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 Amendment
The Amendment filed on 4/7/2026 has been entered. Claims 1-6 remain pending in the application. Claim 7 is new.
Applicants amendments to the abstract have overcome the abstract objections previously set forth in the Non-final Office Action mailed 1/8/2026.
Applicants amendments to the claims have overcome the claim objections previously set forth in the Non-final Office Action mailed 1/8/2026.
Applicants amendments to the claims have overcome the rejections under 35 USC 112 previously set forth in the Non-final Office Action mailed 1/8/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/22/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 7 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 regard to claim 7,
Line 3 recites “the inside of the cylindrical tube”. There is insufficient antecedent basis for the limitation in this claim. An inside of the cylindrical tube has not been introduced. For examination purposes Examiner construes “the inside” to be “an inside”. Examiner suggests replacing “the inside” in line 3 of claim 7 with “an inside”.
Line 3 recites “the cylindrical tube”. Claim 7 depends on claim 1. Claim introduces a first cylindrical tube and a second cylindrical tube. It is unclear which cylindrical tube “the cylindrical tube” of line 3 refers to. For examination purposes Examiner construes “the cylindrical tube” to be “the first cylindrical tube”. Examiner suggests replacing “the cylindrical tube” in line 3 of claim 7 with “the first cylindrical tube”.
Line 1-3 recites “wherein the first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube”. It is unclear if a method step is being recited due to the phrase “maintains contact with the plunger as the plunger moves”. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP 2173.05(p). Examiner suggests replacing “wherein the first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube” with “wherein the first cylindrical tube is configured to maintain contact with the plunger as the plunger moves slidably along an inside of the first cylindrical tube”.
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 1-3, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a first interpretation of Kunishi (U.S. Patent no 8474656).
In regard to claim 1,
Kunishi discloses a cylindrical member (figure 1, item 1) configured to be used for sucking a fluid into an inside of the cylindrical member (column 1, line 66-67) and/or discharging the fluid to an outside of the cylindrical member by allowing a plunger (figure 1, item 2) to move inside the cylindrical member (column 2, line 32-37; Examiner notes “configured to be used for sucking a fluid into an inside of the cylindrical member and/or discharging the fluid to an outside of the cylindrical member by allowing a plunger to move inside the cylindrical member” is construed as a functional limitation. Due to the structure of the cylindrical member, it is fully capable of the recited function), the cylindrical member comprising:
[AltContent: rect][AltContent: textbox (Second cylindrical tube)][AltContent: connector][AltContent: textbox (First cylindrical tube)][AltContent: connector][AltContent: ]
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a first cylindrical tube (see figure 1 above) inside which the plunger is to slide (see position of plunger in figure 6 for example as compared to figure 1, wherein the plunger can slide inside the first cylindrical tube due to its structure; column 4, line 1-3); and
a second cylindrical tube (see figure 1 above) being continuous with the first cylindrical tube (see figure 1 above) and having an inner diameter larger than an inner diameter of the first cylindrical tube (see figure 1 above), the second cylindrical tube being configured to store a lubricant (Examiner notes “being configured to store a lubricant” is a functional limitation. The lubricant is not positively required by the claim. Due to the structure of the second cylindrical tube, it is fully capable of storing a lubricant).
In regard to claim 2,
Kunishi discloses the cylindrical member according to claim 1, wherein
[AltContent: arrow][AltContent: textbox (Tapered surface)]
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a tapered surface (see figure 1 above) whose inner diameter decreases toward the first cylindrical tube (see figure 1 above) is disposed on an end portion of the second cylindrical tube adjacent to the first cylindrical tube (see figure 1 above).
