DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-18 in the reply filed on December 1, 2025 is acknowledged. Applicant further election with traverse of species (i)(1) and (ii)(6) is acknowledged. The traversal is on the ground(s) that the species are not mutually exclusive. Applicant argues a tip body can be free to tungsten and comprise yttrium. This is found persuasive and the species restriction for species (i)(3) has been withdrawn. Applicant further argues a cross section can be a polygon (or closed polyline) and curved. This is not found persuasive because it is understood a regular polygon or a closed polyline are made up of straight line segments, which are not curved. A shape comprising curved sides is no longer considered a regular polygon or a closed polyline. Thus, species (ii)(4) and (ii)(5), claims 11-12, are considered withdrawn. Under further consideration, the restriction for species (ii)(7) will be withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 4 “to make a hole for creating the housing cone” is grammatically incorrect. Furthermore, the comma before the limitation “having as its radius the maximum distance…” should be deleted. Also, the phrase “so as to” in the last two lines is usually used to connect an action to an intended result. However, no action was cited in the wherein clause. Appropriate corrections are required.
Similarly, Claim 16 is objected to because of the following informalities: “to make a hole for creating the housing cone” is grammatically incorrect.
Claim Interpretation
Claim 1 recites “a housing cone of a needle in a syringe body of a glass syringe for medical substances”, “for creating the housing cone in the syringe body”, and “the syringe body”. These limitations are considered intended use and does not bear any additional structural limitation to the forming apparatus. Thus, they will not be given patentable weight. Claim 1 additionally recites “and moved by respective motor means”. Since this limitation is not positively recited, it will not be given patentable weight.
Furthermore, the term “configured to make a hole” is interpreted as a tool that can be inserted into a glass tube and prevent collapsing of the glass tube and closure of the hole, which is in line with the disclosure of the invention (see [0039]-[0040] of the specification).
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 1-9, and 13-18 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 1 recites the limitation "the maximum circle" in lines 19-20 and “the maximum distance” in line 20. There is insufficient antecedent basis for these limitations in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation between 3% and 7%, and the claim also recites between 4% and 6%, which is the narrower statement of the range/limitation. Claim 18 also recites the broad recitation between 7% and 13%, and the claim also recites between 8% and 12%, which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
By virtue of their dependencies on claim 1, claims 2-9 and 13-18 are also considered indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 16 is dependent on claim 1, and recites the forming tool of claim 1. Thus, claim 16 does not provide for any additional structure to the forming tool. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Glacki et al. (2019/0144326). Glacki et al. (2019/0144326). Glacki discloses a forming apparatus comprising a forming tool that can be inserted within a glass tube to prevent complete collapse, thereby making a hole when the glass tube is shaped around it (see fig. 2), the forming tool comprising a grip portion (near arrow 1 in figure 4) that can be gripped for movement ([0153], [0110]), a tip (46), and a tip body (near arrow 17) between the tip and grip portion, wherein the grip portion, tip body, and the tip are arranged as one piece (see figure 4, [0143]-[0144]) and aligned along an axis Y of the forming tool (see at least fig. 6, [0017]). Glacki further teaches the tip body has a non-circular cross section comprising cylindrical and planar sections (figures 6, 8, 10, [0017]) with an overall cross section that is smaller than a cross section of a maximum circle, wherein the maximum circle has as its radius the maximum distance between a point on the non-circular cross section and the axis measured on a cross-sectional plane perpendicular to the axis. Additionally, Glacki teaches at least one liquid lubricant dispensing device ([0103], figure 2a).
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.
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.
Claims 1-9 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer (2,209,739) in view of Glacki et al. (2019/0144326). Regarding claims 1 and 16, Meyer discloses a forming apparatus comprising a forming tool that can be inserted within a glass tube to prevent complete collapse, thereby making a hole when the glass tube is shaped around it, the forming tool comprising a grip portion (near 17) that can be gripped for movement, a tip (end opposite 17), and a tip body between the tip and grip portion, wherein the grip portion, tip body, and the tip are arranged as one piece (see figure 3), page 2, right column, lines 1-2, 22-26) and aligned along an axis of the forming tool (fig. 5, page 2 right column, lines 35-44).
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Meyer further teaches the tip body has a non-circular cross section, such as star shaped (page 2 right, column, lines 22-24) with an overall cross section that is smaller than a cross section of a maximum circle, wherein the maximum circle has as its radius the maximum distance between a point on the non-circular cross section and the axis measured on a cross-sectional plane perpendicular to the axis (see figure 4 reproduced below, note the inserted dotted line representing the maximum circle).
