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 without traverse of Group I drawn to claims 1-11 and 16-17 in the reply filed on 01/05/2026 is acknowledged.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
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.
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.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “driving member,” “first engagement member,” and “second engagement member,” in claim 1.
The following 3-Prong Test is used to detail the invocation of 35 U.S.C. 112(f) pertaining to the “driving member”:
The generic place holder, “member,” is identified as a replacement for the generic “means for,” and is not indicative of any specific known, limiting feature.
“member” is modified by the functional language “driving.” 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, claim 1 and dependent claims 2-11 (by virtue of dependency) are given the broadest reasonable interpretation set forth by the specifications to mean: “an externally threaded portion” which engaged with an internally threaded portion, wherein rotation of the driving members moves the internally threaded portion, drawing support from applicant’s specification, p. 7 para. 0028.
The following 3-Prong Test is used to detail the invocation of 35 U.S.C. 112(f) pertaining to the “first engagement member”:
The generic place holder, “member,” is identified as a replacement for the generic “means for,” and is not indicative of any specific known, limiting feature.
“member” is modified by the functional language “engagement.” 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, claim 1 and dependent claims 2-11 (by virtue of dependency) are given the broadest reasonable interpretation set forth by the specifications to include: an internally threaded aperture with a plurality of tabs for engagement to the second engagement member (specification, para. 0031).
The following 3-Prong Test is used to detail the invocation of 35 U.S.C. 112(f) pertaining to the “second engagement member”:
The generic place holder, “member,” is identified as a replacement for the generic “means for,” and is not indicative of any specific known, limiting feature.
“member” is modified by the functional language “engagement.” 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, claim 1 and dependent claims 2-11 (by virtue of dependency) are given the broadest reasonable interpretation set forth by the specifications to include: a platform which supports the dispensable product and engagement arms for engaging the first engagement member (specification, paras. 0033, 0034 and fig. 3).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
(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 1-8, 10-11, and 16-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murakoshi et al . (US 20070147948 A1).
Regarding claim 1, Murakoshi discloses a container system, comprising:
a case member (main body cylinder 2) extending between a first end and an opposite second end and including a hollow interior (hollow interior which accommodates solid paste 4, refer to fig 1);
a driving member (screw rod 5) rotatable relative to the case member (para. 0059);
a first engagement member (slider 7) engaged with the driving member (para. 0059); and
a second engagement member (solid paste receiving member 8) positionable in the hollow interior of the case member (refer to fig. 1) and configured to engage with a dispensable material positionable in the hollow interior (para. 0060);
wherein the first engagement member and the second engagement member are configured to releasably engage with one another (refer to para. 0060, wherein the slider and receiving member detachably engage) in an arrangement where rotation of the driving member relative to the case member moves the first engagement member and the second engagement member in the hollow interior relative to the case member (paras. 0059 and 0060, wherein both the receiving member and slider move along guide ridge 6 towards the outlet).
Regarding claim 2, in addition to the limitations of claim 1, Murakoshi further discloses wherein the first engagement member includes an internally threaded aperture (part 9) configured to receive and engage with the driving member (para. 0061).
Regarding claim 3, in addition to the limitations of claim 1, Murakoshi further discloses wherein the first engagement member includes one or more arms extending therefrom (refer to the annotated figure below),
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the one or more arms being configured to engage with the case member to prevent rotation of the first engagement member in the hollow interior (engages with guide ridge 6, refer to fig. 1 and the annotated figure below).
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It is the examiner position that the feature above corresponds to the guide ridge for preventing rotation of the first engagement part (slider 7, paras. 0059-60). Since the driving member is fully inserted within the case member when the first and second engagement member are in the retracted position (see fig. 1), the arms engaged with the guide ridge of the case member are essential to oppose rotational forces of the driving member, such that the first and second engagement members translate towards the dispensing end of the device.
Regarding claim 4, in addition to the limitations of claim 1, Murakoshi further discloses wherein the first engagement member includes an engagement platform (upper surface of engaging holes 14) positioned about a central aperture (refer to the annotated figure below).
