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 .
Status of the Application
Claims 1, 3, 10, and 13 have been examined in this application. This communication is a Final Rejection in response to the "Amendment" and Remarks" filed on 02/26/26.
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.
Claims 1, 3, 10, and 13 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As per claim 1, the limitations “a reservoir” and “a reservoir” appear to be a double inclusion not supported by the specification. A correction may include replacing the second recitation of “a reservoir” with “the reservoir”.
Claims 3, 10, and 13 depend from claim 1 and thus inherit the deficiencies thereof.
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.
Claims 1, 3, 10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US 3256551 to Shwartzman in view of US 9623536 to Nüsslei in view of US 2934775 to Bergstrom.
As per claim 1, and as the examiner can understand the claim, Shwartzman discloses a fluid dispensing device (10), the dispensing device comprising:
a first coupling system (walls of 12);
a second coupling system (16, 18) for coupling a consumable (20, 21) to the dispensing device;
a dispensing valve (24) for applying a fluid to the consumable (Fig. 4; Col. 1, ¶ 1); and
a housing (12) for storing the fluid to be dispensed;
wherein the housing has a first coupling piece (walls of 12) of the first coupling system that allows the coupling of said device to a tool;
wherein a second coupling piece (16, 18) of the second coupling system which allows the coupling of said consumable to the dispensing device, transmitting the fluid from the reservoir to said consumable through the dispensing valve (Fig. 4);
wherein the dispensing device is independent of the consumable (Fig. 1), the consumable being coupled to the dispensing device (Fig. 2).
Shwartzman does not disclose: the first coupling system being “for coupling to a motorised turning tool”; a reservoir for storing the fluid to be dispensed, and the reservoir is formed by a sub-reservoir housed inside a space created by walls of the housing of the device; the first coupling piece provides a rotation to the housing to perform a function of the consumable and, the second coupling piece allowing the rotation; the consumable may be changed without decoupling the dispensing device from the tool.
In regards to the limitation requiring the first coupling system being for coupling to a motorized turning tool, it has been held that: a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art; and, if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2114(II). In addition, functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 or 103 may be appropriate. See MPEP §2114(IV). Furthermore, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP §2112.01(I). Shwartzman discloses the claimed structure and is capable of being used as claimed – i.e. the first coupling system being for coupling to a motorized turning tool.
In regards to the limitations drawn to a reservoir, Nüsslein teaches a fluid dispensing device (10) with coupling (12) to a tool, and the fluid dispensing device comprising a sub-reservoir (30) housed inside a space create by walls of a housing (11; Fig. 2) of the fluid dispensing device so that the fluid dispensing device can be easily refilled by easily exchanging the sub-reservoir (Col. 6, Ln. 10-15). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify Schwartzman according to the aforementioned teachings from Nüsslein for reasons including to easily refill the fluid dispensing device by easily exchanging the sub-reservoir.
In regards to the limitations requiring the first coupling piece provides a rotation to the housing to perform a function of the consumable and, the second coupling piece allowing the rotation, it has been held that: a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art; and, if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2114(II). In addition, functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 or 103 may be appropriate. See MPEP §2114(IV). Furthermore, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP §2112.01(I). The Shwartzman-Nüsslein combination discloses the claimed structure and is capable of being used as claimed – i.e. the first coupling being used to provide a rotation to the housing to perform a function of the consumable and the second coupling piece allowing the rotation.
In regards to the limitation requiring the consumable may be changed without decoupling the dispensing device from the tool, Bergstrom teaches a fluid dispensing device (Fig. 4, item 50) coupled to a tool for transmitting rotation to the dispensing device (Col. 3, Ln. 40-47), the dispensing device comprising a consumable (56) that is releasably engaged to the dispensing device by a second coupling piece comprising a threaded ring. It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify the Shwartzman-Nüsslein combination according to the aforementioned teachings from Bergstrom for reasons including to allow replacement of a worn consumable with a new consumable—that replacement achievable without decoupling the dispensing device from a tool.
As per claim 3, Shwartzman further discloses the second coupling piece bringing the dispensing valve in contact with the consumable during use (Fig. 2, 4), and Bergstrom further discloses the housing at its end opposite to the tool has said second coupling piece formed by a fixing layer where the consumable is fixed (Fig. 4).
As per claim 10, Nüsslein further teaches a housing (11, 13) having a system for opening and accessing its interior space, in order to replace the sub-reservoir (Col. 5, LN. 55-58). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to further modify the Shwartzman-Nüsslein-Bergstrom combination according to the aforementioned teachings from Nüsslein for reasons including to replace the sub-reservoir when it is depleted.
As per claim 13, Shwartzman further discloses the dispensing valve is of the spring-loaded push button valve type which opens by pressure against the push button and closes in the absence of pressure (Fig. 2, 4).
Response to Arguments
In regards to the claim objections and rejections under 35 USC § 112 issued in the non-final action dated 08/28/25, the amendment filed 02/26/26 appropriately addresses all and they are withdrawn.
In regards to the claim rejections under prior art issued in in the non-final action dated 08/28/25, the remarks filed 02/26/26 have been fully considered but are moot because they do not apply to the grounds of rejection contained in this office action.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The prior art made of record in FORM PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
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 with expire on the date the advisory action is mailed, and any extension fee 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 Randy Gruby, whose telephone number is (571) 272-3415. The examiner can normally be reached from Monday to Friday between 8:00 AM and 5:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Paul Durand, can be reached at (571) 272-4459.
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/R.A.G/Examiner, Art Unit 3754
/PAUL R DURAND/Supervisory Patent Examiner, Art Unit 3754 March 23, 2026