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
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected methods, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 7/17/26. The traversal is on the grounds that “Examining all of the claims together would eliminate the necessity of prosecuting multiple, separate, yet intimately related applications”. This argument is not found persuasive as the different groups of inventions as claimed are distinct as pointed out in the previous Restriction requirement. Furthermore, there is no mention in the MPEP of what constitutes “separate, yet intimately related applications”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claims 1-10 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.
Claim 1 recites the limitation "the barrel lumen" in line 2, “the lumen of the barrel” in line 6, and “the lumen” in line 7. There is insufficient antecedent basis for each of these limitations in the claim. The examiner notes that it is possible for a barrel to have more than lumen depending on an interior structure of the barrel and therefore it is not inherent/a sure thing that a barrel has only a single lumen.
Claim 1 recites the limitation "the distal end of the lumen" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the proximal end of the lumen" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-10 are rejected as they depend from a rejected claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peliks (US 11,471,606 B1).
As to claim 1, Peliks discloses a syringe assembly (1; see Fig. 1) comprising:
a) a barrel (5) comprising a barrel key (barrel thread face 19a or 19b) located within the barrel lumen at a proximal end of the barrel (see Fig. 2b, 2c, para beginning line 33 col. 5);
b) a plunger (8) comprising at least one teeth section structure (20a and/or 20b) and at least one flat section structure (21a) (see Fig. 3a, 3c, lines 1-2 of col. 8);
wherein the plunger is lockable along the lumen of the barrel between the distal end of the lumen and the proximal end of the lumen by positioning the barrel key between two teeth or between a tooth and an edge (in the engaged position, plunger thread face 20a and/or 20b engaged within barrel thread face 19a or 19b and are locked in that plunger cannot be adjusted significantly without rotating 8 – see para beginning line 64 col. 1 and para beginning line 37 col. 20); and
wherein the plunger is unlockable by moving a flat section of the plunger to face or be adjacent to the barrel key (Fig. 21c, para beginning line 37 col. 20).
As to claim 2, Peliks discloses the syringe assembly of claim 1, wherein the teeth section structure comprises multiple teeth (see Figs. 2b, 21a-21f).
As to claim 3, Peliks discloses syringe assembly of Claim 1, wherein the teeth section structure comprises an edge structure (absent any further limitations on what constitutes an edge structure, the shape/curvature of a distal/proximal most tooth of 20a and/or 20b interpreted as an “edge structure”).
As to claim 4, Peliks discloses the syringe assembly of Claim 1, wherein the teeth section structure comprises multiple teeth (see Figs. 2b, 21a-21f) and at least one edge structure (absent any further limitations on what constitutes an edge structure, the shape/curvature of a distal/proximal most tooth of 20a and/or 20b interpreted as an “edge structure”).
As to claim 5, Peliks discloses the syringe assembly of Claim 1, wherein the teeth section structure comprises multiple teeth (see Figs. 2b, 21a-21f) and a proximal edge structure (absent any further limitations on what constitutes an edge structure, the shape/curvature of a proximal most tooth of 20a and/or 20b interpreted as an “edge structure”) and a distal edge structure (absent any further limitations on what constitutes an edge structure, the shape/curvature of a distal most tooth of 20a and/or 20b interpreted as an “edge structure”).
As to claim 6, Peliks discloses the syringe assembly of Claim 1, wherein the plunger comprises two teeth section structures (20a and 20b).
As to claim 7, Peliks discloses the syringe assembly of Claim 1, wherein the barrel comprises indicia (14; see Fig. 1, para beginning line 38 col. 4).
As to claim 8, Peliks discloses the syringe assembly of Claim 1, wherein the barrel further comprises a distal inlet/outlet port (nozzle 4; see Fig. 1).
As to claim 9, Peliks discloses the syringe assembly of Claim 8, wherein an article (needle tube 16) is attached to the distal inlet/outlet port (see Fig. 11, para beginning line 15 col. 15).
As to claim 10, Peliks discloses the syringe assembly of Claim 9, wherein the article is a catheter, tubing, a needle or a medical device (16 is a needle or a tube; see para beginning line 15 col. 15).
Double Patenting
Claims 1-10 of this application is patentably indistinct from claims 1-10 of Application No. 19155065. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-10 provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of copending Application No. 19155065 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James D Ponton whose telephone number is (571)272-1001. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chelsea Stinson can be reached at 571-270-1744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James D Ponton/Primary Examiner, Art Unit 3783
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