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 .
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 second electrode being configured to move within a syringe as a plunger rod or stopper in combination with an inner shield enclosing the pair of electrodes and an outer shield partially enclosing the inner shield as recited in claim 1, the second electrode extending along a wall of the syringe while also being a plunger rod or stopper as recited in claim 6, the pair of viewing windows in combination with the second electrode being a plunger rod or stopper as recited in claim 7, a second electrode being both rectangular and a plunger rod or stopper as recited in claim 8, and a second electrode being both tapered and a plunger rod or stopper as recited in claim 9 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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.
Claims 6-9 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 6 recites the second electrode extending along a wall of the syringe while being a plunger rod or stopper, however such a limitation is supported in the specification as originally filed and is considered new matter.
Claim 7 recites a pair of view windows in combination with the embodiment having the second electrode being a plunger rod or stopper, however such a limitation is supported in the specification as originally filed and is considered new matter.
Claim 8 recites both electrodes being rectangular in combination with the embodiment having the second electrode being a plunger rod or stopper, however such a limitation is supported in the specification as originally filed and is considered new matter.
Claim 9 recites both electrodes being tapered in combination with the embodiment having the second electrode being a plunger rod or stopper, however such a limitation is supported in the specification as originally filed and is considered new matter.
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 6-9 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.
Claim 6 recites the embodiment having both electrodes on the sides of the wall the syringe while claim 1 upon which claim 6 depends recites the embodiment having the second electrode on the plunger, which renders claim 6 incompatible with claim 1. For examination purpose, claim 6 will be interpreted as having one electrode on the wall and one electrode on the plunger.
Claim 7 recites a pair of viewing windows between the first and second electrodes, however, such a window configuration is only appropriate for the embodiment where there are a pair of electrodes facing each other. Claim 1 upon which claim 7 defines at least one electrode being on the plunger, which does not or rather cannot have the same type of window configuration. Applicant is advised to review all the dependent claims and assure that every limitation is appropriate for the claimed embodiment where at least the second electrode is part of the plunger or stopper. For examination purposes, the wall of the syringe will be considered as an equivalent of the claimed viewing windows until the claim language is corrected.
Claim 8 recites that both electrodes are rectangular, but this is not consistent with claim 1 which requires at least the second electrodes to be a plunger or stopper. For examination purposes, only the first electrode will be understood as being rectangular.
Claim 9 recites that both electrodes are tapered, but this is not consistent with claim 1 which requires at least the second electrode to be a plunger or stopper. For examination purpose, only the first electrode will be understood as being rectangular
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 6-8, 10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 6,110,148 to Brown et al. (“Brown”) in view of U.S. Patent Publication No. 2021/0186365 to Kinio et al. (“Kinio”).
Regarding claim 1, Brown teaches a sensor (Fig. 2) for measurement of contents of a syringe (80), the sensor comprising: a voltage source configured to generate a first voltage (column 2, lines 25-29), a pair of electrodes (Fig. 5-B) coupled to the voltage source including a first electrode (400a”) and a second electrode (400a’), the second electrode configured to move within the syringe and being one of a plunger rod of the syringe or a stopper of the syringe (Fig. 5-B, plunger rod), the pair of electrodes configured to apply an electric field extending through at least a portion of an interior of the syringe (column 8, lines 18-31), a measurement circuit configured to measure a capacitance across the pair of electrodes (abstract), and an outer shield (metal layer, column 6, lines 12-15) having a third voltage (the metal shield would inherently have a voltage), but does not show the inner shield.
Kinio teaches an inner shield partially (Fig. 4, 150/152) enclosing a pair of electrodes (142/144), the inner shield having a second voltage (via 168/170). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated an inner shield into the sensor of Brown as taught by Kinio in order to prevent parasitic capacitance ([0050]). Once combined, the outer shield of Brown would partially enclose the inner shield.
Regarding claim 2, Brown and Kinio teach the sensor of claim 1 as shown above, Kinio further teaching the inner shield comprising a first portion (150) and a second portion (152) and the second voltage is a voltage difference between the first portion and the second portion (via 168/170). Once combined the first portion would partially enclose the first electrode and the second portion would partially enclose the second electrodes.
Regarding claim 4, Brown and Kinio teach the sensor of claim 2 as shown above, Brown further teaching the outer shield comprising a first portion and a second portion (two halves of the previously defined outer shield), the first portion of the outer shield partially enclosing the first portion of the inner shield, the second portion of the outer shield partially enclosing the second portion of the inner shield (the outer shield is designed to surround both electrodes at least partially given the broadest reasonable interpretation), and the third voltage is a fixed voltage applied to both the first portion of the outer shield and the second portion of the outer shield (the same fixed voltage would apply to both halves of the outer shield and can be labeled as a third voltage).
