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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 3/10/2023, 6/13/2024, 10/22/2024, and 9/4/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The abstract of the disclosure is objected to because:
Line 4 as numbered by Applicant states “a syringe”. Line 3 as numbered by Applicant recites “a syringe”. If the syringe of line 4 as numbered by Applicant is intended to be the same as the syringe of line 3 as numbered by Applicant, Examiner suggests replacing “a syringe” in line 4 as numbered by Applicant with “the syringe” to put the abstract in clearer form.
Line 6-7 as numbered by Applicant states “the one or more fluid”. Line 5 as numbered by Applicant recites “one or more fluids”. Examiner suggests replacing “the one or more fluid” in line 6-7 as numbered by Applicant with “the one or more fluids” to put the abstract in clearer form.
Line 7, line 9, line 10 and line 11 as numbered by Applicant states “the syringe”. Line 3 and 4 as numbered by Applicant both recite “a syringe”. It is unclear which syringe “the syringe” refers to. Examiner suggests amending line 4 as numbered by Applicant to state “the syringe” to put the claim in clearer form as to which syringe line 7, 9, 10, and 11 as numbered by Applicant refers to.
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
This application claims foreign priority to application KR10-2020-0116780 filed 9/11/2020 and is a 371 of PCT/KR2021/003638 filed 3/24/2021. Examiner suggests adding the priority information to the disclosure after the title under the heading “Cross-Reference to Related Applications”.
Paragraph [53] states “a second hinge portion 420”. A typo has been made as the second hinge portion is item 410, not item 420.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities:
Line 2 recites “a syringe”. As antecedent basis for the syringe has already been provided in line 1, Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
Line 5 recites “the one or more fluid”. Line 2-3 recites “one or more fluids”. Examiner suggests replacing “the one or more fluid” in line 5 of claim 1 with “the one or more fluids” to put the claim in clearer form by clearly referring to the fluids of line 2-3.
Line 6 recites “by moving forward and backward a piston”. Examiner suggests replacing “by moving forward and backward a piston” in line 6 of claim 1 with “by moving a piston forward and backward” to put the claim in clearer grammatical form.
Claim 12 is objected to because of the following informalities:
Line 1-5 recites “wherein a tube groove configured to prevent folding of a tube connecting a second fluid injection port and a second fluid supplier to each other, and to fix the tube is formed on an inner surface of the cover”. Examiner suggests replacing “wherein a tube groove configured to prevent folding of a tube connecting a second fluid injection port and a second fluid supplier to each other, and to fix the tube is formed on an inner surface of the cover” in line 1-5 of claim 12 with “wherein a tube groove is formed on an inner surface of the cover, the tube groove configured to prevent folding of the tube connecting the injection port of the second fluid and the supplier of the second fluid to each other, and to fix the tube” to put the claim in clearer grammatical form.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 3 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
In regard to claim 3,
Line 4-5 recites “a thumb and an index finger are supported on the first hinge portion and the second hinge portion”. The thumb and index finger of a human organism cannot be positively claimed. Claim 3 is drawn to an apparatus. Examiner suggests replacing “a thumb and an index finger are supported on the first hinge portion and the second hinge portion” in line 4-5 of claim 3 with “a thumb and an index finger are configured to be supported on the first hinge portion and the second hinge portion”.
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 1-12 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.
In regard to claim 1,
Line 5-6, 8, 9, and 10 recite “the syringe”. Line 1 and 2 of claim 1 recites “a syringe”. It is unclear which syringe “the syringe” of line 5-6, 8, 9, and 10 refers to. For examination purposes Examiner construes the syringe of line 1 and line 2 to be the same syringe. Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
Examiner notes claims 2-12 are similarly rejected by virtue of their dependency on claim 1.
In regard to claim 2,
Line 2-3 recites “a side”. Claim 2 depends on claim 1. Claim 1 recites “a cover having a shape surrounding a top of the syringe, hinged at a side to the body”. It is unclear if the side of claim 2 line 2-3 is the same as the side of the cover of claim 1 or is a second side of the cover or is a side of the body. For examination purposes Examiner construes “a side” to be “a side of the body”. Examiner suggests replacing “a side” in line 2-3 of claim 2 with “a side of the body”.
