CTNF 18/233,082 CTNF 98854 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Abstract The abstract of the disclosure is objected to because it lacks clear logical flow, making the relationships between elements unclear . 06-16 AIA Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. A corrected abstract of the disclosure is required. Specification 07-29 AIA The disclosure is objected to because of the following informalities: Paragraph [0009] reads “Hauss in 2007, Table 1,” however this lacks sufficient bibliographic detail (e.g., full title, publication, etc.) to permit proper identification and verification of the cited source . Appropriate correction is required. Information Disclosure Statement 06-49-06 AIA The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Claim Objections 07-29-01 AIA Claim 1 is o bjected to because of the following informalities: l. 1, there is no article before “Glass cylinder”. Applicant may correct this to recite “a glass cylinder”. The Applicant has claimed the stamps in parentheticals. However, Figs. 2-3 of the drawings do not show parentheses. Applicant may amend the claim by omitting the parenthesis if this is the intended scope of the invention. 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. Claim 1 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. Regarding claim 1, the claim does not contain a transitional phrase and therefore, it is unclear as to which recitations are part of the preamble of the claim and which parts make up the body of the claim. Examiner suggests amending the claim to recite a transitional phrase such as “comprising” to separate the preamble from the body of the claim. Regarding claim 1, l. 1, states “test-tube type”. The term “test-tube type” in claim 1 is a relative term which renders the claim indefinite. The term “test-tube type” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Does the glass cylinder require a cap, a specific length to width to height ratio, transparency. The term fails to inform, with reasonable certainty, those skilled in the art of the scope of the invention. The Examiner interprets “test-tube type” to be a tube closed at one end and used to hold material for storage or lab testing. See MPEP 2173.05(b)(II)(E). Regarding claim, l. 1 recites “special”. The term “special” is a relative term which renders the claim indefinite. The term “special” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The Applicant may amend the claim by omitting “special”. Regarding claim 1, the claim is generally narrative and indefinite, failing to conform with current U.S. practice. It appears to be a literal translation into English from a foreign document and is replete with grammatical and idiomatic errors . Appropriate correction is required. 07-30-03-h AIA Claim Interpretation The claims contain limitations which are directed to intended uses or capabilities of the claimed invention. These limitations are only given patentable weight to the extent which effects the structure of the claimed invention. Please see MPEP 2114. Note that functional limitations are emphasized in italics herein. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Anderson (BR 202020014032 U2, see attached English translation) in view of Yoo (KR 200302945 Y1) . Regarding claim 1, Anderson teaches a glass cylinder characterized by the fact that it has a special graduation suitable for estimating the remaining volume in capsule size combinations, internal and external (a glass cylinder (beaker type) with special and differentiated graduations for use for the masterful preparation of hard capsules; [01]; Figs. 1-3)(The cylinder of Anderson is functionally capable of estimating the remaining volume in capsule size combinations since “the graduations present in the beaker cover all sizes of capsules for human use…as well as the most commonly prescribed quantities”[019]; Figs. 1-3). These values can be subtracted to yield a remaining volume required for capsule-in-capsule pill compounding), in which the glass cylinder is stamped with (# 0 int. / # 000 ext.); (# 4int. / # 00 ext.); (# 3 int. / # 1 ext.); (# 2 int. / # 0 ext.); (# 4 int. / # 1 ext.); (#1 int. / #00 ext.); (# 3 int. / # 0 ext.); (# 4 int. / # 0 ext.); (#2 int. / #00 ext.); (# 3 int. / # 00 ext.)(The recited indicia constitute non-functional printed matter since the indicia and the glass cylinder do not depend upon each other. The stamped standard capsule sizes (e.g., #00) are not drawn to the glass cylinder but rather to the method of calculating the number of capsules and volume needed to fill capsules. The indicia are also not based upon the volume inside of the cylinder since there are no units associated with the labeling (e.g., mL) and is also dependent on the size of the capsule. See MPEP 2111.05), as well as graduations (differentiated graduations; [01]) to estimate the number of capsules , stamped on the glass cylinder, and also the amount of powder to fill the remaining volume, according to each horizontal line (See capsule size and volume associated with corresponding horizontal lines in Figs. 2-3) , dispensing calculations for the preparation of combined capsules (The cylinder of Anderson is functionally capable of estimating the number of capsules, the amount of powder to fill the remaining volume, and dispenses volume calculations for the preparation of combined capsules). Anderson fails to teach the glass cylinder is a test-tube type (The Examiner interprets “test-tube type” to be a tube closed at one end and used to hold material for lab testing. See 112(b) rejection above). However, Anderson does teach the glass cylinder to be a “ beaker type” ([01]). Yoo teaches a test tube with graduations (a metered test tube; Abstract). Yoo is considered to be analogous to the claimed invention because it is in the same field of endeavor for a test tube with graduations to determine a volume of a sample. Yoo uses the test tube to measure a dispensed volume while the instant claim is used to measure a remaining volume. It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the test-tube type of cylinder as taught by Yoo for the beaker type of cylinder taught by Anderson because both are well-known laboratory containers used to hold a volume of sample. Yoo states that “test tubes used in scientific laboratories are containers for liquids, and generally have one end open to a cylindrical appearance so that materials can be inserted” (p. 1, ll. 8-9). Likewise, both the instant claim and the device taught by Anderson are drawn to graduated cylinders with an open end. Therefore, the selection of a test tube instead of a beaker would have yielded the predictable result of allowing the user to easily measure and transfer a certain amount of solution with laboratory equipment without altering the fundamental operation of the device (Yoo, p. 1, ll. 16-17)(See MPEP 2143(I)(B)) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : Cooper , 1955 (instant PTO-892) teaches a graduated cylinder with lines indicative of standard capsule sizes and corresponding volumes for use in pharmaceutical compounding. Vishvesh et al. , 2015 (instant PTO-892) teaches the concept of capsule in a capsule design (DUOCAP). Rump et al., 2021 (instant PTO-892) teaches the application of filling two standard sized capsules and implementing a capsule in a capsule (DUOCAP) design. No claims are allowed. 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To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /V.S./ Examiner, Art Unit 1758 /MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758 Application/Control Number: 18/233,082 Page 2 Art Unit: 1758