In regard to claim 3,
Kunishi discloses an instrument (see all of figure 1) for sucking and/or discharging a fluid (Examiner notes “for sucking and/or discharging a fluid” is a functional limitation. The instrument is fully capable of the recited structure due to its structure and as supported by column 1, line 66-67 and column 2, line 32-37), the instrument comprising:
a cylindrical member (figure 1, item 1); and
a plunger (figure 1, item 2 and 3) disposed slidably inside the cylindrical member (see figure 1 and column 4, line 1-3);
wherein the cylindrical member includes:
[AltContent: rect][AltContent: textbox (Second cylindrical tube)][AltContent: connector][AltContent: textbox (First cylindrical tube)][AltContent: connector][AltContent: ]
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a first cylindrical tube (see figure 1 above) inside which the plunger is to slide (see position of plunger in figure 6 for example as compared to figure 1, wherein the plunger can slide inside the first cylindrical tube due to its structure; column 4, line 1-3), and
a second cylindrical tube (see figure 1 above) being continuous with the first cylindrical tube (see figure 1 above) and having an inner diameter larger than an inner diameter of the first cylindrical tube (see figure 1 above), the second cylindrical tube being configured to store a lubricant (Examiner notes “being configured to store a lubricant” is a functional limitation. The lubricant is not positively required by the claim. Due to the structure of the second cylindrical tube, it is fully capable of storing a lubricant); and
wherein the plunger includes:
a ring portion (figure 1, item 3) that is larger than the inner diameter of the first cylindrical tube and smaller than the inner diameter of the second cylindrical tube (see figure 1).
In regard to claim 5,
Kunishi discloses the instrument according to claim 3, wherein
the plunger includes:
a plunger body (see body formed by various structures of the plunger in figure 2),
a first surface (surface of item 2a2 in figure 2) of an outer circumferential surface of the plunger body (see figure 2) and configured to make contact with an inner circumferential surface of the first cylindrical tube (see figure 6 for example; Examiner notes “configured to make contact with an inner circumferential surface of the first cylindrical tube” is a functional limitation. Due to structure of the first surface, it is fully capable of the recited function),
the ring portion disposed on the outer circumferential surface of the plunger body (see figure 2), and
a second surface (surface of item 2a1 in figure 2) disposed between the first surface and the ring portion (see figure 2).
In regard to claim 7,
Kunishi discloses the cylindrical member according to claim 1, wherein the first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube (The first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube due to item 3. Since item 3 of the plunger is in contact with the second cylindrical tube and the second cylindrical tube is in contact with the first cylindrical tube, the first cylindrical tube maintains contact indirectly with the plunger as the plunger moves slidably along the inside of the cylindrical tube).
Claims 1-2 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a second interpretation of Kunishi (U.S. Patent no 8474656).
In regard to claim 1,
Kunishi discloses a cylindrical member (figure 6, item 1) configured to be used for sucking a fluid into an inside of the cylindrical member (column 1, line 66-67) and/or discharging the fluid to an outside of the cylindrical member by allowing a plunger (figure 6, item 2 and 3) to move inside the cylindrical member (column 2, line 32-37; Examiner notes “configured to be used for sucking a fluid into an inside of the cylindrical member and/or discharging the fluid to an outside of the cylindrical member by allowing a plunger to move inside the cylindrical member” is construed as a functional limitation. Due to the structure of the cylindrical member, it is fully capable of the recited function), the cylindrical member comprising:
[AltContent: textbox (Second cylindrical tube)][AltContent: connector][AltContent: rect][AltContent: connector][AltContent: textbox (First cylindrical tube)][AltContent: rect]
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a first cylindrical tube (see figure 6 above) inside which the plunger is to slide (column 4, line 1-3); and
a second cylindrical tube (see figure 6 above) being continuous with the first cylindrical tube (see figure 6 above) and having an inner diameter larger than an inner diameter of the first cylindrical tube (see figure 6 above), the second cylindrical tube being configured to store a lubricant (Examiner notes “being configured to store a lubricant” is a functional limitation. The lubricant is not positively required by the claim. Due to the structure of the second cylindrical tube, it is fully capable of storing a lubricant).
In regard to claim 2,
Kunishi discloses the cylindrical member according to claim 1, wherein
[AltContent: textbox (Tapered surface)][AltContent: arrow]
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a tapered surface (see figure 6 above) whose inner diameter decreases toward the first cylindrical tube (see figure 6 above) is disposed on an end portion of the second cylindrical tube adjacent to the first cylindrical tube (see figure 6 above).