Line 6 recites “a side”. Claim 2 depends on claim 1. Claim 1 recites “a cover having a shape surrounding a top of the syringe, hinged at a side to the body”. It is unclear if the side of claim 2 line 6 is the same as the side of the cover of claim 1 or is a second side of the cover or is the same as the side of the body of line 2-3 of claim 2. Since the first hinge portion is hinged to the cover at a side and the second hinge portion is coupled to the first hinge portion and shares a hinge shaft, Examiner construes “a side” in line 6 to be “the side of the body”. Examiner suggests replacing “a side” in line 6 of claim 2 with “the side of the body”.
Line 7 recites “another side”. Line 4 introduces another side of the body. It is unclear if the another side of line 7 is the same side as line 4 of claim 2 or is a third different side. For examination purposes Examiner construes “another side” to be “the another side”. Examiner suggests replacing “another side” in line 7 of claim 2 with “the another side”.
Line 12 recites “the syringe”. Claim 1, which claim 2 depends on, recites “a syringe” in line 1 and line 2. It is unclear which syringe “the syringe” of claim 2 refers to. For examination purposes Examiner construes the syringe of line 1 and line 2 of claim 1 to be the same syringe. Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
Examiner notes claim 3 is similarly rejected by virtue of its dependency on claim 2.
In regard to claim 3,
Line 2 recites “a side”. Claim 3 depends on claim 2 and claim 1. Claim 2, line 2-3 and 6 recite “a side” and claim 1 also introduces a side. It is unclear if the side of claim 3 is an additional side or is the same as one of the sides already introduced. For examination purposes Examiner construes “a side” in line 2 of claim 3 to be “the side of the body”. Examiner suggests replacing “a side” in line 2 of claim 3 with “the side of the body”.
Line 4 recites “another side”. Claim 3 depends on claim 2 and claim 1. Claim 2 introduces another side in line 7 and 4. It is unclear if the another side of claim 3 is the same side as line 4 or line 7 of claim 2 or is a third different side. For examination purposes Examiner construes “another side” to be “the another side”. Examiner suggests replacing “another side” in line 4 of claim 3 with “the another side”.
Line 4-7 recites “a thumb and an index finger are supported on the first hinge portion and the second hinge portion, and the first fixing portion and the second fixing portion”. It is unclear if a method step is being claimed due to the phrase “are supported”. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP 2173.05(p). For examination purposes Examiner construes the thumb and index finger to not positively be required by the claim. Examiner suggests replacing “a thumb and an index finger are supported” in line 4-5 of claim 3 with “a thumb and an index finger are configured to be supported”.
In regard to claim 4,
Line 3 recites “fluids”. Claim 4 depends on claim 1. Claim 1 recites “one or more fluids”. It is unclear if the fluids of line 3 are additional fluids to the one or more fluids or if the fluids of line 3 are the same as the fluids of claim 1. For examination purposes Examiner construes them to be the same. Examiner suggests replacing “fluids” in line 3 of claim 4 with “the one or more fluids”.
Line 3 recites “the syringe”. Claim 1, which claim 4 depends on, recites “a syringe” in line 1 and line 2. It is unclear which syringe “the syringe” of claim 4 refers to. For examination purposes Examiner construes the syringe of line 1 and line 2 of claim 1 to be the same syringe. Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
In regard to claim 6,
Line 1-2 recites “the holder includes one or more of a first holder… and a second holder”. It is unclear how a single holder can include multiple holders. Examiner suggests amending claim 5 to replace “a holder” with “one or more holders” AND amending claim 6, line 1-2 to replace “the holder includes one or more of a first holder” with “the one or more holders include a first holder”.
Line 5 recites “the predetermined area”. Claim 6 depends on claim 5. Line 3 of claim 6 and line 4 of claim 5 both recite “a predetermined area”. It is unclear which predetermined area is referred to in line 5. For examination purposes Examiner construes “the predetermined area” in line 5 of claim 6 to be “the predetermined area of the first holder”. Examiner suggests replacing “the predetermined area” in line 5 of claim 6 with “the predetermined area of the first holder”
Line 9-10 recites “the predetermined area”. Claim 6 depends on claim 5. Line 3 and line 7 of claim 6 and line 4 of claim 5 recite “a predetermined area”. It is unclear which predetermined area is referred to in line 9-10. For examination purposes Examiner construes “the predetermined area” in line 9-10 of claim 6 to be “the predetermined area of the second holder”. Examiner suggests replacing “the predetermined area” in line 9-10 of claim 6 with “the predetermined area of the second holder”.