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Regarding claim 5, in addition to the limitations of claim 4, Murakoshi further discloses wherein the second engagement member includes a number of engagement arms (at least one locking piece 21) extending therefrom and configured to engage with the engagement platform of the first engagement member (paras. 0070-0071 and fig. 5).
Regarding claim 6, in addition to the limitations of claim 5, Murakoshi further discloses wherein the second engagement member further includes a number of spacing arms (at least one guide locking piece 20) configured to engage with the first engagement member (via at least one rearward converging groove 12) and maintain a predefined spacing of the first engagement member relative to the second engagement member (refer to the annotated figure below)
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when the first engagement member is engaged with the second engagement member (para. 0069-0071, wherein the guide locking pieces ensure a correct orientation and spacing necessary for proper engagement of the first and second engagement members).
Regarding claim 7, in addition to the limitations of claim 6, Murakoshi further discloses wherein at least one engagement arm is positioned on opposite sides of each of the number of spacing arms (refer to the annotated figure below).
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Regarding claim 8, in addition to the limitations of claim 5, Murakoshi further discloses wherein the first engagement member includes one or more arms (refer to the annotated figure below)
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extending therefrom and configured to engage with the case member to prevent rotation of the first engagement member in the hollow interior upon rotation of the driving member (engages with guide ridge 6, refer to fig. 1 and the annotated figure below).
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It is the examiner position that the feature above corresponds to the guide ridge for preventing rotation of the first engagement part (slider 7, paras. 0059-60). Since the driving member is fully inserted within the case member when the first and second engagement member are in the retracted position (see fig. 1), the arms engaged with the guide ridge of the case member are essential to oppose rotational forces of the driving member, such that the first and second engagement members translate towards the dispensing end of the device.
Regarding claim 10, in addition to the limitations of claim 1, Murakoshi further discloses wherein the first engagement member includes a pair of elongated and convexly rounded portions (outer peripheral surface 10a, fig. 3) and the second engagement member includes a pair of spaced engagement arms (two of the axial guide locking pieces 20) configured to receive and engage with the convexly rounded portions (para. 0069).
Regarding claim 11, in addition to the limitations of claim 1, Murakoshi further discloses wherein the first engagement member includes a pair of elongated and convexly rounded portions (two of the outer peripheral surface 10a) and the second engagement member includes a number of engagement arms (axial guide locking pieces 20) configured to receive and engage with the convexly rounded portions (para. 0069).
Regarding claim 16, Murakoshi discloses a method, comprising: providing a container system including: a case member extending between a first end and an opposite second end (main body cylinder 2, refer to fig. 1) and including a hollow interior (hollow interior which accommodates solid paste 4, refer to fig 1); a driving member (screw rod 5 with integrally formed tail wheel 3) engaged with and rotatable relative to the case member (engaged with case member via integrally formed wheel 3, paras. 0058-0059 and 0068); and a first engagement member (slider 7) engaged with the driving member (via part 9, paras. 0059 and 0061); and positioning a dispensable material (solid paste 4, para. 0058, 0060, and 0078) including a second engagement member (solid paste receiving member 8) engaged therewith in the hollow interior of the case member (via guide groove 6, paras. 0059-0060) with the first engagement member releasably engaged with the second engagement member (para. 0060).
Regarding claim 17, in addition to the limitations of claim 16, Murakoshi further discloses rotating the driving member relative to the case member to move the first engagement member, the second engagement member and the dispensable material in the hollow interior relative to the case member (paras. 0059-0060).
Allowable Subject Matter
Claim 9 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Thulin et al. (US 9265327 B2) for separable first and second engagement members and Quimenton et al. (WO 2009009849 A1) for the inclusion of first and second engagement members with engagement arms.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER STEVEN PARISI whose telephone number is (571)270-5490. The examiner can normally be reached Mon - Fri 8:00 - 5:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Angwin can be reached at (571) 270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER S. PARISI/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754