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Claims 1-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 3, 2026.
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 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.
Claim limitation(s) which are interpreted under 112(f) is/are:
“switching means” in claim 25. This limitation is interpreted to mean a three-way solenoid or two two-way solenoids, as discussed in paragraph 93 of the published application, and functional equivalents thereof.
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 23 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.
Claim 23 recites the limitation "the breast shield" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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)(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) 22 and 25 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Honer (US 20220409782).
Regarding claim 22, Honer discloses a method of operating a breast pump, comprising:
switching the breast pump to a first mode (fig. 1 shows the “first mode”) and using an air pump (vacuum pump 26 in fig. 1) to generate a base level vacuum along a first channel (see below; paragraph 51 discloses with the valve 28 in the position shown in fig. 1, the vacuum pump generates a vacuum in the inner chamber 15 to a predetermined level; paragraph 55 discloses the valve can be switched back to the position shown in fig. 1); and
switching the breast pump to a second mode (fig. 2 shows the “second mode”) and using the air pump to generate a pumping vacuum along a second channel (see below; paragraph 52 discloses switching the valve 28 to the position shown in fig. 2 so that the vacuum pump 26 produces a vacuum in the outer chamber 16).
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Regarding claim 25, Honer discloses a switching means is used to switch the breast pump between the first and second mode (this limitation is interpreted to mean a solenoid and functional equivalents thereof; valve 28 is considered an “equivalent” of a three-way solenoid since it provides a valving function which switches between the first mode, second mode and an “off” mode as shown in figs. 1-3).
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.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Honer, as applied to claim 22 above, and further in view of Quackenbush (US 20220378989).
Regarding claim 23, Honer discloses all of the claimed limitations set forth in claim 22, as discussed above, and further discloses the first channel comprises a longitudinal path for receiving breast milk from the breast shield (see below) and the second channel comprises a path extending outwardly from the breast shield (see below).
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However, Honer does not teach or disclose the path of the second channel to be a radial path.
Quackenbush teaches a substantially similar arrangement (fig. 1A) comprising a longitudinal port for receiving breast milk from the breast shield (see below) and a radial path extending outwardly from the breast shield (port 30 in fig. 1A, see below).
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Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the path of the second channel of Honer to be a radial path, as taught by Quackenbush, since it has been held that a mere rearrangement of the essential working parts of a device involves only routine skill in the art and doing so would not have modified operation of the device. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Quackenbush teaches that modifying the angle of the path of Honer would not affect operation of the device since a vacuum line would still be able to be connected to a radial path so that modified Honer would operate as intended with the claimed radial path.
Claim(s) 24 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Honer, as applied to claim 22 above, and further in view of McKendry (US 20030236491).
Regarding claim 24, Honer discloses all of the claimed limitations set forth in claim 22, as discussed above, and further discloses a second diaphragm delivers the pumping vacuum (paragraph 48 discloses that inner liner 12, equated to the second diaphragm, delivers the pumping vacuum to the nipple). However, Honer does not teach or disclose a first diaphragm delivers the base level vacuum.
McKendry is directed towards a breast pump (fig. 1) comprising a vacuum pump (vacuum generator 50 in fig. 5) which can be a diaphragm pump (paragraph 22), which is understood to comprise a diaphragm. Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the vacuum pump of Honer (vacuum pump 26 in fig. 1) to be a diaphragm pump so that the diaphragm of the diaphragm pump delivers the base level vacuum to the reservoir and first channel, as taught by McKendry since McKendry teaches that this is a type of vacuum generator useful in a breast pump (paragraph 22).
Regarding claim 26, Honer discloses all of the claimed limitations set forth in claim 22, but does not teach or disclose a non-transitory computer readable medium comprising computer executable instructions which, when executed by a processor, cause the processor to perform the method of claim 22.
McKendry teaches a similar system and method for operating a breast pump (fig. 1) comprising a valve controller (fig. 6) which can control opening and closing of the valves (valves 62 and 64 in fig. 5) to operate the pump in different modes (paragraph 24 discloses opening/closing valves to selectively provide alternating vacuum and atmosphere to the breast pump). McKendry teaches a non-transitory computer readable medium comprising computer executable instructions which, when executed by a processor, cause the processor to operate in the different modes (paragraphs 26 and 27 discloses a CPU 70 which is programmed by instructions stored in a ROM and which controls opening/closing of valves 62 and 64).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified Honer to comprise a non-transitory computer readable medium comprising computer executable instructions which, when executed by a processor, cause the processor to perform the method of claim 22, as taught by McKendry, in order to automate the method of Honer.
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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/COURTNEY FREDRICKSON/ Primary Examiner, Art Unit 3783
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