In regard to claim 7,
Line 1 recites “the syringe”. Claim 1, which claim 7 depends on, recites “a syringe” in line 1 and line 2. It is unclear which syringe “the syringe” of claim 7 refers to. For examination purposes Examiner construes the syringe of line 1 and line 2 of claim 1 to be the same syringe. Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
Line 3 recites “a first fluid”. Claim 7 depends on claim 1. Claim 1 recites “a syringe filled with one or more fluids”. It is unclear if the first fluid is in addition to the one or more fluids i.e. at least two fluids are present (the first fluid and the one or more fluids) or if the first fluid is a fluid of the one or more fluids. For examination purposes Examiner construes the first fluid to be of the one or more fluids. Examiner suggests replacing “a first fluid” in line 3 of claim 7 with “a first fluid of the one or more fluids”.
Line 4 recites “a second fluid”. Claim 7 depends on claim 1. Claim 1 recites “a syringe filled with one or more fluids”. It is unclear if the second fluid is in addition to the one or more fluids i.e. at least three fluids are present (the first fluid, the second fluid, and the one or more fluids) or if the second fluid is a fluid of the one or more fluids. For examination purposes Examiner construes the second fluid to be of the one or more fluids. Examiner suggests replacing “a second fluid” in line 4 of claim 7 with “a second fluid of the one or more fluids”.
Line 6-7 recites “a second fluid”. A second fluid is introduced in line 4. It is unclear if the second fluid of line 6-7 is the same as the second fluid of line 4 or if the second fluid of line 6-7 is a third fluid. For examination purposes Examiner construes the second fluid of line 6-7 to be the same as the second fluid of line 4. Examiner suggests replacing “a second fluid” in line 6-7 of claim 7 with “the second fluid”.
Line 9 recites “a second fluid injection port”. It is unclear if “a second fluid injection port” is an injection port of the second fluid or if the second fluid injection port is a second or two fluid injection ports. A first of two fluid injection ports has not been claimed. It is unclear by claiming “a second fluid injection port” if a first fluid injection port is also required. For examination purposes Examiner construes “a second fluid injection port” to be “an injection port of the second fluid”. Examiner suggests replacing “a second fluid injection port” in line 9 of claim 7 with “an injection port of the second fluid”. Examiner notes “the second fluid injection port” of claim 9 should also be amended according to state “the injection port of the second fluid”.
Line 10-11 recites “communicating with the filling space such that the filling space is filled with the second fluid”. It is unclear if a method step is intended to be claimed due to the phrase “is filled”. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP 2173.05(p). Examiner suggests replacing “communicating with the filling space such that the filling space is filled with the second fluid” in line 10-11 of claim 7 with “communicating with the filling space such that the filling space is configured to be filled with the second fluid”.
Line 11 recites “the second fluid”. Line 4 and line 6-7 of claim 7 both recite a second fluid. It is unclear which second fluid the second fluid of line 11 refers to. For examination purposes Examiner construes the second fluid of line 4 and line 6-7 to be the same. Examiner suggests replacing “a second fluid” in line 6-7 of claim 7 with “the second fluid”.
Examiner notes claims 8-9 and 12 are similarly rejected by virtue of their dependency on claim 7.
In regard to claim 9,
Line 1-2 recites “a second fluid supplier”. It is unclear if “a second fluid supplier” is a supplier of the second fluid or if the second fluid supplier is a second or two fluid suppliers. A first of two fluid suppliers has not been claimed. It is unclear by claiming “a second fluid supplier” if a first fluid supplier is also required. For examination purposes Examiner construes “a second fluid supplier” to be “a supplier of the second fluid”. Examiner suggests replacing “a second fluid supplier” in line 1-2 of claim 9 with “a supplier of the second fluid”. Examiner notes “the second fluid supplier” of line 5-6 of claim 9 should also be amended according to state “the supplier of the second fluid”.