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Meyer also teaches taking up lubricant on the forming tool (page 1 right column lines 15-17), which suggests a lubricant dispensing device, but is not explicit about it. Like Meyer, Glacki also discloses a forming tool comprising a grip portion (near arrow 1 in figure 4), a tip (46), and a tip body (near arrow 17) between the tip and grip portion (see figure 4, [0143]-[0144]). Glacki further teaches at least one liquid lubricant dispensing device ([0103], figure 2a) for lubricating the forming tool and preventing adhesion and damage to the glass article being formed ([0010]). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided for a lubricant dispensing device in the apparatus of Meyer, so as to provide lubricant to the forming tool and prevent adhesion and damage to the glass article being worked upon.
Regarding claim 2, Meyer teaches non-circular cross section can be in the form of a regular hexagon or a star (page 2 lines 22-24). The relative area of a regular hexagon inscribed in a circle is approximately 82.7% of the area of the circle, when the radius the maximum distance from the center to the corner of the hexagon.
Regarding claim 3, as can be seen in figure 4, relative area of the star-shaped non-circular cross section (covered black hash marks) is less than 70% of the cross section of the circle (dotted line).
Regarding claims 4-6, the star-shaped non-circular cross section identifies, with respect to the maximum circle, a plurality of recesses 5 fluidly connected to each other along the axis to allow the passage of a lubricant (page 2 right column lines 27-26).
Regarding claims 7-8, Meyer teaches the tip body is tapered from the grip portion to the tip (figures 3 and 5, page 2 right column line 51), which suggests a larger cross section near grip portion and a smaller cross section near the tip. Thus, the cross section of the tip body varies along the axis.
Regarding claim 9, Meyer teaches the forming tool is made of carbon (page 1 right column, lines 13-15), which is considered free of tungsten.
Regarding claim 13, Meyer teaches the cross section of the tip body is curved, see figure 4.
Regarding claim 14, Meyer teaches the tip body is tapered from the grip portion to the tip (figures 3 and 5, page 2 right column line 51), which includes an attachment portion to the tip body.
Regarding claim 15, Meyer teaches the whole length of the forming tool has a cross section in the form of a non-circular cross section (page 2 right column, lines 22-30, figures 3-5), which suggests the tip has the same geometry as the tip body, with respect to the cross-sectional plane perpendicular to the prevailing extension axis.
Regarding claim 16, as mentioned above, the forming tool of Meyer is configured to make a hole in a glass tube by preventing collapsing of the glass tube and closure of the hole.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Meyer (2,209,739) in view of Glacki et al. (2019/0144326) as applied to claim 16 above, and further in view of Wang (TW I282779 machine translation provided). Meyer teaches the forming tool is used for shaping softened glass, and thus should be of a material that has high heat resistance (page 1 right column lines 13-15). Meyer suggests a high heat resistance material comprising carbon, but fails to suggest a forming tool comprising a ceramic material doped with yttrium. Wang teaches a glass molding tool comprising a protective film made of a material that does not react with the glass and having good chemical stability. Wang teaches well-known film comprising carbon have good release efficiency and used for high temperatures, but is subjected to peeling with prolong use. Wang suggests implanting the carbon film with nitrogen ions and heat treating to produce a more durable film. Wang also teaches the protective film can further comprise of components, such as silicon nitride (abstract, top paragraph on page 2, “Si3N4” in bottom paragraph on page 3). Wang further teaches incorporating an element M, which includes yttrium, to improve the homogeneity between the base and film, thereby enhancing the adhesion of the film and high temperature stability of the molding tool (paragraph bridging pages 2-3). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided for a forming tool of Meyer to comprise of a ceramic, such as silicon nitride doped with yttrium, to provide for improved high temperature stability for the tool.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Meyer (2,209,739) in view of Glacki et al. (2019/0144326) and Wang (TW I282779 machine translation provided) as applied to claim 17 above, and further in view of Yoneda (JP H08157224 machine translation provided). Wang doesn’t specify the concentration of yttrium. Yoneda similarly teaches forming tool comprising a ceramic material doped with yttrium, wherein the forming tool comprising a protective film that has good adhesion to the base (abstract), much like Wang. Yoneda specifies yttrium can be added in the amount of several weight percent (7th passage on page 4), which includes values 3% or 4%. Yoneda teaches predictable success in providing for ceramic films on forming tools having improved durability against peeling when used for shaping softened glass (6th passage on page 4). Accordingly, it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided for a yttrium content of several percent, such as 3% or 4%, in the forming tool Meyer, Glacki, and Wang, as Yoneda teaches the content would predictably provide for improved durability in the forming tool with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUEENIE S DEHGHAN whose telephone number is (571)272-8209. The examiner can normally be reached Monday-Friday 8:00-4:30.
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/QUEENIE S DEHGHAN/Primary Examiner, Art Unit 1741