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 .
Claim Objections
Claim 2 is objected to because of the following informalities: Line 1 reading “for pumping breastmilk” should read --configured for pumping breastmilk--. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: Lines 12-13 reading “such that the motor rotates said one or more roller sets to constrict the lower part” should now read --such that rotation of said one or more roller sets, via the motor, constricts the lower part--. An amendment to this effect is necessary to positively recite “rotation” where the term is recited later in dependent claims. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: Line 1 reading “wherein the motor rotates” should read --wherein the rotation of--. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: Line 1 reading “said pump” should read --said breastmilk pump--. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Line 1 reading “said pump” should read --said breastmilk pump--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Line 2 reading “the roller sets” should read --the one or more roller sets--. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: Line 3 reading “arms” should read --multiple pairs of arms--. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: Lines 1-2 reading “a breastmilk container for storing the pumped breastmilk, wherein said funnel’s distal end” should read --a breastmilk container configured for storing breastmilk, wherein the distal end of the funnel--. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: Line 1 reading “said pump” should read --said breastmilk pump--. Appropriate correction is required.
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 2-21 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 2 Lines 4-5 reading “said funnel having a proximal end designed to embrace a nipple and a distal end” is being found indefinite where it is unclear what the proximal end is embracing, only the nipple or both the nipple and the distal end. Claim 2 Lines 10-11 reading “wherein said lower manipulating mechanism comprises a motor and one or more roller sets associated therewith” is being found indefinite where it is unclear what the one or more roller sets is being associated with, the lower manipulating mechanism or the motor. Claims 3-21 are rejected by virtue of their dependence on Claim 2. Appropriate correction and/or clarification is required.
Claims 3 and 5-8 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 3 recites the limitation "the rotation speed" in Line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is 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 5 recites the limitation "the axis of rotation" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 6 and 8 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 limitation "the axis of rotation" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 is 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 7 recites the limitation "the axis of rotation" twice in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 is 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 8 recites the limitation "each arm of the multiple pairs of arms" in Lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 is 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 10 recites the limitation "the edge" in Line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 10 recites the limitation "the opening" in Line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 14 is 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 14 recites the limitation "wherein said lower manipulating mechanism and said vacuum unit create a synergistic effect to improve the pumping process” in Lines 1-3. This limitation is being found indefinite where creating a synergistic effect to improve pumping is entirely subjective. Examiner recommends removing the “to improve the pumping process” limitation. Appropriate correction and/or clarification is required.
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.
Claims 2-6 and 9-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. (USPGPub 2010/0130921).
Re Claim 2, Kobayashi teaches a breastmilk pump for pumping breastmilk (as seen in Kobayashi Fig. 4), the breastmilk pump comprising: a body (25); a funnel (12) designed to fit into said body (25), said funnel (12) having a proximal end designed to embrace a nipple and a distal end (Kobayashi Fig. 3C), said funnel (12) comprising a lower part (34) and an upper part (36) defining therebetween a path for milk flow from the proximal end to the distal end (as seen in Kobayashi Fig. 3C); a vacuum unit (24); and a lower manipulating mechanism (18); wherein said lower manipulating mechanism (18) includes a tongue-imitating mechanism (32) designed to mimic a baby's tongue movement during breastfeeding (Kobayashi ¶ 0039, 0051), wherein said lower manipulating mechanism (18) comprises a motor (70) and one or more roller sets (46, 52, 58) associated therewith (Kobayashi ¶ 0052), each roller set comprising one or more roller segments, such that the motor (70) rotates said one or more roller sets (46, 52, 58) to constrict the lower part of said funnel (12), thereby creating a wave like motion of the lower part of said funnel, wherein during said rotation, the lower part of the funnel (12) remains distant from the upper part of the funnel, thereby allowing the milk flow through said path (Kobayashi ¶ 0044-0057).
Re Claim 3, Kobayashi teaches wherein the rotation speed of the motor (70) and roller sets (46, 52, 58) is variable and controlled by a microcomputer (Kobayashi ¶ 0054, 0061).