Line 3 recites “the second fluid”. Claim 9 depends on claim 7. Line 4 and line 6-7 of claim 7 both recite a second fluid. It is unclear which second fluid the second fluid of line 3 of claim 9 refers to. For examination purposes Examiner construes the second fluid of line 4 and line 6-7 to be the same. Examiner suggests replacing “a second fluid” in line 6-7 of claim 7 with “the second fluid”.
Line 4 recites “the syringe”. Claim 1, which claim 9 depends on, recites “a syringe” in line 1 and line 2. It is unclear which syringe “the syringe” of claim 9 refers to. For examination purposes Examiner construes the syringe of line 1 and line 2 of claim 1 to be the same syringe. Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
Line 4 recites “the second fluid supply port”. There is insufficient antecedent basis for the limitation in this claim. It is unclear if “the second fluid supply port” is the same as the second fluid injection port of claim 7 of an additional port. For examination purposes Examiner construes them to be the same. Examiner suggests replacing “the second fluid supply port” in line 4 of claim 9 with “the injection port of the second fluid”.
In regard to claim 10,
Line 3 recites “the syringe”. Claim 1, which claim 10 depends on, recites “a syringe” in line 1 and line 2. It is unclear which syringe “the syringe” of claim 10 refers to. For examination purposes Examiner construes the syringe of line 1 and line 2 of claim 1 to be the same syringe. Examiner suggests replacing “a syringe” in line 2 of claim 1 with “the syringe”.
Line 5-6 recites “a first fluid”. Claim 1 requires a syringe filled with one or more fluids”. It is unclear if the first fluid is in addition to the one or more fluids i.e. claim 10 requires at least two fluids (the first fluid and the one or more fluids) or if the first fluid is a fluid of the one or more fluids. For examination purposes Examiner construes the first fluid to be a first fluid of the one or more fluids. Examiner suggests replacing “a first fluid” in line 5-6 of claim 10 with “a first fluid of the one or more fluids”.
In regard to claim 11,
Line 3 recites “a third seat”. Claim 11 depends on claim 1. A first seat and a second seat of the actuator have not been claimed. It is unclear by claiming “a third seat” if a first seat and a second seat are also required. For examination purposes Examiner construes a single seat of the actuator to be required. Examiner suggests replacing “a third seat” in line 3 of claim 11 with “a first seat”.
Line 5-7 recites “an actuating body including a motor and configured to move the piston forward and backward in surface contact with an end surface of the piston when the motor is driven”. It is if the actuating body or the motor is configured to perform the intended function. For examination purposes Examiner construes “an actuating body including a motor and configured to move the piston forward and backward in surface contact with an end surface of the piston when the motor is driven” to be “an actuating body including a motor, the actuating body configured to move the piston forward and backward, the actuating body in surface contact with an end surface of the piston when the motor is driven”. Examiner suggests replacing “an actuating body including a motor and configured to move the piston forward and backward in surface contact with an end surface of the piston when the motor is driven” in line 5-7 of claim 11 with “an actuating body including a motor, the actuating body configured to move the piston forward and backward, and the actuating body in surface contact with an end surface of the piston when the motor is driven”.
In regard to claim 12,
Line 2 recites “a tube”. Claim 12 depends on claim 9, 7, and 1. Claim 9 introduces a tube. It is unclear if the tube of claim 12 is a second tube or is the same as the tube of claim 9. For examination purposes Examiner construes the tube of claim 12 to be the same as the tube of claim 9. Examiner suggests replacing “a tube” in line 2 of claim 12 with “the tube”.
Line 2-3 recites “a second fluid injection port”. Claim 12 depends on claim 9, 7, and 1. Claim 7 introduces a second fluid injection port. It is unclear if line 2-3 of claim 12 is intended to refer to the injection port of claim 7 or introduces an additional second fluid injection port. For examination purposes Examiner construes the second injection port of claim 7 and 12 to be the same. Examiner suggests replacing “a second fluid injection port” in line 2-3 of claim 12 with “the injection port of the second fluid”.
Line 3 recites “a second fluid supplier”. Claim 12 depends on claim 9, 7, and 1. Claim 9 introduces a second fluid supplier. It is unclear if line 3 of claim 12 is intended to refer to the supplier of claim 9 or introduces an additional second fluid supplier. For examination purposes Examiner construes the second fluid supplier of claim 9 and 12 to be the same. Examiner suggests replacing “a second fluid supplier” in line 3 of claim 12 with “the supplier of the second fluid”.
