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 .
Status of the Claims
Claims 1-12 are previously presented. Claims 13-15 are newly added. Therefore, claims 1-15 are pending and considered herein.
Response to Arguments
First, the applicant argues that Sugawara does not disclose “a sheath in which the dispensing member is received” and “a piercing tip formed at the lower end of a sheath,” as recited in claim 1. However, the examiner disagrees.
As set forth in the Office action, Sugawara discloses the claimed sheath as the surrounding structural arrangement formed by valve assembly 121 and cap assembly 112, including sub-elements housing 124 and 24 and lid 115 (best shown in Fig. 4A), in which the dispensing member is received. The Office action further identifies seal opening part 127 as the claimed piercing means, with bottom surface 27a corresponding to the claimed piercing tip formed at the lower end of the sheath.
The examiner construes the term “sheath” according to its ordinary and customary meaning.1 Applicant’s disclosure does not expressly define the term “sheath,” nor does the applicant identify any portion of the disclosure demonstrating that the term should be afforded a meaning different from its ordinary and customary meaning. As guidance, the American Heritage Dictionary defines the term “sheath” as “a usually close-fitting case or covering” and further defines the term to include “any of various similar coverings.”
Under the construction of claim 1 that the examiner sets forth, these structures meet the claimed limitations of “a sheath in which the dispensing member is received” and “a piercing tip formed at the lower end of a sheath.”
The applicant’s arguments effectively seek to import structural limitations from the disclosed embodiment into claim 1. Specifically, the applicant’s position would require the claimed sheath to constitute a separate tubular sleeve that receives the dispensing member in the particular manner illustrated in the disclosure, substantially surrounds the dispending member, and terminates in an internally formed piercing tip. However, none of these limitations appear in claim 1. Under broadest reasonable interpretation, Sugawara reasonably discloses the claimed structural relationship between the sheath, the dispensing member, and the piercing tip. Therefore, the examiner maintains the rejection.
Second, the applicant argues that valve 21 of Sugawara is not received within a sheath and that the dispensing member likewise is not received within a sheath. However, the examiner disagrees. Claim 1 merely requires that the dispensing member be received within a sheath and does not specify the particular manner in which the dispensing member is received. Specifically, claim 1 does not require the sheath to completely surround the dispensing member, extend along its entire length, or constitute a separate structural member.
As explained in the Office action, the examiner relies upon the surrounding structural arrangement of valve assembly 121 and cap assembly 112 that receives and supports the dispensing member, rather than any single isolated component. The applicant’s arguments therefore seek to narrow the claim beyond its express language. Accordingly, Sugawara reasonably satisfies the claimed relationship that the dispensing member is received within the sheath. Therefore, the examiner maintains the rejection.
Third, the applicant argues that housing 24 of Sugawara is an essential component of the valve and therefore cannot reasonably correspond to the claimed sheath. However, the examiner disagrees. The applicant’s argument is based upon individual component nomenclature rather than the language of the claims. Anticipation is determined by the structure disclosed by the reference, not by the terminology assigned to individual components.
Even so, the Office action does not rely upon housing 24 in isolation. Rather, housing 24 is identified as one of the surrounding structural portions of the previously identified valve assembly 121 and cap assembly 112 corresponding to the claimed sheath. Nothing in claim 1 requires the sheath to be a single separately identified component or to be structurally independent of the valve assembly. Accordingly, the examiner maintains the rejection.
Fourth, the applicant argues that seal opening part 27 is detachably connected to housing 24 and therefore is not “formed at the lower end” of the sheath. However, the examiner disagrees. Applicant’s argument imports manufacturing or construction limitations that do not appear in claim 1.
Claim 1 does not require the piercing tip to be integrally formed with the sheath, molded with the sheath, or permanently fixed to the sheath. Rather, claim 1 merely requires that the piercing tip be formed at the lower end of the sheath. This limitation merely defines the structural location of the piercing tip relative to the sheath and does not require any particular manufacturing technique or construction method. As set forth in the Office action, Sugawara discloses bottom surface 27a of seal opening part 127 at the lower end of the surrounding sheath structure identified above. Accordingly, the examiner maintains the rejection.
Fifth, the applicant argues that Sugawara lacks the specific sheath disclosed in the applicant’s specification because Sugawara does not include a structure corresponding to the applicant’s illustrated sheath. However, the examiner disagrees. Patentability is determined by the language of the pending claims rather than correspondence with the applicant’s preferred embodiment. Applicant’s arguments effectively require the claimed sheath to be a separate tubular sleeve, substantially surrounding the dispensing member, and terminating in an integrally formed piercing tip. However, none of these limitations appear in claim 1. Therefore, the examiner maintains the rejection.
