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 .
Response to Amendment
This office action is responsive to the claim amendments filed on 2/19/2026. As directed by the amendment: claims 1 have been amended; and no claims have been added. Thus, claims 1-3 are presently pending in this application. US 2016/0091399 A1 to Chen et al teaches the component
Response to Arguments
Applicant's arguments, beginning pg. 5 line 23, filed 2/19/2026 with regards “Chen fails [sic] to disclose feature (A)…. “a barrel formed integrally…”” is not found persuasive. US 2016/00913999 A1 to Chen et al. teaches the barrel (Fig. 1) formed integrally in para. 29 where it discloses the connection between elements 10 and 30 as a threaded connection making the barrel one integrated system (Fig. 1 element 1). Therefore, applicant’s argument is not found persuasive.
Applicant’s argument, beginning pg. 6 line 11, “Chen fails to disclose feature (B)” is found persuasive in part. Chen does not explicitly disclose the leg portion extending from the attachment portion toward the proximal side as claimed but Examiner considered this to be an obvious rearrangement of parts. See amended claim rejection below.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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(s) 1-3 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2016/0091399 A1 to Chen et al.
In regard to claim 1:
A syringe for injecting a medicine (Fig. 1), the syringe comprising: a barrel (Fig. 1 element 10) formed integrally (considered integrally formed due to threads mechanically binding the components into one integral system, see para 29) and comprising a cylindrical part with a distal end part (Fig. 1 element 10 distal end near element 30) and a proximal end part (Fig. 3 element 10 proximal end toward element 7), the distal end part provided with an outlet opening (See annotated Fig. 2 below) for discharging to the outside the medicine contained inside the barrel therethrough (Fig. 2); a filter (Fig. 2 element 4) disposed closer to a proximal side than the outlet opening inside the barrel (Fig. 2 element 4); and a holding member (Fig. 1 element 20) configured to hold the filter disposed inside the barrel (Fig. 2 element 20), the holding member comprising a proximal side part disposed closer to the proximal side than the filter (Fig. 2 element 23), wherein the proximal side part of the holding member has a flow path (Fig. 1 element 21) through which the medicine flows from the proximal side toward a distal side (Fig. 1 element 21), a proximal side space (see annotated Fig. 2 below) into which the medicine flows through the flow path is provided on the proximal side of the filter (see annotated Fig. 2 below), a distal side space (see annotated Fig. 2 below) into which the medicine flows from the proximal side space via the filter is provided on the distal side of the filter (see annotated Fig. 2 below), the proximal side part comprises an attachment portion to which the filter is attached (See annotated Fig. 1 below and element 23, Figs. 2 and 3 demonstrate the slideable attachment of the filter and end point of the attachment portion element 23) and a leg portion extending from the attachment portion (See annotated Fig 1 below) the leg portion has an outer circumferential surface in surface contact with the barrel (See annotated Fig. 2 below) to allow the proximal side part to be fixed to the barrel by friction force with an inner circumferential surface of the barrel (Examiner notes primary force maintaining leg position is clamping force between elements 10 and 30 of the barrel and therefore there is a frictional force between the circumferential surface and the barrel due the applied clamping force. Circumferential surface considered to be the proximal and distal facing surfaces of the leg portion and the frictional force is orthogonal to the longitudinal axis of the syringe. Claim does not currently limit which inner circumferential surface of the barrel the frictional force is required to act upon, and therefore examiner considered the inner circumferential surfaces of the barrel acted upon to be proximal facing circumferential surface of element 30 and distal facing circumferential surface of element 10 to be the surfaces acted upon.) and, an area of the outlet opening is smaller than an area of the proximal side space, smaller than an area of the distal side space, and smaller than an area of the flow path, as viewed from an axial direction of the barrel (See annotated Fig. 2 below, outlet opening cross-section distance (distance across orthogonal to the longitudinal axis) is smaller than the cross-sectional distance of each of the proximal side space, distal side space, and flow path. As the device is a cylinder, the cross-sectional area of the outlet opening is also therefore also considered to be smaller than each of the proximal side space, distal side space, and flow path. Para. 28 “a receptacle 20 mounted in the front open end of the barrel 10” (emphasis added) considered to be cylindrical as it is described as a barrel.).
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Annotated Fig. 1
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Chen teaches the invention essentially as claimed except for the proximal side part comprises a leg portion extending from the attachment portion toward the proximal side. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Chen to have the leg portion extending from the attachment portion toward the proximal side since it has been held that rearrangement of parts that do not change the operation of the device are considered obvious and within the level of ordinary skill in the art. See MPEP 2144.04 (VI)(C). In the instant case, the device of Chen would not operate differently by rearranging the leg, and holding pinch of said leg, to be extending from the proximal side of the attachment portion instead of the distal side. Applicant’s specification does demonstrate any criticality to the placement of the leg.
In regard to claim 2:
The syringe according to claim 1, taught by Chen as described in parent claim rejection above.
Chen teaches, wherein the area of the flow path in the holding member is smaller than the area of the proximal side space, as viewed from the axial direction of the barrel (see annotated Fig. 2 above. Cross-sectional distance (distance across orthogonal to the longitudinal axis) of the opening of the flow path is shown to be less than that of the proximal side space. As the device is a cylinder the cross-sectional the area of the flow path is therefore considered to be smaller than the proximal side space. Para. 28 “a receptacle 20 mounted in the front open end of the barrel 10” (emphasis added) considered to be cylindrical as it is described as a barrel.).
In regard to claim 3:
The syringe according to claim 1, taught by Chen as described in parent claim rejection above.
Chen teaches, wherein the proximal side part of the holding member has, as a proximal end surface (Fig. 2 element 20 proximal end surface thereof), an abutting surface (see annotated Fig. 2 below, abutting surface is the interior inclined edge of element 21 passage) with which a piston inserted from the proximal side into the barrel can come into abutting contact (Fig. 4 piston at the proximal end of element 7.), and the abutting surface is configured to come into surface contact with a distal end surface of the piston over the entire circumference in a circumferential direction of the barrel (See annotated Fig. 2 below. Abutting surface is considered fully capable of coming into abutting contact with the piston over its entire circumference as the piston is shaped to fit into element 21 and therefore will abut the entire circumference of the abutting surface).
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/M.A.I./Examiner, Art Unit 3783
/BHISMA MEHTA/Supervisory Patent Examiner, Art Unit 3783
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