Line 4 recites “the tube”. Claim 12 depends on claim 9, 7, and 1. Claim 9 introduces a tube. Line 2 of claim 12 also states “a tube”. It is unclear which tube the tube of line 4 refers to. For examination purposes Examiner construes the tube of claim 12 to be the same as the tube of claim 9. Examiner suggests replacing “a tube” in line 2 of claim 12 with “the tube”.
Double Patenting
Claim 5 of this application is patentably indistinct from claim 8 of Application No. 18044879. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 5 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 8 of copending Application No. 18044879. This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In regard to claim 5,
Claim 8 of the copending application discloses the apparatus of claim 1 (see claim 8 of the copending application which also requires all limitations of claim 1 of the copending application. Claim 8 of the copending application discloses all limitations of the apparatus of claim 1 of the instant application as claim 8 of the copending application includes a cover, a body, and an actuator as claimed in claim 1 of the instant invention), further comprising a holder provided on a bottom of the body, configured to hold a finger or a back of a hand of a user, and formed in a curved shape having a predetermined area to be able to be supported on the finger or the back of the hand of the user (see claim 8 of the copending application which requires all limitations of claim 1 of the copending application which includes a holder as claimed in claim 5 of the instant application).
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 8-10, and 12 of copending Application No. 18044879. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1, 8-10, and 12 of copending Application No. 18044879 disclose all limitations of claim 1-4 and additional limitations regarding a holder.
In regard to claim 1,
The copending claims disclose an apparatus for operating a syringe, comprising: a body in which a syringe filled with one or more fluids is mounted; an actuator disposed behind the body and configured to selectively discharge the one or more fluid filled in the syringe by moving forward and backward a piston (see copending claim 1); and a cover having a shape surrounding a top of the syringe, hinged at a side to the body, and configured to cover the syringe mounted in the body by rotating through a hinge, thereby fixing the syringe with the body (see copending claim 8).
In regard to claim 2,
The copending claims disclose the apparatus of claim 1, wherein the body further includes a first hinge portion hinged to the cover at a side and a first fixing portion configured to fix the cover at another side, the cover includes a second hinge portion coupled to the first hinge portion at a side and a second fixing portion fixed to the first fixing portion at another side, and the first hinge portion and the second hinge portion share a hinge shaft and rotate on the hinge shaft, and the first fixing portion and the second fixing portion are coupled to each other, thereby fixing the syringe (see copeneding claim 9).
In regard to claim 3,
The copending claims disclose the apparatus of claim 2, wherein the first hinge portion and the second hinge portion protrude to a side, the first fixing portion and the second fixing portion protrude to another side, and a thumb and an index finger are supported on the first hinge portion and the second hinge portion, and the first fixing portion and the second fixing portion (see copeneding claim 10).
In regard to claim 4,
The copending claims disclose the apparatus of claim 1, wherein an opening having a predetermined area and making it possible to check a remaining volume of fluids in the syringe is formed at the cover (see copeneding claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-3, 5-6, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kwolek (U.S. PG publication 20190175839).
In regard to claim 1,
Kwolek discloses an apparatus (figure 1, item 100) for operating a syringe (figure 1, item 104; paragraph [0040]), comprising:
a body (figure 1, item 108 and 140 not including the labeled holder above) in which a syringe (figure 1, item 104) filled with one or more fluids (paragraph [0040]) is mounted (see figure 2);
an actuator (figure 1, item 120 and 110) disposed behind the body (see figure 1 and 2) and configured to selectively discharge the one or more fluid filled in the syringe by moving forward and backward a piston (Examiner notes “configured to selectively discharge the one or more fluid filled in the syringe by moving forward and backward a piston” is a functional limitation and the piston is not positively required by the claim. The actuator is fully capable of the intended function as supported by paragraph [0042]-[0043] as the plunger/piston of the syringe which contains item 132 is fully capable of being moved as claimed. Further, the movement of the piston is not claimed relative to any other structure and the actuator can be held and used to move the piston forward and backward by moving the entire apparatus for example during placement for the injection); and
a cover (figure 1, item 102) having a shape surrounding a top of the syringe (see figure 2), hinged at a side to the body (paragraph [0040]), and configured to cover the syringe mounted in the body by rotating through a hinge (see figure 2; paragraph [0040]), thereby fixing the syringe with the body (paragraph [0040]).
