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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/974833, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The prior filed application fails to provide support for the support pads to be detachably connected to the flexible membrane [claims 1 and 4]. As such, the claims were examined with an effective filing date of 1/8/2024.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claims 1, 4, 6, and 8 are objected to because of the following informalities:
Regarding claim 1, the claim should be amended to recite “…a [[the]] user’s breast…inserted into the [[a]] breast pump flanged housing…” in line 9 to provide antecedent basis for “the user” and since the breast pump flanged housing was previously recited in the claim, respectively.
Regarding claim 4, the claim should be amended to recite “the sensation of [[a]] the baby’s mouth…” in line 16 to since the baby was previously recited in the claim.
Regarding claims 6 and 8, the claims should be amended to recite “…the feel of [[a]] the baby’s mouth” in line 5 since the baby was previously recited in the parent claim.
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.
Claims 7 and 8 are 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.
Regarding claims 7 and 8, the claims are drawn to a “breast pump flange assembly” but are dependent on claim 6 which is a “flexible membrane” dependent on claim 1. It is unclear if the preamble should be amended to recite “The flexible membrane of claim 6” or if the claims should be amended to be dependent on claim 4 instead. For examination purposes, the latter interpretation was used. The examiner notes that using the other interpretation, claim 8 would be rejected under 112(d) as the claim fails to further limit claim 6 since the claims recite the same subject matter.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 9, the claim is drawn to each of the support pads being detachably connected to the inner portion of the flexible membrane. This claim is dependent on claim 1 which recites in lines 4-5 that “the inner portion contains a plurality of support pads that are each detachably connected to the flexible membrane”. Thus, claim 9 fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-6 are allowed.
Claims 7 and 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner' s statement of reasons for allowance: The claims in this application are allowed because the prior art of record fails to disclose either singly or in combination the claimed flexible membrane and breast pump flange assembly.
The closest prior art of record is Silver (US 20020198489).
Regarding independent claims 1 and 4, Silver fails to teach among all the limitations or render obvious a plurality of support pads that are each detachably connected to a flexible membrane, in combination with the total structure and function as claimed. Silver teaches the claimed devices substantially (see discussion in the Final Rejection mailed on 6/13/2023 for parent application 16794833) in that Silver teaches a flanged housing (“rigid outer shield part” in paragraph 199; see fig. 28) comprising a flexible membrane configured to be detachably connected to the flanged housing (fig. 25) which comprises a plurality of support pads arranged on an inner portion of the membrane (protrusions 1078 and 1080 in fig. 25). However, Silver teaches that the plurality of support pads are integrally formed with the flexible membrane (fig. 24B and 25) so that Silver does not teach or suggest that the support pads are detachably connected to the flexible membrane, as required by the claim.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY FREDRICKSON whose telephone number is (571)270-7481. The examiner can normally be reached Monday-Friday (9 AM - 5 PM EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BHISMA MEHTA can be reached at 571-272-3383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/COURTNEY B FREDRICKSON/Primary Examiner, Art Unit 3783