Sixth, the applicant’s arguments repeatedly compare Sugawara to the applicant’s disclosed embodiments, rather than to the language of claim 1. During examination, pending claims are given their broadest reasonable interpretation consistent with the specification. The claims are defined by their express language rather than by importing limitations from particular illustrated embodiments.
Drawings
The drawing objections dated December 12, 2025, are withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: "piercing means" in claim 1 (including depending claims).
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
The following 3-Prong Test is used to detail the invocation of 35 U.S.C. 112(f) pertaining to the limitation “piercing means” in claim 1 (and dependent claims):
The generic place holder, “means,” is identified and is not indicative of any specific known, limiting feature.
“means” is modified by the functional language “piercing.” The generic placeholder is set forth by the function it performs.
Sufficient structure for achieving the claimed function follows the aforementioned limitation, as recited by the claim limitation: “the piercing means comprises a piercing tip.”
Thus, the limitation “piercing means” in claim 1 is given the broadest reasonable interpretation set forth by the structure of the “piercing tip,” provided by claim 1 (and dependent claims).
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Such claim limitation(s) is/are:
"connection means" in claim 11
The following 3-Prong Test is used to detail the invocation of 35 U.S.C. 112(f) pertaining to the limitation “connection means” in claim 11:
The generic place holder, “means,” is identified and is not indicative of any specific known, limiting feature.
“means” is modified by the functional language “connection.” The generic placeholder is set forth by the function it performs.
A lack of sufficient structure for achieving the claimed function follows the aforementioned limitation.
Thus, the limitation “connection means” in claim 11 is given the broadest reasonable interpretation set forth by the specifications to mean: “snap-fitting, screwing, bayonet, etc.,” Applicant’s specifications, p. 11 para. 1.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 7-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sugawara et al (US 12,179,993).
Regarding claim 1, Sugawara discloses fluid product dispenser comprising: a fluid product reservoir (inner container 14) comprising a neck (neck part 14d) defining an opening (refer to fig. 1B) and an upper annular edge (upper end surface 14e), the reservoir being provided with a blocking member (lid 15 includes seal part 15a) which seals the opening of the neck (col. 8 ll. 21-36), the blocking member comprising a pierceable membrane (lid 15 includes closing part 15d), the pierceable membrane is disposed inside the neck axially away from the upper annular edge (refer to fig. 1A), an assembly comprising a dispensing member (stem 22 and stem rubber 26; col. 21, ll. 14-16), received in the blocking member of the reservoir (Figs. 1A and 2A), the assembly comprising piercing means (seal opening part 127 includes reinforcing plates 27 and bottom surface 27a; col. 17, ll. 8-16) for piercing the pierceable membrane (Figs. 3A-3B), wherein the piercing means comprise a piercing tip (bottom surface 27a) formed at the lower end of a sheath (valve assembly 121 and a cap assembly 112, that includes housing 124, housing 24 within valve 121, and lid 115, collectively define the surrounding structure that receives and supports the dispensing member, as best shown in Fig. 4A) in which the dispensing member is received (Figs. 2A and 4A).
Regarding claim 2, in addition to the limitations of claim 1, Sugawara further discloses wherein the sheath comes into sealed annular radial contact with the blocking member (via seal 28, col. 12 ll. 21-27).
Regarding claim 3, in addition to the limitations of claim 1, Sugawara further discloses wherein the blocking member comprises a sleeve (both the seal part 15a and fitting cylindrical part 15a1) which extends into the neck from the upper annular edge, the pierceable membrane being connected to a lower end of the sleeve (refer to fig. 2B).
Regarding claim 7, in addition to the limitations of claim 1, Sugawara further discloses wherein the blocking member comprises an annular collar (annular disk part 17) that rests on the upper annular edge (refer to fig. 2B and col. 10 ll. 60-66) and a sleeve (both the seal part 15a and fitting cylindrical part 15a1), connected to the annular collar which extends into the neck (refer to fig. 2B).
Regarding claim 8, in addition to the limitations of claim 7, Sugawara further discloses a ring (valve holder 18) mounted around the neck and which comes into engagement with the annular collar to press it against the upper annular edge (refer to fig. 3B).
Regarding claim 9, in addition to the limitations of claim 7, Sugawara further discloses wherein the annular collar internally forms an annular sealing rib on its internal wall (refer to the annotated figure below):
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the sheath coming into sealed annular radial contact with this annular sealing rib (refer to col. 12 l. 64 to col. 13 l. 10, describing the sealed nature).
Regarding claim 10, in addition to the limitations of claim 1, Sugawara further discloses wherein the sheath is formed by a casing (cap 120) that comprise an opening for the dispensing member and a connection system for the reservoir (fig. 7 and col. 13 ll. 11-33, wherein the cap 120 connected to the container body 16).
