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 Arguments
Applicant’s amendments, filed 08/21/2025, with respect to claim 1 to include the allowable subject matter of claim 7 has been fully considered and are persuasive. The 103 rejection over Parker in view of Herweijer, Menocal, Jr. and Bach has been withdrawn. Claims 1-4, 6, 8-17 are allowed.
Applicant’s arguments with respect to claim(s) 18 in regards to the 103 rejection over Parker in view of Herweijer, Menocal, Jr. and Bach have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Upon further consideration, a new ground(s) of rejection is made in view of Harris (US 4401434).
Claim Objections
Claims 1-2, 9, 14-18, and 20 are objected to because of the following informalities:
Claim 1, line 8: “the interior” which should recite “the interior of the container”.
Claim 1, lines 8-9: “the exterior” which should recite “the exterior of the container”.
Claim 1, lines 11-12 and 15: “the liquid disinfectant” which should recite “the prescribed volume of liquid disinfectant”.
Claim 9, line 1: “the liquid disinfectant” which should recite “the prescribed volume of liquid disinfectant”.
Claim 14, line 1: “the prescribed volume of the liquid disinfectant” which should recite “the prescribed volume of liquid disinfectant”.
Claim 15, lines 5, 8, and 10: “the liquid disinfectant” which should recite “the prescribed volume of liquid disinfectant”.
Claim 15, line 11: “the tick” which should recite “the imbedded tick”.
Claim 16, lines 1 and 2: “the tick” which should recite “the imbedded tick”.
Claim 17, line 2: “the liquid disinfectant” which should recite “the prescribed volume of liquid disinfectant”.
Claim 18, lines 5-7, 9 and 12: “the liquid disinfectant” which should recite “the prescribed volume of the liquid disinfectant”.
Claim 18, lines 8-9 and 16: “the tick” which should recite “the imbedded tick”.
Claim 18, line 10: “the prescribed volume of liquid disinfectant” which should recite “the prescribed volume of the liquid disinfectant”.
Claim 18, line 15: “the liquid” which should recite “the prescribed volume of the liquid disinfectant”.
Claim 18, line 15: “the interior” which should recite “the interior of the container”.
Claim 18, line 15: “the exterior” which should recite “the exterior of the container”.
Claim 18, line 2: “the bottom” which should recite “the bottom of the container”.
Claim 20, line 1: “the tweezers 25” which should recite “the tweezers”.
Appropriate correction is required.
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.
Claim(s) 18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harris (US 4401434).
Regarding claim 18, Harris discloses a kit for removing an imbedded tick from epidermal tissue of a mammal (Fig. 1, col. 1 lines 5-10 and col. 3 lines 10-15; see note below regarding intended use) comprising:
a container 12 having a prescribed volume of a liquid disinfectant 24 received therein (Figs. 1, 5, col. 3 lines 10-28 ), wherein the container 12 has a body 18 and a neck 20 collectively defining an interior of the container 12 that receives the liquid disinfectant 24 therein (Figs. 1-2, 5, col. 3 lines 16-28), wherein the body 18 has a bottom 22 arranged for resting on a support surface (Figs. 2-3, col. 3 lines 16-28), the neck 20 having a rim delimiting an opening (best shown in Fig. 2 which illustrates the neck 20 comprising an opening ) for transferring the liquid disinfectant from the interior of the container 12 to an exterior of the container 12 (Fig. 2, col. 3 lines 16-28, col. 3 lines 67-68 and col 4 lines 1-6);
the liquid disinfectant 24 being adapted to sanitize the epidermal tissue and the tick (col. 3 lines 16-28);
the prescribed volume of liquid disinfectant 24 being less than a volume of the interior of the container 12 so as to provide an air gap between the rim of the container 12 and a top surface of the liquid disinfectant 24 in the container 12 (see Fig. 5, col. 3 lines 16-28), such that the liquid disinfectant 24 can flow to fill the neck upon tilting the container (col. 3 lines 16-28);
a cap 14 configured to be removably received on the neck 20 to selectively close the opening to resist transfer of the liquid from the interior to the exterior (Figs. 1,2, 5, col. 3, lies 29-35); and
tweezers 44 for mechanically removing the tick (Fig. 5, col. 3 lines 42-45, col. 4 liens 20-25);
wherein the tweezers 44 are attached to the cap 14 (see Fig. 5 which illustrates the tweezers attached to the cap by way of their common connection to applicator receiver 34, col. 3 lines 42-51; The examiner notes that language such as “connected to”, “coupled to” or “attached to” does not mean “directly” connected, coupled, or attached but indicates that two things can be “linked to” each other by way of their common connection to something else.) and sized received within the container 12 when the cap 14 is mounted on the neck of the container (see Fig. 5, col. 3 lines 42-51).
Note: “a kit for removing an imbedded tick from epidermal tissue of a mammal” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). The claims are directed towards an apparatus, not a method. Therefore, the language in the preamble is not interpreted as describing the claimed structural components of the claimed invention, but interpreted as describing the functionality and the intended use of the claimed invention. Therefore, “for removing an imbedded tick from epidermal tissue of a mammal” is interpreted as functional components that the kit is capable of being used for. The device of Harris comprises all of the structure required for the functional language in the preamble (“container”, “cap” and “tweezers”) and is intended to treat imbedded objects in skin (col. 1 lines 5-10 and col. 1 lines 27-31) and therefore meets the functional language described. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 20, Harris discloses wherein the tweezers 44 comprise two arms which are joined with one another at a proximal end 52 of the tweezers (see Fig. 5, col. 3 lines 46-51) and which are spaced apart at an opposing distal end of the tweezers (see Fig. 5, col. 3 lines 46-51), and wherein the proximal end 52 of the tweezers 44 is attached to the cap 14 (see Figs. 2 and 5 which illustrates the proximal end of the tweezers being attached to the cap by way of their common connection to web 32 which forms opening 42, col. 3 lines 36-45).
Allowable Subject Matter
Claims 1-4, 6, 8-17 are allowed (see reasons for allowance for claims 15-17 in office action filed 06/05/2025).
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 19, Harris discloses wherein the container (interpreted as receptacle 12) extending between the bottom 22 and the rim (interpreted as opening defined by neck portion 20, best shown in Fig. 2, Fig. 5, col. 3 lines 29-35) along an axis in which the body 18 of the container 12 is enlarged relative to the neck 20 in a radial direction of the axis (see annotated Fig. 2 below which illustrates the body being larger than the neck portion).
However, Harris fails to disclose that the neck is elongated relative to an axial direction of said axis (see annotated Fig. 2 below which defines the neck and body portion and illustrates the neck portion being shorter relative to its width, and is therefore not elongate), and wherein the neck of the container is configured to receive the tweezers therein when the cap is mounted on the neck of the container such that the tweezers do not protrude into the body of the container (see Fig. 5 of Harris which illustrates tweezer 44 received within the neck 20, but does protrude into the body 18 of the container). Therefore, claim 19 is objected to since such a modification to include all of the structure of claim 19 would require a substantial reconstruction and redesign of the elements shown in Harris as well as a change in the basic principle under which the Harris construction was designed to operate.
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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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN DUBOSE whose telephone number is (571)272-8792. The examiner can normally be reached Monday-Friday 7:30am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 571-272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN DUBOSE/Examiner, Art Unit 3771
/SARAH A LONG/Primary Examiner, Art Unit 3771