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 .
Election/Restrictions
Claim(s) 17, 19-21 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 22 April 2026. Applicant’s traversal is that the claims, as currently amended, present with unity. However, this is not persuasive. Specifically, U.S. Publication No. 2002/0077584 (“Lin”) discloses vacuum generation device (10), comprising:
a chamber (12) having an active volume (13) that is decreasable from a first volume (see Fig. 7) to a second volume (see Fig. 8) due to application of force (see Fig. 8 – i.e. the compression of the chamber by a user finger 9) during a priming step, the chamber being biased to return toward the first volume when the application of force ceases (Par. 28);
a one-way vent (11), wherein air exits the chamber through the one-way vent as the active volume is decreased from the first volume to the second volume (Par. 28),
wherein return of the chamber toward the first volume from the second volume creates a vacuum (Par. 28), and
wherein the chamber is configured to receive direct application of force from a user to decrease the active volume of the chamber (see Fig. 8).
As such, no unity exists.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “chamber being configured to receive direct application of force from a user to decrease the active volume of the chamber” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Presently ALL depicted embodiments provide an actuator for moving a piston/plunger within the chamber to decrease the active volume of the chamber. As discussed in Applicant’s remarks/arguments the use of such actuators is understood NOT to comprise a “direct application of force”.
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.
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) 4-7, 10-12, and 16 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.
Applicant recites the limitation “wherein the chamber is configured to receive direct application of force from a user to decrease the active volume of the chamber”. However, the instant specification does not present sufficient evidence to demonstrate that Applicant was in possession of the claimed invention at the time of filing either actually or constructively when paired with the majority of the features of the dependent claims. Support for the invention of Claim 1 (and Claim 2) is primarily found in Par. 32, 146, 171-176. Par. 32 and 146 present to nominal recitation to a general feature made in passing, while Par. 171-176 presents what could be considered a constructive reduction to practice of an invention generalized by Claims 1, 2, and 8.
However, Claims 4-7, 10-12, and 16 present with features which are not reduced to practice in combination with a chamber which is configured to receive direct application of a force from a user to decrease the active volume of the chamber during priming, but rather features which are only disclosed in association with an actuator based configuration.
Claim 4 recites “wherein the spring comprises a first spring and a second spring”. However, such a concept is only particularly integrated into configurations which utilize an actuator to move a piston/plunger type member. There is no demonstration of this concept employed in association with a deformable structure which is directly deformed by Application of user force.
Dependent Claims 5-7, 10-12, and 16 present additional features which are never incorporated into a configuration wherein the chamber is decreased in volume by a direct application of force.
Claim Rejections - 35 USC § 102
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) 1-4, 8, and 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Publication No. 2002/0077584 (“Lin”).
Regarding Claim 1, Lin discloses vacuum generation device (10), comprising:
a chamber (12) having an active volume (13) that is decreasable from a first volume (see Fig. 7) to a second volume (see Fig. 8) due to application of force (see Fig. 8 – i.e. the compression of the chamber by a user finger 9) during a priming step, the chamber being biased to return toward the first volume when the application of force ceases (Par. 28);
a one-way vent (11), wherein air exits the chamber through the one-way vent as the active volume is decreased from the first volume to the second volume (Par. 28),
wherein return of the chamber toward the first volume from the second volume creates a vacuum (Par. 28), and
wherein the chamber is configured to receive direct application of force from a user to decrease the active volume of the chamber (see Fig. 8).
Regarding Claim 2, Lin discloses the chamber is a flexible dome which is biased to return toward a non-compressed state (Par. 28).
Regarding Claims 3 and 14-15, Lin discloses a spring (not shown – Par. 28) which biases the chamber to return toward the first volume when the application of the force ceases.
Regarding Claim 4, Lin recites that the return elements might comprise springs (plural – Par. 28).
Regarding Claim 8, Lin discloses the chamber comprises a syringe (i.e. the chamber is a reservoir configured to aspirate a sample of bodily fluids therein constituting a syringe under the BRI of the instantly claimed invention in a manner consistent with the specification of the instant application).
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2002/0077584 (“Lin”) as applied above.
Regarding Claim 5, Lin, as discussed above, recites that the dome (12) may be configured to return to its original shape via “small springs”, but does not disclose whether these springs have the same or different stiffnesses. However, Examiner submits that there are only two options for such springs whereby the springs can either have the same stiffness or different stiffnesses, whereby due to manufacturing tolerances the likelihood of any two springs having identical stiffnesses (depending upon the resolution to which the stiffness is measured) is minimal. As such, it would have been obvious for one having ordinary skill in the art at the time the invention was made to utilize two springs with different stiffness in order to affect the invention of Lin whereby using two springs with different springs will greatly reduce manufacturing costs as significant consideration would be necessary to source springs which present with identical stiffnesses.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2002/0077584 (“Lin”) as applied above, and further in view of U.S. Publication No. 2014/0207045 (“Anand”).
Regarding Claim 13, Lin discloses the invention substantially as claimed except for disclosing what type of springs are used, e.g. a coil spring, torsion spring, pneumatic spring, stretchable elastomers, or compressible foam. However, Anand discloses a related dome which can be biased between compressed and uncompressed configurations through the use of springs such as a coil spring (2602 – Par. 174). It would have been obvious for one having ordinary skill in the art at the time the invention was made to utilize a coil spring to practice the invention of Lin, as disclosed by Anand, as an obvious design choice in selecting a specific species identified in the prior art to be known to be useful, predictable, and expected in resolving to practice a more broadly recited genus.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM R CARPENTER whose telephone number is (571)270-3637. The examiner can normally be reached Mon. to Thus. - 7:00AM to 5:00PM (EST/EDT).
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, KEVIN SIRMONS can be reached at (571) 272-4965. 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.
/WILLIAM R CARPENTER/Primary Examiner, Art Unit 3783 08/18/2026
Prosecution Insights