Regarding claim 6, Brown and Kinio teach the sensor of claim 1 as shown above, Brown further teaching the first electrode extends along a wall of the syringe, the second electrode extends along the plunger of the syringe
Regarding claim 7, Brown and Kinio teach the sensor of claim 6 as shown above, Brown further teaching the first electrode and second electrode are separated by a pair of viewing windows to provide visual access to contents of the syringe (wall of the syringe, see 112 rejection above for interpretation).
Regarding claim 8, Brown and Kinio teach the sensor of claim 6 as shown above, Brown further teaching the first electrode is
Regarding claim 10, Brown and Kinio teach the sensor of claim 1 as shown above, Brown further teaching the first electrode (400a”) extends along a wall of the syringe and the second electrode (400a’) is within the syringe (Fig. 5-B).
Regarding claim 13, Brown and Kinio teach the sensor of claim 10 as shown above, Brown teaching the first electrode being rectangular ([0253]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Brown and Kinio as applied to claim 2 above, and further in view of U.S. Patent Publication No. 2009/0069756 to Larsen.
Regarding claim 3, Brown and Kinio teaches the sensor of claim 2 as shown above, but are silent regarding the relative voltages between the electrodes and the shields.
Larsen teaches the voltage difference between a first portion and a second portion of an inner shield is equal to a voltage difference applied by the voltage source to the pair of electrodes ([0031]). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the voltages between shields and electrodes to be the same as having the same voltage is common practice in order to ensure that no voltage imbalances occur in order for proper functioning and capacitance measurement.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Brown and Kinio as applied to claim 2 above, and further in view of U.S. Patent Publication No. 2019/0016054 to Ding et al. (“Ding”).
Regarding claim 5, Brown and Kinio teach the sensor of claim 1 as shown above, but do not teach the insulating layer.
Ding teaches an insulating layer (422) between an inner shield (423D/E) and an outer shield (423C). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an insulating layer in the sensor of Brown and Kinio as taught by Kinio as an insulating layer is needed for isolation so that the shield electrodes can function to shield the electrodes from parasitic conductance.
Claims 9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Brown and Kinio as applied to claim 6 above, and further in view of U.S. Patent Publication No. 2018/0093042 to Klemm et al. (“Klemm”).
Regarding claim 9, Brown and Kinio teach the sensor of claim 6 as shown above, but do not teach the tapered shape.
Klemm teaches a first electrode being tapered toward an end of a container (61, Fig. 1). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode of Brown to be tapered as taught by Klemm in order to improve the accuracy and precision of the capacity measurement ([0035]).
Regarding claim 14, Brown and Kinio teach the sensor of claim 10 as shown above, but do not teach the tapered shape.
Klemm teaches a first electrode being tapered toward an end of a container (61, Fig. 1). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first electrode of Brown to be tapered as taught by Klemm in order to improve the accuracy and precision of the capacity measurement ([0035]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Brown and Kinio as applied to claim 10 above, and further in view of U.S. Patent Publication No. 2015/0268656 to Bammer et al. (“Bammer”).
Regarding claim 15, Brown and Kinio teach the sensor of claim 10 as shown above, but Brown teaches a single cylindrical outer electrode instead of two outer electrodes (i.e., first and third electrodes).
Bammer teaches a cylindrical electrode configuration (Fig. 9D) incorporating a third electrode (23) extending along the wall of the container on an opposite side of the container to a first electrode (22). It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention as multiple pairs of measurement electrodes are advantageous for accurate measurement of the liquid content of level in elongated containers ([0069]).
Response to Arguments
The specification amendment was received on 01/30/2026. The specification amendment is acceptable.
Applicant’s arguments and amendments with respect to specification objections have been fully considered and are persuasive. The specification objections have been withdrawn.
Applicant's arguments and amendments with respect to art rejections have been fully considered but they are not persuasive. Applicant argues, inter alia, that the combination of Kawai, Kinio, and Brown changes the principle of operation of the primary reference Kawai. Examiner respectfully disagrees. Examiner submits that all the references use a pair of electrodes to measure capacitance thereby maintaining the primary principle of operation, while merely showing different types of obvious art-recognized electrodes shape and configuration variants. In any case, a new rejection has been issued in view of Brown in Kinio in order to address the new limitations presented in the most recent amendment.
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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN KOO whose telephone number is (703)756-1749. The examiner can normally be reached M-F 8am-5pm EST.
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, Michael Tsai can be reached at (571) 270-5246. 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.
/B.K./Examiner, Art Unit 3783 /THEODORE J STIGELL/Primary Examiner, Art Unit 3783
Prosecution Insights