In regard to claim 7,
Kunishi discloses the cylindrical member according to claim 1, wherein the first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube (The first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube due to item 3 of the plunger being in contact with the first cylindrical tube).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over the first interpretation of Kunishi (U.S. Patent no 8474656) and further in view of Fischer (U.S. PG publication 20010021828).
In regard to claim 4,
Kunishi discloses the instrument according to claim 3.
Kunishi is silent as to wherein the lubricant is disposed on an inner circumferential surface of the second cylindrical tube.
Fischer teaches wherein the lubricant (paragraph [0116]) is disposed on an inner circumferential surface (figure 17, item 610) of the second cylindrical tube (see second cylindrical tube formed by a portion of barrel 602; paragraph [0116]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Kunishi to include the lubricant is disposed on an inner circumferential surface of the second cylindrical tube, as taught by Fischer, for the purpose of aiding in the insertion of a plunger (paragraph [0116] of Fischer).
In regard to claim 6,
Kunishi in view of Fischer teaches the instrument according to claim 4, wherein
the plunger includes:
a plunger body (see body formed by various structures of the plunger in figure 2 of Kunishi),
a first surface (surface of item 2a2 in figure 2 of Kunishi) of an outer circumferential surface of the plunger body (see figure 2 of Kunishi) and configured to make contact with an inner circumferential surface of the first cylindrical tube (see figure 6 of Kunishi for example; Examiner notes “configured to make contact with an inner circumferential surface of the first cylindrical tube” is a functional limitation. Due to structure of the first surface, it is fully capable of the recited function),
the ring portion disposed on the outer circumferential surface of the plunger body (see figure 2 of Kunishi), and
a second surface (surface of item 2a1 in figure 2 of Kunishi) disposed between the first surface and the ring portion (see figure 2 of Kunishi).
Response to Arguments
Applicant's arguments filed 4/7/2026 in regard to the IDS have been fully considered and are persuasive. The IDS filed 6/22/2023 has been considered.
Applicant's arguments filed 4/7/2026 in regard to the claim rejections under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered but they are not persuasive. Applicant argues that the outer diameter of the O-ring (ring portion) in Kunishi is larger than the inner diameter of the second cylindrical tube. It is noted that claim 1 does not claim a ring portion. Claim 3, which does require a ring portion, does not claim that an outer diameter of the ring portion is smaller than the inner diameter of the second cylindrical tube. Applicant’s arguments are drawn to limitations which are not claimed and are therefore not persuasive.
Applicant argues that the distal narrow portion 2a2 of Kunishi moves inside the first cylindrical tube without contact with the inner circumferential surface of the first cylindrical tube. Applicant states “In other words, the distal narrow portion 2a2 does not slide inside the first cylindrical tube”. It is noted that claim 1 and claim 3 do not require the plunger to be in contact with the first cylindrical tube while sliding. “A first cylindrical tube inside which the plunger is to slide” as claimed in claim 1 and claim 3 does not require the plunger to be in contact with the first cylindrical tube while sliding. Therefore, Applicant’s arguments are not found to be persuasive.
New Claim 7 requires “wherein the first cylindrical tube maintains contact with the plunger as the plunger moves slidably along the inside of the cylindrical tube”. As detailed above, claim 7 does not require direct contact. As claim 7 is a new limitation which changes the scope, and in order to advance prosecution, claim 7 has also been rejected over a second interpretation of Kunishi. Additionally, it is noted in order to advance prosecution that the second interpretation of Kunishi also discloses the limitations of claims 3 and 5 and could be modified in view of Fischer (U.S. PG publication 20010021828) to teach the limitations of claims 4 and 6.
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 ALEXANDRA ELIZABETH LALONDE whose telephone number is (313)446-6594. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Sirmons can be reached at (571) 272-4965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDRA LALONDE/ Examiner, Art Unit 3783
/KEVIN C SIRMONS/ Supervisory Patent Examiner, Art Unit 3783
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