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 .
Amendment received on January 22, 2026 has been acknowledged. Claims 1-4, 14-15 have been cancelled. Claims 20-24 have been added. Therefore, claims 5-13, 16-24 are pending.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “terminal distal end” in claims 20-22; the “first external diameter”, the “second external diameter”, and the “third external diameter” in claims 20 and 22 must be shown or the feature(s) canceled from the claim(s). Furthermore, the drawings do not adequately show a “circumferential depression (42)”. Paragraph [55] of the disclosure says the depression causes the discharge part (14) to widen in both directions. However, all of the drawings only show the discharge part widens in one direction. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 5-7, 10-12, 19 are rejected under 35 U.S.C. 102(s)(2) as being anticipated by Ciezarek (US 2025/0162769).
Regarding claim 5, Ciezarek teaches a fluid dispenser (1, Fig 1-8), the fluid dispenser comprising a fluid store (2); a delivery opening (space taken by 10 in Fig 1) through which fluid is discharged to the environment (via 5) in a delivery direction (F); and a housing component (15) penetrated by a delivery opening and having a delivery structure (6) adjoining the delivery opening (as shown in Fig 1) and surrounding a discharge path (5), for influencing a delivery characteristic (¶[55-56]), the delivery structure having a circumferential depression, on an outside thereof (¶[51-53], also shown in Fig 1, as a depression is formed between an upper end of 17 joins an lower end of 15).
Ciezarek further teaches in claim 6 wherein the fluid dispenser is configured as a droplet dispenser (¶[21]); and the delivery structure comprises a droplet formation surface (16; ¶[48-49]) on which droplet formation surface fluid discharged through the discharge opening adheres to form a droplet until the droplet detaches under force of gravity (¶56]);
in claim 7 wherein the droplet formation surface is delimited on an outside by a tear-off edge (end surface of 17 in Fig 1), wherein the tear-off edge is formed with a curvature radius of more than 0.05mm (as shown in Fig 1, end surface of 17 is rounded and although no dimension is disclosed, the curvature of radius of 17 has to be more than 0.05 mm);
in claim 10 wherein the fluid dispenser has a removable and refittable protective cap (4; ¶[45]) covering the delivery opening when fitted (as shown in Fig 8); and the protective cap has an inwardly pointing widening structure (portion of cap 4 in contact with 6, Fig 8) lying against an inside of the delivery structure when the protective cap is fitted (as shown in Fig 8);
in claim 11 wherein the delivery opening and/or the delivery structure has a shape deviating from rotational symmetry (¶[49]);
in claim 12 wherein the fluid dispenser is configured as a squeeze bottle dispenser and has as a fluid dispenser a squeeze bottle compressible manually for delivery purposes (¶[43]); and
in claim 19 (interpreted as product-by-process claim) wherein the protective cap is formed as a screw cap (¶[45]; Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985.) (See MPEP 2113).
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.
Claim(s) 8-9, 13, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ciezarek.
Regarding claim 8-9, Ciezarek further teaches in claim 8 wherein the delivery structure has on the outside an external widening region (near 17), and in claim 9 wherein the delivery structure has on an inside an internal widening region (16), the internal widening region widening in the delivery direction (¶[48]).
Ciezarek is silent wherein the external widening region widening continuously in the delivery direction. Instead, Ciezarek teaches the opposite (Fig 1).
At the time the invention was made, it would have been obvious matter of design choice to a person of ordinary skill in the art to use a continuously widening external widening region. Applicant has not disclosed the continuously widening external widening region provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Ciezarek and the applicant’s external widening region to perform equally well because both types of chambers are equally capable of dispensing droplets.
Accordingly, it would have been obvious one of ordinary skill in the art at the effective filing date of the claimed invention to modify Ciezarek to obtain the invention as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Ciezarek.
Regarding claims 13 and 16, Ciezarek further teaches in wherein the fluid store is filled with a pharmaceutical fluid (¶[45]). Ciezarek is silent wherein the fluid store has an internal volume of less than 200 ml and wherein the drop formation surface has an outer diameter of at least 1 mm and /or at most 3 mm (no dimensions disclosed or scale in Fig 1).
The Federal Circuit has 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. MPEP 2144.04 (IV)(A) (discussing Gardner v. Tec Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Ciezarek’s device to have any suitable dimensions, including those claimed. Applicant appears to have placed no criticality on any particular fluid store volume or drop formation surface diameter (see Specification) and it appears that Ciezarek’s device would work equally well.
Response to Arguments
Applicant's arguments filed on January 22, 2026 have been fully considered but they are not persuasive. Applicant asserts that Ciezarek does not teach the limitations as recited in the claim 5, specifically, a circumferential depression. Examiner disagrees. Claim 5, as currently submitted, is not very clear and ambiguous. For example, in line 10, the term “an outside” is perhaps the wrong word used in that context. Does Applicant mean “outside or exterior surface”? Normally, “outside” is more thought of as being outside (i.e., being in nature). There is no further limitation on how the depression influences a delivery characteristic, nor anything to define and emphasize the criticality of this circumferential depression in relation to the delivery opening. While the disclosure provides definition for said “depression”, there are not enough details to provide a clear picture (see drawing objection supra). Therefore, due to those factors, claim 5 does not distinguish satisfactorily from Ciezarek. Accordingly, claim 5 must remain rejected and further clarification is highly recommended.
Allowable Subject Matter
Claims 17-18, 20-21 are 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.
Claims 22-24 are allowed.
The following is a statement of reasons for allowance: claim 22 is allowed primarily because the prior art of record cannot anticipate Applicant’s claimed invention by a single reference nor render Applicant’s claimed invention obvious by the combination of more than one reference.
The prior art of record, Cierzarek (US 2025/0162769), does not teach “a third external diameter transverse to the central axis of the delivery opening, the third external diameter at the depression being disposed axially between the first and second external diameters and the first and second external diameters both being greater than the third external diameter” as within the context of the claimed invention as disclosed and within the context of the other limitations present in claim 22.
Therefore, the prior art of record cannot anticipate Applicant’s claimed invention by a single reference nor render Applicant’s claimed invention obvious by the combination of more than one reference.
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
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 JENNIFER C CHIANG whose telephone number is (571)270-5613. The examiner can normally be reached Mon-Fri 10 AM- 6 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Paul Durand can be reached at (571) 272-4459. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER C CHIANG/Primary Examiner, Art Unit 3754
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