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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-5, 7-8, 10, 12-14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dubbe et al (US 2010/0167231).
Regarding claim 1, Dubbe discloses:
A syringe (Fig. 1) comprising: a syringe body (20) for receiving a product for injection, the syringe body (20) comprising a stopper (1; Fig. 2), the stopper having an inner wall (wall surrounding cavity 13) and delimiting a cavity (13), the inner wall being elastically deformable (¶0064); a piston (40; Fig. 5) mounted so as to be able to slide inside the syringe body (Fig. 5) in an injection direction of the product and in an other direction opposite to the injection direction of the product (¶0058), the piston (40) comprising a rod having a first end and a second end opposite the first end (¶0068); a pusher (100; Fig. 8) at the first end of the rod (40); and a snap-fastening head (41) at the second end of the rod (40) and snap-fastened inside the cavity of the stopper (1), the snap-fastening head (41) having a planar bearing surface (cylindrical surface of head 41) bearing against the inner wall of the stopper (1) when the piston (40) slides in the other direction that is opposite to the injection direction of the product (¶0068); wherein the snap-fastening head (41) comprises at least one protruding element (42) that protrudes from the planar bearing surface and that is arranged so as to penetrate the inner wall of the stopper (1) when the piston (40) slides in the other direction that is opposite to the injection direction of the product (¶0068).
Regarding claim 2, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element comprises two planar surfaces (see Image 1 below) forming an acute dihedral angle (Image 1).
Image 1. Annotated portion of Fig. 5
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Regarding claim 3, Dubbe discloses:
The syringe of claim 2, wherein the two planar surfaces of the at least one protruding element (42) are joined together so as to form an edge (Image 1).
Regarding claim 4, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42) comprises a conical or frustoconical surface (see Fig. 5) exhibiting an acute cone angle.
Regarding claim 5, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42) forms a tooth exhibiting an acute tip angle (Image 1 - edge).
Regarding claim 7, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42) comprises a set of the protruding elements (42) that protrude from the planar bearing surface and that are arranged so as to penetrate the inner wall of the stopper (1) when the piston (40) slides in the other direction that is opposite to the injection direction of the product (¶0068).
Regarding claim 8, Dubbe discloses:
The syringe of claim 7, wherein the protruding elements (42) of the set form patterns that are spaced apart periodically on the planar bearing surface (Fig. 5).
Regarding claim 10, Dubbe discloses:
The syringe of claim 7, wherein the snap-fastening head (41) extends along a longitudinal axis, and the protruding elements (42) of the set exhibit axial symmetry with respect to the longitudinal axis (Fig. 5).
Regarding claim 12, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42) and the snap-fastening head (41) are in one piece (¶0068).
Regarding claim 13, Dubbe discloses:
The syringe of claim 1, wherein the snap-fastening head (41) and the at least one protruding element (42) comprise a plastics material (¶0068).
Regarding claim 14, Dubbe discloses:
The syringe of claim 1, wherein the stopper (1) comprises an elastomeric material (¶0064).
Regarding claim 16, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42): comprises two planar surfaces (Image 1) forming an acute dihedral angle of between 10° and 80° (Image 1), comprises a conical or frustoconical surface exhibiting an acute cone angle of between 10° and 80°, or forms a tooth (barb) exhibiting an acute tip angle of between 10° and 80° (Fig. 5).
Regarding claim 17, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42): comprises two planar surfaces (Image 1) forming an acute dihedral angle of between 30° and 60° (Image 1), comprises a conical or frustoconical surface exhibiting an acute cone angle of between 30° and 60°, or forms a tooth (barb) exhibiting an acute tip angle of between 30° and 60° (Fig. 5).
Regarding claim 18, Dubbe discloses:
The syringe of claim 1, wherein the at least one protruding element (42): comprises two planar surfaces (Image 1) forming an acute dihedral angle of between 40° and 50° (Image 1), comprises a conical or frustoconical surface exhibiting an acute cone angle of between 40° and 50°, or forms a tooth (barb) exhibiting an acute tip angle of between 40° and 50° (Fig. 5).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Dubbe.
Regarding claim 6, Dubbe discloses the syringe of claim 1 but is silent regarding “wherein the planar bearing surface is situated at a distance from the second end of the rod, and the at least one protruding element has a height (H) along the normal to the planar bearing surface, such that: 0.05 D ≤ H ≤ 0.2 D.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Dubbe to have a protruding element with a height H of 0.05 D ≤ H ≤ 0.2 D since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Dubbe would not operate differently with the claimed height since the second end of the rod is intended to not separate from the stopper during backward movement of the rod and having a height of 0.05 D ≤ H ≤ 0.2 D would allow the device to function appropriately with the claimed height.
Allowable Subject Matter
Claims 9, 11, 15, and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TASNIM M AHMED whose telephone number is (571)272-9536. The examiner can normally be reached M-F 9am-5pm Pacific time.
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/TASNIM MEHJABIN AHMED/Primary Examiner, Art Unit 3783