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 .
Status of the Application
Claims 1, 3-12, and 14-18 have been examined in this application. This communication is a Final Rejection in response to the "Amendment" and Remarks" filed on 10/15/25.
Claim Objections
Claim 11 is objected to because of the following informalities: “the mixing chamber the receiving chamber” should be “the mixing chamber to the receiving chamber. Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "6" and "12" have both been used to designate a container (see Figure 1). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
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 and 3-11 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claim 1, the claim requires a method comprising both “providing […] a receiving chamber configured to receive a compound-containing container, at least one push rod disposed within the housing and displaceable relative to the receiving chamber” and “inserting a compound-containing container […] and providing a mixer configured to combine the components during dispensing into the receiving chamber”. There appears no support in the application as originally filed for a method step of providing a mixer to combine components during dispensing into a receiving chamber—that receiver also receiving a compound-container container, as required by the claim.
Claims 3-11 depend from claim 1 and thus inherit the deficiencies thereof.
Claims 1 and 3-11 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue”. These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The determination that “undue experimentation” would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
As per claim 1, the claim requires inter alia a method comprising both “providing […] a receiving chamber configured to receive a compound-containing container, at least one push rod disposed within the housing and displaceable relative to the receiving chamber” and “inserting a compound-containing container […] and providing a mixer configured to combine the components during dispensing into the receiving chamber”. It is unclear how the application enables one of ordinary skill in the art to make and or use an invention commensurate with the aforementioned subject matter—i.e. such that a mixer is provided to combine components during dispensing into the a receiving chamber –the same receiving chamber that receives a container holding those components.
Claims 3-11 depend from claim 1 and thus inherit the deficiencies thereof.
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 and 3-11 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.
As per claim 1, the scope of the claim is uncertain at least because of the previously stated defects under 35 USC § 112(a).
Claims 3-11 depend from claim 1 and thus inherit the deficiencies thereof.
In view of the numerous informalities and indefiniteness issues noted above, although a search of the prior art has been conducted, no meaningful application of prior art against claims 1 and 3-11 can be made at this time. This should not be taken as an indication that the claims would be allowable if all of the noted issues are corrected. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
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 12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220339590 to Turner et al in view of US 20100163573 to Wegelin et al in view of US 20160114348 to Cheung et al in view of Official Notice.
As per claim 12, Turner discloses a dispenser for a compound containing container comprising:
a housing (14, 29) having a handle (34), and a receiving chamber (14’) configured to receive a compound-containing container (3), the compound-containing container comprising at least two separate compound components (3a, 3b; [0053], ln. 5-7) and a mixer (15) configured to combine the components during dispensing ([0056], Ln. 3-6);
at least one push rod (24, 24’) disposed within the housing and displaceable relative to the receiving chamber (Fig. 3; [0067]),
a motor (42) disposed within the housing (Fig. 3) and operably coupled to the at least one push rod, the motor configured to drive movement of the at least one push rod ([0081]);
a control unit (33) disposed within the housing (Fig. 3) and electrically coupled to the motor, the control unit configured to control actuation of the motor ([0086]-[0087]);
a main switch (35) positioned on the handle ([0071], Ln. 8-9) and electrically connected to the control unit (Col. 7, Ln. 59-60; Col. 8, ¶ 3);
an operation selection switch (“operation mode selection switch in the form of an on/off mode switch” [0071], Ln. 10-11) configured to switch between a plurality of operation modes (on/off), the operation selection switch including a discard position a discard position (“on”);
a receiver (“second code reader” [0103]) configured to read information stored on the compound-containing container ([0037]; [0103], ln. 10-11; [0105]), the receiver being electronically connected to the control unit (claim 10 and 12; [0101], ln. 10-11);
a data process module of the control unit ([0103]);
Turner does not disclose: a memory module of the control unit, configured to store values corresponding to a predetermined discard amount for one or more compound-containing containers; the data process module of the control unit configured to select the predetermined discard amount stored in the memory module based on the information read by the receiver; wherein upon the main switch being activated by the user, the control unit is configured to actuate the motor and to terminate actuation of the motor once a predetermined discard amount of the compound has been dispensed, thereby dispensing the predetermined discard amount of the compound through the mixer to initialize mixing of the at least two components; wherein each discard amount corresponding to a defined movement of the at least one push rod and the control unit being configured to actuate the motor to move the at least one push rod in a dispensing direction sufficient to ensure mixing of the at least two separate compound components; and, the operation selection switch electrically connected to the control unit, and wherein upon the operation selection switch being set to the discard position the control unit is configured to operate according to the designed functions, i.e. actuate the motor and terminate actuation of the motor.
