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 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, 2 and 4-18 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:
Independent claim 1 is indefinite because establishing laminar flow does not occur at a particular distance but instead depends upon the velocity of the fluid and composition of the fluid which are a matter of intended use. At low velocity and/or high viscosity, in accordance with the Reynolds number based criteria for laminar flow, the flow may already be laminar within the static mixer and many continue to be laminar upon exiting the mixer. Alternatively, at high velocity and/or low viscosity, flow may be turbulent regardless of distance. Dependent claims 2 and 4-18 fall with claim 1 regarding this issue.
Further concerning claims 9-15, independent claim 1 recites “a diameter of the central bore proximal to the static mixer” and dependent claim 9 is understood to refer back to this recitation by reciting “the mixing tube defines the inner diameter of the central bore proximal to the static mixer”. However, claim 9 now recites “the delivery apparatus comprises: a mixing tube comprising a second central bore”. It is confusing that claim 9 now recites that the central bore of the mixing tube is considered a different second central bore but defines the first central bore. Claims 10-15 fall with claim 9 concerning this matter.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2 and 4-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement:
In independent claim 1, there is no support for the “greater than” alternative in the new limitation “an inner diameter of the outlet distal to the static mixer is equal to or greater than a diameter of the central bore proximal to the static mixer”. The instant specification states at [0049]: “The central bore 710 of the nozzle 700 has a constant diameter from a nozzle inlet 720 to a nozzle outlet 730.” The nozzle is part of the delivery system according the specification including claim 9; outlet 730 is the outlet of the delivery system. Furthermore, if the inner diameter of mixing tube 500 in section 516 is taken as the “diameter of the central bore proximal to the static mixer” (as now recited in claim 9), as seen in instant Fig. 3, the inner diameter at of the outlet 730 is smaller than the diameter of the central bore proximal to the static mixer. Dependent claims 2 and 4-18 fall with claim 1.
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, 4-6, 8, 9 and 15-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fox (US 3,791,255):
Regarding claim 1, Fox discloses system comprising a first reservoir (1); a second reservoir (2); a delivery apparatus (13,8,16) having a central bore that extends a length of the delivery apparatus from a proximal end to the distal end of the delivery apparatus and an outlet (the downstream end of 16) disposed at the distal end; and a static mixer (7, or a subset of the elements 9 of 7) disposed within the central bore of the delivery apparatus a predetermined distance from the outlet of the delivery apparatus (see Fig. 3) and an inner diameter of the outlet distal to the static mixer is equal to or greater than a diameter of the central bore proximal to the static mixer (see in Fig. 3 how element 16 frustoconically flares from a small diameter proximal to the mixer to a larger diameter at the outlet distal to the mixer; see also col. 8, lines 47-67. The diameter being equal is also disclosed as being prior art by Fox, greater diameter being Fox’s invention).
Regarding claim 4, the emulsion matrix is not a required element of the claimed system, but instead intended contents of a reservoir during an intended operation.
Regarding claim 5, the sensitizing agent is not a required element of the claimed system, but instead intended contents of a reservoir during an intended operation.
Regarding claim 6, the delivery apparatus comprises a delivery hose (13,8) defining the central bore and the outlet, wherein the static mixer is disposed within the central bore of the delivery hose the predetermined distance from the outlet of the delivery hose (see Fig. 3).
Regarding claim 8, the static mixer is "couplable" within the central bore of the delivery hose the predetermined distance from the outlet of the delivery hose via items that are not required elements of the claimed system (see Fig. 3).
Regarding claim 9 the delivery apparatus comprises a mixing tube (8) comprising a second central bore that extends from a mixing tube inlet to a mixing tube outlet, wherein the mixing tube inlet is configured to couple to an outlet of a delivery hose, and wherein the static mixer (7) is disposed within the central bore of the mixing tube and the mixing tube defines the inner diameter of the central bore proximal to the static mixer; and a nozzle (16) comprising a central bore that extends from a nozzle inlet to a nozzle outlet, wherein the nozzle inlet is coupled to the mixing tube outlet, and the nozzle outlet defines the outlet of the delivery apparatus, and a length of the nozzle is the predetermined distance.
Regarding claim 15, which the diameter of the nozzle increasing towards the outlet is the novelty of Fox, Fox also discusses the nozzle being constant diameter as prior art (see col. 1, lines 14-22).
Regarding claim 16, fluid expelled from the outlet of the delivery apparatus at an angle less than 45 degrees of the longitudinal axis of the delivery apparatus (see Fig. 3).
Regarding claim 17, as seen in Fig. 2, at least five instances of "9" are disclosed. Two subsets of these elements maybe be considered first and second mixers.
Regarding claim 18, the second static mixer is a three-element static mixer (see Fig. 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.
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.
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fox (US 3,791,255). The system of Fox was discussed above. Numerical information concerning the distance to the outlet is not disclosed; however, as held in n re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) scaling the size of a system is within the skill of one of ordinary skill in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date to have scaled the distance based upon the dimension of the bore hole.
Claims 7, 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Fox (US 3,791,255) in view of Halander (US 2010/0296362). The systems of Fox and Halander were discussed above:
Regarding claim 7, threading is not disclosed by Fox. However, as seen in Fig. 5 of Halander threading to couple pipes is notoriously well known. It would have been obvious for one of ordinary skill in the art before the effective filing date to have utilized threading as taught by Halander to achieve secure fastening.
Regarding claim 13, it is not expressly stated that nozzle is detachably attachable. Halander teaches making a nozzle detachably attachable via threaded coupling (see Fig. 5). See also In Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) concerning make parts detachable. It would have been obvious for one of ordinary skill in the art before the effective filing date to have made the nozzle detachably attachable to facilitated assembly, repair or cleaning.
Regarding claim 14, threading is not disclosed by Fox. However, as seen in Fig. 5 of Halander threading to couple pipes is notoriously well known. It would have been obvious for one of ordinary skill in the art before the effective filing date to have utilized threading as taught by Halander to achieve secure fastening.
Response to Arguments
Concerning section 112(b), the 0.06(Re)(D) formula that applicant cites in applicant’s remarks is not the criteria for laminar flow. The cited formula is instead for the distance required, given that a flow is already laminar, for a velocity profile within a pipe to become constant. The criteria for laminar flow versus turbulence flow is instead based upon the Reynolds number itself, for example in Re being less than 2040 is often cited. The flow may already be laminar within the mixer and continue to be laminar, if the velocity is low. Oppositely, if velocity is high, the flow may be turbulent no matter how long the distance.
It is agreed that claim 1 as currently amended is no longer anticipated by Halander, but claim 1 remains anticipated by Fox. As applicant now expressly recites in claim 9, “the nozzle outlet defines the outlet of the delivery apparatus”, and Fox explains that the nozzle of Fox’s invention conically diverges to a greater diameter, as applicant now claims. Instead, it is applicant’s disclosure as original filed that fails to describe this feature.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L SORKIN whose telephone number is (571)272-1148. The examiner can normally be reached 7am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Claire X Wang can be reached at (571) 270-1051. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID L. SORKIN
Examiner
Art Unit 1774
/DAVID L SORKIN/Primary Examiner, Art Unit 1774
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