Re Claim 4, Kobayashi teaches wherein the motor (70) rotates said one or more roller sets (46, 52, 58) about an axis of rotation (Kobayashi ¶ 0046-0054).
Re Claim 5, Kobayashi teaches wherein said pump is a static pump, in which the axis of rotation is a fixed axis (Kobayashi ¶ 0044-0057).
Re Claim 9, Kobayashi teaches the breastmilk pump further comprising a breastmilk container (14) for storing the pumped breastmilk, wherein said funnel's distal end is fluidly connected thereto (as seen in Kobayashi Fig. 4).
Re Claim 10, Kobayashi teaches wherein an edge of the proximal end of said funnel (12) is designed to embrace/cover the edge of the opening of the body (25) into which the funnel (12) is placed/inserted (Kobayashi ¶ 0041-0044).
Re Claim 11, Kobayashi teaches wherein said vacuum unit is a negative pressure pump.
Re Claim 12, Kobayashi teaches wherein said vacuum unit is designed to generate variable negative pressure/vacuum (Kobayashi ¶ 0016, 0061).
Re Claim 13, Kobayashi teaches wherein said vacuum unit (24) is designed to generate vacuum pulses (Kobayashi ¶ 0060-0061).
Re Claim 14, Kobayashi teaches wherein said lower manipulating mechanism (18) and said vacuum unit (24) create a synergistic effect to improve the pumping process (Kobayashi ¶ 0060-0061).
Re Claim 15, Kobayashi teaches wherein said vacuum unit (24) is configured to generate negative pressure in said path for assisting the milk flow (Kobayashi ¶ 0016).
Re Claim 16, Kobayashi teaches wherein during a complete cycle of said rotation, the lower part (34) of the funnel (12) remains distant from the upper part (36) of the funnel (12) (Kobayashi ¶ 0064-0066).
Re Claim 17, Kobayashi teaches wherein during a complete cycle of said rotation, the lower part (34) and the upper part (36) of the funnel (12) remain free of contact from each other (Kobayashi ¶ 0064-0066).
Re Claim 18, Kobayashi teaches wherein during a complete cycle of said rotation, the path for the milk flow remains open (Kobayashi ¶ 0064-0066).
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.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (USPGPub 2010/0130921) in view of Khalil et al. (USPGPub 2013/0023821).
Re Claim 19, Kobayashi teaches all of the limitations of Claim 1. Kobayashi fails to teach wherein said pump includes an electric breastmilk pump. Khalil teaches a breast milk pump (Khalil Figs. 1-2) comprising a pump (81) including an electric breastmilk pump (Khalil ¶ 0067) for hands-free pumping (Khalil ¶ 0032). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the pump of Kobayashi to be an electric breastmilk pump as disclosed by Khalil for hands-free pumping (Khalil ¶ 0032).
Re Claim 20, Kobayashi teaches all of the limitations of Claim 1. Kobayashi fails to teach the breastmilk pump further comprising an integral power source. Khalil teaches a breast milk pump (Khalil Figs. 1-2) comprising an integral power source (Khalil ¶ 0032) for the purpose of portability and ease of use where an electrical socket would unnecessary. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the breast pump of Kobayashi to comprise an integral power source as disclosed by Khalil for the purpose of portability and ease of use where an electrical socket would unnecessary (Khalil ¶ 0032).
Re Claim 21, Kobayashi teaches all of the limitations of Claim 1. Kobayashi fails to teach the breastmilk pump further comprising an integral screen/touchscreen for displaying and optionally for operating the breastmilk pump. Khalil teaches a breast milk pump (Khalil Figs. 9-10) comprising an integral screen/touchscreen for displaying and optionally for operating the breastmilk pump (Khalil Fig. 9; ¶ 0051, 0068), the integral screen/touchscreen for ease of operating the breastmilk pump while the breastmilk pump is being worn. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the breast pump of Kobayashi to comprise an integral screen/touchscreen for displaying and optionally for operating the breastmilk pump as disclosed by Khalil for the purpose of ease of operating the breastmilk pump while the breastmilk pump is being worn.