Regarding claim 11, in addition to the limitations of claim 10, Sugawara further discloses wherein the casing is provided with a case (cover part 42) provided with an insertion/extraction opening (in which container body 16 is inserted into) and defining an insertion/extraction axis X (along the central axis of container body 16), the fluid product reservoir being engaged in the case through the insertion/extraction opening and removably connected to the connection system (refer to fig. 7), the reservoir comprising connection means (threads on neck part 13d) and a bottom accessible at the insertion/extraction opening to exert an axial thrust on the reservoir in order to cause the connection means to cooperate with the connection system (refer to fig. 7, wherein a user can apply a trust while inserting the container body 16 into the cap 120).
Regarding claim 12, in addition to the limitations of claim 1, Sugawara further discloses wherein the dispenser member is a pump or a valve (stem 22 and stem rubber 26 and col. 14 ll. 14-27).
Regarding claim 13, in addition to the limitations of claim 1, Sugawara further discloses wherein axial force exerted on the sheath is directly transmitted to the piercing tip (axial assembly force is transmitted from housing 24 to the seal opening part 27a).
Regarding claim 15, in addition to the limitations of claim 1, Sugawara further discloses wherein an outer circumferential surface of the sheath (valve 121 and cap 112) is in radial contact with the blocking member (lid 15).
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al (US 12,179,993), as applied in claim 1, further in view of Klingaman (US 3,966,089).
Regarding claim 4, in addition to the limitations of claim 3, Sugawara further discloses wherein the neck projects from a shoulder (shoulder part 14c), however, remains silent to the sleeve extending substantially over the entire height of the neck and the pierceable membrane being positioned substantially at this shoulder. Klingaman teaches the sleeve (cradle 18) extending substantially over the entire height of the neck (refer to figs. 1 and 4) and the pierceable membrane (capsule 20) being positioned substantially at this shoulder (refer to fig. 1). The courts have held that when the only difference between the claimed invention and the prior art is a rearrangement of parts, that the location of the feature is not patentably significant. See MPEP 2144.01(VI)(C), discussing In reJapikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Therefore, it would have been prima facie obvious to one having ordinary skill in the art to modify the device to include the seal part substantially at the shoulder. Applicant has appeared to have placed no criticality on this location and as evidenced by the teachings of Klingaman above which show such a location to be suitable for sealing between the claimed components.
Additionally, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sleeve to be over the entire height of the neck. In doing so, one can efficiently utilizes the space at the top of the bottle, allowing for the connection of a dispensing top (refer to Klingaman: fig. 1).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al (US 12,179,993).
Regarding claim 5, in addition to the limitations of claim 3, Sugawara further discloses, in the embodiment of figure 8, wherein the sleeve forms an annular sealing rib (engaging projections 15h) on its internal wall (refer to fig. 8), the sheath coming into sealed annular radial contact with this annular sealing rib (via engaging projection 18g). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device to include ribbing, as the disclosure of Sugawara allows for such modification between embodiments (col. 43 ll. 21-51)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al (US 12,179,993), as applied in claim 1, further in view of Easter (US 3,655,096).
Regarding claim 6, in addition to the limitations of claim 1, Sugawara remains silent to the pierceable membrane has a conical shape facing the inside of the reservoir, however, Easter teaches the pierceable membrane (cartridge 20) has a conical shape facing the inside of the reservoir (fig. 3). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the pierceable membrane to have a conical shape facing the inside of the reservoir. In doing so, one skilled in the art can utilize the space within the reservoir, conserving space in which the dispensing mechanism can exist.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Sugawara et al (US 12,179,993), as applied in claim 1, further in view of Zielinski (US 5,772,652).
Regarding claim 14, in addition to the limitations of claim 1, Sugawara remains silent to the sheath and the piercing tip are part of a one-piece integral construction. However, Zielinski teaches a sheath (tubular body member 6) and a piercing tip (sharpened end 8) are part of a one-piece integral construction (col. 3, ll. 9-14). It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sugawara to form the sheath and piercing tip as a one-piece integral construction in order to simplify assembly, improve structural rigidity, and reduce cost.
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 ANGWIN whose telephone number is (571) 270-3735. The examiner can normally be reached Mon - Fri 8:00 - 5:00 EST. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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.
/DAVID P ANGWIN/ Supervisory Patent Examiner, Art Unit 3754
1 As set forth in the Office action, the limitation “piercing means” is not interpreted under 35 U.S.C. 112(f), because the claim language itself recites sufficient structure to perform the recited function. Accordingly, the pending claims are not limited to the particular piercing structure illustrated in the applicant’s disclosure.
Prosecution Insights