In regard to claim 2,
[AltContent: textbox (Second fixing portion)][AltContent: arrow][AltContent: textbox (Second hinge portion)][AltContent: arrow][AltContent: textbox (First fixing portion)][AltContent: arrow][AltContent: textbox (First hinge portion)][AltContent: arrow]
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Kwolek discloses the apparatus of claim 1, wherein the body further includes a first hinge portion (see figure 1 above) hinged to the cover at a side (see figure 1 and 2; paragraph [0040]) and a first fixing portion (see figure 1 above) configured to fix the cover at another side (see figure 2; paragraph [0040]),
the cover includes a second hinge portion (see figure 1 above) coupled to the first hinge portion at a side (see figure 2 and paragraph [0040]) and a second fixing portion (see figure 1 above) fixed to the first fixing portion at another side (see figure 2), and
the first hinge portion and the second hinge portion share a hinge shaft (figure 1, item 106; paragraph [0040]) and rotate on the hinge shaft (paragraph [0040]), and the first fixing portion and the second fixing portion are coupled to each other (see figure 2), thereby fixing the syringe (see figure 2 and paragraph [0040]).
In regard to claim 3,
Kwolek discloses the apparatus of claim 2, wherein the first hinge portion and the second hinge portion protrude to a side (see figure 1 above and figure 2), the first fixing portion and the second fixing portion protrude to another side (see figure 1 above and figure 2), and a thumb and an index finger are supported on the first hinge portion and the second hinge portion, and the first fixing portion and the second fixing portion (see 112 rejection above for claim interpretation; Examiner notes a thumb and index finger are fully capable of being supported on the first hinge portion and the second hinge portion, and the first fixing portion and the second fixing portion due to the structure and size of the components; see figure 2).
In regard to claim 5,
[AltContent: connector][AltContent: connector][AltContent: textbox (Holder )][AltContent: oval][AltContent: textbox (Holder )][AltContent: connector][AltContent: connector][AltContent: oval][AltContent: oval]
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Kwolek discloses the apparatus of claim 1, further comprising a holder (see figure 2 and 3 above; Examiner notes the flange on item 108 and the edge on the bottom of item 108 shown in figure 3 form a holder) provided on a bottom of the body (Examiner notes the bottom of the body is construed as the portion of the body below item 140), configured to hold a finger or a back of a hand of a user (Examiner notes “configured to hold a finger or a back of a hand of a user” is a functional limitation. The holder is fully capable of the intended function due to the shape of the holder), and formed in a curved shape having a predetermined area to be able to be supported on the finger or the back of the hand of the user (see figure 2 and 3 above).
In regard to claim 6,
[AltContent: textbox ( Second holder )][AltContent: connector][AltContent: oval][AltContent: textbox (First holder )][AltContent: connector][AltContent: connector][AltContent: oval][AltContent: oval]
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Kwolek discloses the apparatus of claim 5, wherein the holder includes one or more of a first holder (see figure 2 above) disposed at a front portion of the bottom of the body (see figure 2 above and analysis of claim 5 above), having a predetermined area to be held on a portion of the finger (see figure 2 above; Examiner notes due to the shape of the first holder, the first holder would be able to be held on a portion of the finger), and having a curvature in the predetermined area to surround the portion of the finger (see figure 2 above), and a second holder (see figure 3 above) disposed at a rear portion of the bottom of the body (see figure 3 above), having a predetermined area to be held at a portion between a thumb and an index finger of the back of the hand (see figure 3 above, wherein do to the shape of the second holder, the second holder could be held at a portion between a thumb and an index finger of the back of the hand), and having a curvature in the predetermined area to surround the portion between the thumb and the index finger (see figure 3 above).
In regard to claim 10,
Kwolek discloses the apparatus of claim 1, wherein the body includes:
a first seat (figure 1, item 142) that has a shape surrounding a bottom of the syringe and in which the syringe is seated (see figure 2; paragraph [0039]); and
a second seat (figure 1, item 138) that is formed to be stepped from the first seat (see figure 2; paragraph [0040]) and in which a cylinder filled with a first fluid is seated (see figure 2).
