being contents 13. This would regulate atmosphere as it closes the inside. Taskis teaches a receptacle comprising a receptacle base to receive an active material in its inner volume and the gas-permeable element of claim 1 for closing the receptacle base, Figure 1 shows a receptacle 1 being a vial. The vial has contents 13 inside and the gas permeable element closure 4 is used to close the base.), wherein said gas-permeable element comprises a body comprising a polymer material, having a base wall including at least one opening (Column 6 lines 45-53 teaches that the closure 4, closure wall 5, and walls 7 are all made from polymeric material. The opening is 6.), wherein for each opening of the base wall the body comprises a tubular projection projecting from a periphery of the opening (The tube projecting from opening 6 is the walls 7B surrounding central passageway 8.), wherein the tubular projection comprises a first end connected to the periphery of the opening and a second end defining a distal edge surface transverse to a longitudinal axis of the tubular projection (See how the walls 7B go down from opening 6 along the central passageway 8.), wherein a porous membrane portion extends across the second end of the tubular projection and is attached to the distal edge surface at its periphery (Column 6 lines 30-44 teach that the membrane is 12A that allows water vapour to pass through. It can be seen in figure 1 it goes across the distal edge surface of the second end of 7B.), wherein each membrane portion separates the active material from an outside of the receptacle (The membrane 12a is seen to go between the outside and the interior content 13. In this case the receptacle can only mean the area where the content 13 is stored. Therefore anything past the membrane 12 can be considered outside.).
If Taskis does not explicitly state that the element is gas-permeable and that the opening is not freely accessible to an inside and outside of the receptacle, Taskis teaches the puncture region 6 but is silent on the material.
Taskis2 teaches an analogous device of a vial holding a material inside with a puncturable region. Column 6 lines 14-25 teaches that this can be made of elastomeric material. Rolland teaches in [0094]-[0095] that elastomeric material can include PFPE based material and can be gas permeable (This would read upon freely accessible.).
It would have been obvious to one of ordinary skill before the effective filing date of the invention to use a gas permeable element in the device of Taskis as taught by Taskis2 and Rolland, because the simple substitution of one known element for another is within the ambit of a person of ordinary skill when the substitution would be expected to produce predictable results. See MPEP 2143, I(B). In this case the substitution would likely produce predictable results because the puncturable region of Taskis is/are an equivalent of the puncturable region of Taskis2 as they are both meant to be used for sealing.
Claim 2: Taskis teaches the base wall of the body comprises at least two openings (Figure 2 shows there are two openings 8 and 11. Both are around a center or middle of the base wall.).
Claim 3: Taskis teaches the body is an injection molded part molded over each membrane portion (Column 7 lines 13-17 teaches that the closure 4 can be made by injection moulding techniques.). The limitation “the body is an injection molded part molded over each membrane portion” is also considered to be intended usage. Since the prior art teaches the structure of the claims, it would be capable of this limitation. Claims directed to an apparatus must be distinguished in the prior art in terms of structure rather than function. MPEP 2114.
Claim 4: Taskis teaches materials of the body and each membrane portion are chemically compatible so that each membrane portion can be bonded to the distal edge surface of the tubular projection under the effect of heat and/or pressure (Column 6 lines 31-44 that membrane 12a is compression and heat welded to the walls.). This limitation is also considered to be intended usage. Since the prior art teaches the structure of the claims, it would be capable of this limitation. Claims directed to an apparatus must be distinguished in the prior art in terms of structure rather than function. MPEP 2114.
Claim 5: Taskis teaches each membrane portion is a polymer membrane portion (Column 4 lines 25-36 teach that the semi permeable membrane can be a thin film of a plastics material.).
Claim 6: Taskis teaches a height (h) of each tubular projection, taken perpendicular to the base wall, is higher than or equal to a thickness (t) of the membrane portion (Figure 1 shows the height of 7B is longer than the thickness of membrane 12.).
Claims 7 and 18: Taskis does not explicitly teach a width (w) of the distal edge surface of each tubular projection, taken transversally to a longitudinal axis of the tubular projection, is between 0.5 mm and 5 mm or between 0.5 mm and 1.5 mm. It would have been obvious to one of ordinary skill before the effective filing date of the invention to optimize the size of the projection in order for it to provide efficient coverage of the opening.