Double Patenting
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 9 of USPN 11,779,687, hereinafter Patent ‘687. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of the present case is broader compared to the more narrow Patent ‘687, wherein Patent ‘687 includes a breastmilk pump for pumping breastmilk, the breastmilk pump comprising: a body; a funnel designed to fit into said body, said funnel having a proximal end designed to embrace a nipple and a distal end, said funnel comprising a lower part and an upper part defining therebetween a path for milk flow from the proximal end to the distal end; a vacuum unit; and a lower manipulating mechanism; wherein said lower manipulating mechanism includes a tongue-imitating mechanism designed to mimic a baby's tongue movement during breastfeeding, wherein said lower manipulating mechanism comprises a motor and one or more roller sets associated therewith, each roller set comprising one or more roller segments, such that the motor rotates said one or more roller sets to constrict the lower part of said funnel, thereby creating a wave like motion of the lower part of said funnel, wherein during said rotation, the lower part of the funnel remains distant from the upper part of the funnel, thereby allowing the milk flow through said path.
Claims 3, 6 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 9 of USPN 11,779,687, hereinafter Patent ‘687, in view of Kobayashi et al. (USPGPub 2010/0130921).
Re Claim 3, Patent ‘687 Claim 9 discloses all of the limitations of Claim 1 of the present case. However, the claims of Patent ‘687 fail to disclose wherein the rotation speed of the motor and roller sets is variable and controlled by a microcomputer. Kobayashi teaches wherein the rotation speed of the motor and roller sets is variable and controlled by a microcomputer (Kobayashi ¶ 0054, 0061) such that a driving mechanism is controlled by a microcomputer such that the negative pressure applied to the funnel varies with a predetermined phase difference with respect to pressure variations (Kobayashi ¶ 0061). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the rotation speed of the motor and roller sets be variable and controlled by a microcomputer as disclosed by Kobayashi such that a driving mechanism is controlled by a microcomputer such that the negative pressure applied to the funnel varies with a predetermined phase difference with respect to pressure variations (Kobayashi ¶ 0054, 0061).
Re Claim 6, Patent ‘687 Claim 9 discloses all of the limitations of Claim 3 of the present case. However, the claims of Patent ‘687 fail to disclose wherein said pump is an active pump, in which the axis of rotation is a shiftable axis. Patent ‘687 Claim 9 also discloses wherein said pump is an active pump, in which the axis of rotation is a shiftable axis.
Re Claim 8, Patent ‘687 Claim 9 discloses all of the limitations of Claim 3 of the present case. However, the claims of Patent ‘687 fail to disclose wherein each arm of the multiple pairs of arms includes an axis on which a corresponding roller set is positioned and is rotatable about the axis. Kobayashi teaches wherein each arm of the multiple pairs of arms (48, 54, 60) includes an axis (axis of rollers 46, 52, 58) on which a corresponding roller set (46, 52, 58) is positioned and is rotatable about the axis for generating a peristaltic action on the breast of a user (Kobayashi ¶ 0046-0054). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the arms of Patent ‘687 such that each arm of the multiple pairs of arms includes an axis on which a corresponding roller set is positioned and is rotatable about the axis as disclosed by Kobayashi for generating a peristaltic action on the breast of a user (Kobayashi ¶ 0046-0054).
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 9 and 10 of USPN 11,779,687, hereinafter Patent ‘687, in view of Kobayashi et al. (USPGPub 2010/0130921).
Re Claim 7, Claim 9 of Patent ‘687 in view of Kobayashi teach all of the limitations of Claim 3. Claims 9 and 10 of Patent ‘687 disclose wherein said lower manipulating mechanism includes multiple pairs of arms designed to hold the roller sets, said arms extending outwards from the axis of rotation and are rotatable about the axis of rotation.
Terminal Disclaimer
A terminal disclaimer may be effective to overcome a nonstatutory double patenting rejection over a reference patent (37 CFR 1.321(b) and (c)). 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. 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/PatentForms. The filing date of the application will determine what form 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/TerminalDisclaimer.
Conclusion
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/WILLIAM R FREHE/Examiner, Art Unit 3783
/KEVIN C SIRMONS/Supervisory Patent Examiner, Art Unit 3783