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.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kwolek (U.S. PG publication 20190175839) and further in view of Rolfs (U.S. PG publication 20180243513).
In regard to claim 4,
Kwolek discloses the apparatus of claim 1.
Kwolek fails to disclose wherein an opening having a predetermined area and making it possible to check a remaining volume of fluids in the syringe is formed at the cover.
Rolfs teaches wherein an opening (figure 1, item 134) having a predetermined area (see figure 1) and making it possible to check a remaining volume of fluids in the syringe (paragraph [0037]) is formed at the cover (figure 1, item 120).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the cover of Kwolek to include an opening having a predetermined area and making it possible to check a remaining volume of fluids in the syringe is formed at the cover, as taught by Rolfs, for the purpose of enabling a drug to be viewed before injection to see if the drug is expired or still useable (paragraph [0037] of Rolfs).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kwolek (U.S. PG publication 20190175839), and further in view of Scribben (U.S. PG publication 20140324022).
In regard to claim 7,
Kwolek discloses the apparatus of claim 1.
Kwolek fails to disclose wherein the syringe includes: a syringe body composed of an inner barrel that is filled with a first fluid and an outer barrel that is filled with a second fluid and surrounds the inner barrel at a predetermined distance from the inner barrel, and having a filling space configured to be filled with a second fluid between the inner barrel and the outer barrel; and a second fluid injection port formed at the syringe body and communicating with the filling space such that the filling space is filled with the second fluid.
Scribben teaches wherein the syringe (see syringe shown in figure 10) includes: a syringe body composed of an inner barrel (see inner barrel 1030 that forms compartment 1034) that is filled with a first fluid (paragraph [0129]) and an outer barrel (outer barrel 1010 that forms compartment 1036) that is filled with a second fluid (paragraph [0129]) and surrounds the inner barrel at a predetermined distance from the inner barrel (see figure 10), and having a filling space (figure 10, item 1036) configured to be filled with a second fluid between the inner barrel and the outer barrel (paragraph [0129]); and a second fluid injection port (port formed by item 1050) formed at the syringe body and communicating with the filling space such that the filling space is filled with the second fluid (paragraph [0129]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the syringe of Kwolek to include wherein the syringe includes: a syringe body composed of an inner barrel that is filled with a first fluid and an outer barrel that is filled with a second fluid and surrounds the inner barrel at a predetermined distance from the inner barrel, and having a filling space configured to be filled with a second fluid between the inner barrel and the outer barrel; and a second fluid injection port formed at the syringe body and communicating with the filling space such that the filling space is filled with the second fluid and to modify the plunger of the syringe and apparatus of Kwolek accordingly, as taught by Scribben, for the purpose of enabling high-viscous fluids to be delivered and enabling the delivery of two components concurrently (paragraph [0010]-[0011] of Scribben).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Kwolek (U.S. PG publication 20190175839) in view of Scribben (U.S. PG publication 20140324022) and further in view of Kuczek (U.S. PG publication 20140180217).
In regard to claim 8,
Kwolek in view of Scribben teaches the apparatus of claim 7.
Kwolek in view of Scribben is silent as to wherein a mounting protrusion for mounting in the body is formed on a bottom of the syringe body and a mounting groove is formed in the body at a position corresponding to a position of the mounting protrusion when the syringe body is mounted.
Kuczek teaches a mounting protrusion (figure 3, item 308) for mounting in the body (figure 3, item 20) is formed on a bottom of the syringe body (figure 3, item 302) and a mounting groove (groove formed underneath rib 34 which item 308 is received in; paragraph [0032)) is formed in the body at a position corresponding to a position of the mounting protrusion when the syringe body is mounted (see figure 4 and paragraph [0032]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kwolek in view of Scribben to include wherein a mounting protrusion for mounting in the body is formed on a bottom of the syringe body and a mounting groove is formed in the body at a position corresponding to a position of the mounting protrusion when the syringe body is mounted, as taught by Kuczek, for the purpose of preventing sliding (paragraph [0032] of Kuczek).
Claims 7, 9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kwolek (U.S. PG publication 20190175839) further in view of Scribben (U.S. PG publication 20140324022) further in view of Park (U.S. patent no 6475193). Examiner notes an alternative rejection of claim 7 has been provided below and is construed as teaching the limitations of the apparatus which claim 9 and 12 depends on.