Claim 9: Taskis teaches the body includes a side wall projecting from the base wall substantially parallel to each tubular projection (7a can read upon the side wall projection.). Taskis does not explicitly state wherein a distance (d) between each tubular projection and a portion of the side wall closest to the tubular projection is at least 2 mm. It would have been obvious to one of ordinary skill before the effective filing date of the invention to optimize the distance of the projection and the side wall in order for it to provide efficient coverage of the opening by making sure the device fits into the vial).
Claim 16: Taskis teaches each membrane portion is a textile comprising polymer fibers or a perforated polymer film (Column 4 lines 25-36 teach that the semi permeable membrane can be a microporous material. It also teaches that it can be plastics material including polyolefins, such as polyethylene or polypropylene, polystyrene, polyamides, polyesters and halogenated polyvinyls such as polyvinyl chloride).
Claim 17: Taskis teaches a height (h) of each tubular projection taken perpendicular to the base wall is higher than or equal to twice a thickness (t) of the membrane portion (Figure 1 shows the height of 7B is significantly longer than the thickness of membrane 12. It appears to be much more than twice as much.).
Rejection in view of Taskis, Taskins2, Rolland, and Hurley
Claims 8 and 19: Taskis, Taskis2, and Rolland does not explicitly teach for each opening of the base wall, the body further comprises at least one transverse rib extending across the second end of the tubular projection and forming an additional attachment surface for the membrane portion flush with the distal edge surface.
Hurley teaches in the abstract an analogous device that is a sorbent container that holds a sorbent with a permeable membrane. Hurley teaches in [0040] that ribs 24 can be provided in order to add stability to the structure. It would have been obvious to one of ordinary skill before the effective filing date of the invention to have ribs as taught by Hurley in the device of Taskis, as Hurley teaches the benefits of adding stability to the structure with ribs.
Allowable Subject Matter
Claims 11-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior arts of record do not teach the method for making this gas permeable element structure with these steps.
Response to Arguments
Applicant's arguments filed 11/06/2025 have been fully considered but they are not persuasive.
Applicant argument 1:
Applicant argues “wherein the receptacle base contains the active material in its inner volume” in pages 10-11. They argue that the desiccant 11 of the prior art is not the active material as it is within a cavity 10 of closure 4.
Examiner response 1:
Examiner argues that the rejection of claim 1 mentions the active material in the inner volume being 13 and not desiccant 11. Applicant argues that 13 can not be the active material as it does not regulate atmosphere in the vial. This is considered intended usage. The claim only states that the receptacle regulates an atmosphere. Without additional structure this is all intended usage limitations as anything can “regulate an atmosphere” merely by being present. In this case the receptacle regulates atmosphere from just having the gas permeable element.
Applicant argument 2:
Applicant argues “wherein the receptacle regulates an atmosphere out of the receptacle…having a base wall including at least one opening” in pages 11-14. They argue that there is no opening when the needle is and isn’t punctured through to access the contents 13.
Examiner response 2:
Examiner argues that just having the top of the container 1 being opened up can read upon an opening. The membrane being there does not hinder 1 from having the opening in the first place. With regards to regulating atmosphere, again this is intended usage of the device. Having a membrane there can read upon “regulates an atmosphere out of the receptacle” as it is creating a barrier between the two. Regulating in the broadest sense can mean any kind of change, such as just stopping the flow or allowing the flow.
Applicant argument 3:
Applicant argues “wherein the membrane portion separates the active material from an outside of the receptacle” in pages 14-16. They argue that the membrane does not separate an active material from the outside as they believe that the active material is 11 and not 13. They also argue for the usage of the active material.
Examiner response 3:
Examiner again argues that the active material can be read upon by 13. It is indeed the membrane that separates the inside 13 from the outside of the container. The usage of the active material is considered to be intended usage. The limitation of “regulate an atmosphere out of the receptacle” is also considered to be intended usage. Regulate is a very broad term and can mean anything from blocking or allowing any kind of change. Just having any kind of hypothetical material can read upon this limitation.
Conclusion
THIS ACTION IS MADE FINAL. 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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/P.Y.S/Examiner, Art Unit 1776 01/22/2026/Jennifer Dieterle/Supervisory Patent Examiner, Art Unit 1776