In regards to the limitations requiring a memory module and a data process module functioning based on information read by the receiver, Wegelin teaches a dispenser comprising a memory module configured to store values corresponding to predetermined discard amounts for one or more compound-containing containers ([0091]), and a data process module of the control unit configured to select the predetermined discard amount stored in the memory module based on the information read by the receiver ([0090]). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify the dispenser of Turner according to the aforementioned teachings from Wegelin for reasons including to prevent dispensing a wrong amount of material from a particular cartridge.
In regards to the limitations requiring the control unit to activate the motor upon a main switch being activated and terminate actuation of the motor once a predetermined amount of compound is dispensed, Wegelin further discloses a controller activating a motor once a determination of a triggering event is made (i.e. main switch activation), and the controller terminating actuation once a predetermined amount of compound is dispensed ([0079]; [0093]; Fig. 15). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to further modify the Turner-Wegelin combination according to the aforementioned teachings from Wegelin in order to automatically dispense a predetermined amount of compound—whereby in dispensing that predetermined amount, the compound is dispensed through the mixer to initialize mixing of the at least two components.
In regards to the limitations requiring each discard amount corresponding to a defined movement of a push rod and the control unit configured to actuate the motor to move the at least one push rod in a dispensing direction, Cheung teaches a dispensing comprising a controller having a memory module (293, [0021]) including desired material amounts ([0022] “Ratios”) and motor driven push rods ([0017]-[0018]) and formulas for calculating a defined movement of a push rod to dispense a desired amount of material ([0027]-[0032]). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify the Turner-Wegelin combination such that the discard amounts in the memory module of the controller of the Turner-Wegelin combination correspond to a movement of the push rods derived from the formulas according to the aforementioned teachings from Cheung, for reasons including to enable dispensing an amount equivalent to the desired predetermine discard amounts—those defined rod movements being sufficient to ensure mixing of the at least two separate compound components, as required by the claim.
In regards the to the limitation requiring the operation selection switch to be electrically connected to the control unit, Turner further discloses that the manner of an on/off mode switch is known ([0071], Ln. 10-12). The office makes Official Notice that on/off switches are known in the art for connecting electrical components of a dispenser with a power source, i.e. battery. It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to provides the on/off switch of Turner such that it functions to selectively connect all electrical components of the dispenser of Turner, i.e. including the control unit, with a power source for reasons including to provide a safety mechanism for preventing accidental operation of the dispenser by the trigger alone—whereby the discard position (i.e. “on” position) of the main switch functions to configure the control unit to be receive power and thereby configured to operate according to the designed functions, i.e. actuate the motor and terminate actuation of the motor.
As per claim 14, Turner further discloses at least one sensor configured to detect the movement of the at least one push rod ([0085]), said at least one sensor being electronically connected to the control unit ([0086]).
As per claims 15-16, Wegelin further discloses the memory table including a desired dispensed volume for a plurality of products ([0091]). The Turner-Wegelin-Cheung-Official Notice combination set forth previously with regard to claim 1 does not explicitly disclose the memory module storing predetermined discard amounts for a plurality of different compound-containing containers. However, the formulas from Cheung, from which defined piston movement is derived, are based on cross sectional areas of the cartridge ([0026]). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to further modify the controller of the Turner-Wegelin-Cheung-Official Notice combination set forth previously with regard to claim 1 such that the memory module contains discard amounts having values corresponding to a piston travel distance for a desired volume dispensed for a plurality of containers having different cross-section areas and that the data process module is configured to choose from those discard amounts and from among discard amounts corresponding to the plurality of compounds, based on the information read by the receiver, so that the dispenser can be used to automatically dispense a desired volume from a plurality of containers having different cross-section areas and different compounds.
As per claim 17, Turner further discloses an indicator unit electrically connected to the control unit and configured to generate a user-perceivable signal to reflect a discard status ([0073]).
As per claim 18, Turner further discloses the mixer is attached to the receiving chamber for mixing the two components of the compound during dispensing (Fig. 1-2 attache to the receiving chamber via the container).
Response to Arguments
In regards to the claim rejections under 35 USC § 112 issued in the office action dated 06/12/25, the amendment filed 10/15/25 appropriately addresses all and they are withdrawn. The new claim rejections under 35 USC § 112 issued in this office action are necessitated by the amendment filed 10/15/25.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The prior art made of record in FORM PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
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 with expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Gruby, whose telephone number is (571) 272-3415. The examiner can normally be reached from Monday to Friday between 8:00 AM and 5:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Paul Durand, can be reached at (571) 272-4459.
Another resource that is available to applicants is the Patent Data Portal (PDP). Information regarding the status of an application can be obtained from the (PDP) system. For more information about the PDP system, see https://opsg-portal.uspto.gov/OPSGPortal/. Should you have questions on access to the PDP system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/R.A.G/Examiner, Art Unit 3754
/PAUL R DURAND/Supervisory Patent Examiner, Art Unit 3754 January 27, 2026