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 arguments with respect to claim(s) 1-12 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.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuller et al. (US 20240366920 A1) in view of Themak (US 1633424 A).
Regarding claim 13, Fuller discloses a graduated dose dispenser and applicator (100, fig. 1) comprising:
a body (200);
a screw rod (600) comprising a screw rod thread (para. [0086]), the screw rod positioned within the body (fig. 2A);
a plunger (700) threaded onto the screw rod thread and configured to move along the screw
rod when the screw rod is rotated (para. [0086, 0090-0091]);
wherein the body (200) comprises:
a tip end (end with cap 400) and a knob end (end with knob 300) opposite the tip end (fig. 1);
a channel located at the knob end (internal void space in body 200, fig. 11A); and
at least one detent (224) positioned within the channel (fig. 11C, para. [0113]);
a knob (300) attached to an end of the screw rod (600), the knob comprising a pair of pins (512) such that the pins interact with the at least one detent in the channel when the knob is rotated (para. [0113-0114]).
However, Fuller fails to disclose an external cap thread positioned at the tip end; and a rounded applicator tip positioned at the tip end.
Themak teaches a similar device in the same field of endeavor with an external cap thread (4) positioned at the tip end (fig. 1); and a rounded applicator tip (11) positioned at the tip end (fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the flat circular tip end of Fuller and incorporate the rounded tip end of Themak yielding predictable results namely, a tip wherein the topical medication is pushed through the aperture(s). MPEP 2143.
Regarding claim 14, the combination of Fuller and Themak discloses the device of claim 13. Fuller further discloses wherein the graduated dose dispenser and applicator is designed to dispense an exact amount of product per one-half rotation of the knob (each rotation, whether half or full or a quarter turn disposes the same incremental dosage, para. [0111, 0114, 0116]).
Regarding claim 15, the combination of Fuller and Themak discloses the device of claim 14. Fuller further discloses wherein the at least one detent (224) is two detents which are located 180 degrees apart (figs. 11A, 11B) so as to catch at least one of the pair of pins (512) when rotating the knob.
Regarding claim 16, the combination of Fuller and Themak discloses the device of claim 15. Fuller further discloses wherein the pair of pins (512) are located 180 degrees apart such that each of the two detents (224) catches one pin of the pair of pins (para. [0113]).
Regarding claim 17, the combination of Fuller and Themak discloses the device of claim 13. Fuller further discloses wherein the plunger (700) further comprises a lip (704) configured to press against an interior surface of the body to accurately dispense a topical medication (para. [0090]).
Regarding claim 18, the combination of Fuller and Themak discloses the device of claim 18. Fuller further discloses a cap (800). However, Fuller fails to disclose the cap including an internal thread configured to mate with the external cap thread on the body.
Themak teaches a cap (5) including an internal thread (6) configured to mate with the external cap thread (4) on the body.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Fuller and incorporate the cap threaded configuration of Themak to create a tight threaded seal around the tip end (column 1 lines 27-44). Further, Fuller already discloses a cap with a snap fitting, so replacing the snap fitting with a threaded fitting would have been an obvious modification yielding predictable results, namely a secured cap to the applicator’s body.
Regarding claim 19, the combination of Fuller and Themak discloses the device of claim 18. However, the combination fails to disclose wherein the external and internal threads are 22-400 plastic bottle threads.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Fuller to have a 22-400 plastic thread since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Fuller would not operate differently with the claimed 22-400 thread, and a contained medication would still dispense at a desired amount.
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 ERIN A KIM whose telephone number is (703)756-4738. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca Eisenberg can be reached at (571) 270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIN A KIM/Examiner, Art Unit 3781
/SUSAN S SU/Primary Examiner, Art Unit 3781 8 June 2026
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