In regard to claim 7,
Kwolek discloses the apparatus of claim 1.
Kwolek fails to disclose wherein the syringe includes: a syringe body composed of an inner barrel that is filled with a first fluid and an outer barrel that is filled with a second fluid and surrounds the inner barrel at a predetermined distance from the inner barrel, and having a filling space configured to be filled with a second fluid between the inner barrel and the outer barrel; and a second fluid injection port formed at the syringe body and communicating with the filling space such that the filling space is filled with the second fluid.
Scribben teaches wherein the syringe (see syringe shown in figure 10) includes: a syringe body composed of an inner barrel (see inner barrel 1030 that forms compartment 1034) that is filled with a first fluid (paragraph [0129]) and an outer barrel (outer barrel 1010 that forms compartment 1036) that is filled with a second fluid (paragraph [0129]) and surrounds the inner barrel at a predetermined distance from the inner barrel (see figure 10), and having a filling space (figure 10, item 1036) configured to be filled with a second fluid between the inner barrel and the outer barrel (paragraph [0129]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the syringe of Kwolek to include wherein the syringe includes: a syringe body composed of an inner barrel that is filled with a first fluid and an outer barrel that is filled with a second fluid and surrounds the inner barrel at a predetermined distance from the inner barrel, and having a filling space configured to be filled with a second fluid between the inner barrel and the outer barrel; and to modify the plunger of the syringe and apparatus of Kwolek accordingly, as taught by Scribben, for the purpose of enabling high-viscous fluids to be delivered and enabling the delivery of two components concurrently (paragraph [0010]-[0011] of Scribben).
Kwolek in view of Scribben fails to disclose a second fluid injection port formed at the syringe body and communicating with the filling space such that the filling space is filled with the second fluid.
Park teaches a second fluid injection port (figure 3, item 22; Examiner notes body 10 includes a hole 14 for accommodating the second fluid injection port) formed at the syringe body (see syringe body formed by item 2 and 20) and communicating with the filling space (see filling space of item 2) such that the filling space is filled with the second fluid (column 4, line 4-7 and column 4, line 11-19).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kwolek in view of Scribben to include a second fluid injection port formed at the syringe body and communicating with the filling space such that the filling space is filled with the second fluid, and to include a hole in the body which the second fluid injection port can fit through, tubing 38 of Park and a medical bottle as disclosed in column 4, line 4-7 of Park, as taught by Park, for the purpose of enabling medical liquid to be supplied (column 1, line 50-52 of Park). Examiner notes Kwolek does not disclose how the syringe is prefilled and Park teaches a suitable way to fill the syringe.
In regard to claim 9,
Kwolek in view of Scribben in view of Park teaches the apparatus of claim 7, further comprising a second fluid supplier (bottle as disclosed in column 4, line 4-7 of Park) disposed on a bottom of the actuator (Examiner notes the second fluid supplier when implemented into Kwolek in view of Scribben is disposed on a bottom of the actuator via the syringe which is disposed on the bottom of the actuator) and configured to supply the second fluid to the outer barrel of the syringe through the second fluid supply port (see analysis of claim 7 above, column 4, line 4-7 and column 4, line 11-19 of Park, and figure 10 of Scribben), wherein the second fluid injection port and the second fluid supplier are connected to each other through a tube (figure 3, item 38 of Park; column 4, line 4-7 and column 4, line 11-19 of Park).
In regard to claim 12,
Kwolek in view of Scribben in view of Park teaches the apparatus of claim 9, wherein a tube groove (figure 2, item 14 of Park) configured to prevent folding of a tube (figure 3, item 38 of Park) connecting a second fluid injection port (figure 3, item 22 of Park) and a second fluid supplier (bottle as disclosed in column 4, line 4-7 of Park) to each other (Examiner notes “configured to prevent folding of a tube connecting a second fluid injection port and a second fluid supplier” is a functional limitation. The tube groove is fully capable of the intended function due to its structure and the fact that the tube groove would function to prevent folding of item 22 of Park. Therefore, at least the portion of the tube connected to item 22 of Park would also be prevented from folding), and to fix the tube is formed on an inner surface of the cover (see figure 3; Examiner note