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 .
Election/Restrictions
Applicant's election with traverse of Group I in the reply filed on 2/23/2026 is acknowledged. The traversal is on the ground(s) that the examiner has not provided sufficient evidence to support the conclusion that the subcombination has separate utility and thus not distinct. This is not found persuasive because the devices of the subcombinations are comprised of a single element of each structure, while the combination includes a plurality of some of the structures, resulting in a smaller device (and thus the required packaging size).
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 5 is objected to because of the following informalities: “wherein a proximal portion of the disposable tubular insert has a proximal portion of the reusable outer sleeve are each formed....” does not make sense. It is assumed the “has” should be “and”. Appropriate correction is required.
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 12 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.
In claim 12, it is unclear how a reusable outer sleeve is related to that in claim 1. Further, claim 12 has “a disposable insert” and seems to be claimed separately from “a disposable tubular insert” in claim 1, yet it is unclear how they are separate and based upon the specification seem to be the same.
Claim Rejections - 35 USC § 102
(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.
Claim(s) 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lloyd et al (US 8,038,656).
Regarding claim 7, Lloyd discloses a syringe comprising: a disposable portion comprising a fluid reservoir 110 having a fluid opening (in end 110b) at a distal end thereof and a stopper 130 movably received in the fluid reservoir for sealing a proximal end of the fluid reservoir (fig 8 vs fig 13) and for displacing fluid into or out of the fluid reservoir through the fluid opening upon movement of the stopper within the fluid reservoir (as it is moved proximally and distally); and a reusable portion 120 comprising a user-operable plunger detachably coupled to the stopper (title; Col.1 ll 45-48) for causing the stopper to move within the fluid reservoir and thereby displace fluid into or out of the fluid reservoir through the fluid passage under the control of the user (Col.4 ll 22-26).
Allowable Subject Matter
Claims 1-6, 8-11 and 13 are allowed.
The closest art is considered Loe (US 2008/0086092) in view of Taranto et al (US 5,651,774). Loe teaches everything except the visible scale on the reusable outer sleeve and the threaded collar engaging by movement from a distal position to a proximal position. Taranato is a suggestion to place the visible scale on the outer sleeve. As to the remaining limitation, Loe teaches engagement with the tubular insert via a tightening of the collar from a proximal position to a distal position, the opposite that claimed, and modifying Loe to reach the claimed limitation would be based on impermissible hindsight.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY JAMES OSINSKI whose telephone number is (571)270-3640. The examiner can normally be reached Monday to Thursday 9AM to 5PM.
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/BRADLEY J OSINSKI/Primary Examiner, Art Unit 3783