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 .
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 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; or
(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.
Claims 1-2, 8, 11-12, 15 and 18-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bochenko et al. (“Bochenko”)(US 2012/0323208 A1).
Bochenko (fig. 10) teaches a smart syringe system and method for dispensing liquid medicines comprising:
(re: base claim 1) a prescription code scanner (104) configured to identify a medicine dosage by scanning a unique prescription code (para. 63 teaching scanner 104 for reading ID code; para. 48-55 teaching scannable ID code 102 that is optically detectable and may contain dosage form and instructions for specific patients as supplied by pharmacy/healthcare professional);
a control circuit configured to receive the identified medicine dosage from the prescription code scanner and control a dispensed volume of liquid medicine based on the received dosage (para. 63-64, 81-82 teaching that scanner 104 transfers ID code 102 and related data—including patient specific information such as dosing limits--to processing elements to monitor and measure fluid transfer, wherein volume/flow sensor 118 measures flow of medication and outputs volumes to user display); and
a fluid volume display configured to display the dispensed volume (fig. 10 showing user interface 130 that displays “Syringe Fill Vol.” and “Pt. Does Vol.”; para. 81-82);
(re: claim 2) wherein the prescription code scanner optically scans and decodes the unique prescription code imprinted on a medicine label (para. 48-55 and 63);
(re: claim 8) a power button (115) interfacing with the control circuit for manual powering on/off of the syringe.
(re: claims 11, 12, 15 and 18-19) The claimed method steps are performed in the normal operation of the system cited above.
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 of this title, 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.
Claims 3, 4, 7 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bochenko et al. (“Bochenko”)(US 2012/0323208 A1) in view of Broselow (US 2018/0154088).
Bochenko as set forth above teaches all that is claimed except for expressly teaching
(re: claims 3, 13) a nozzle for holding dispensed liquid medicine, the nozzle covered by a detachable tip;
(re: claims 4, 14) a non-return valve for sealing the nozzle when detached and automatically released when the nozzle is attached for fluid dispensing;
(re: claim 7) a physical fluid volume gauge allowing visual verification of digitally measured dispensed amounts.
Bochenko, however, already teaches that it is well-known in the automated syringe arts to integrate protective caps/detachable tips onto the input/output end of fluid handling elements to ensure that the fluid transfer path is sterile (fig. 6 near 24, 28; para. 71) as well as directional check-valves to prevent the backflow during fluid transfer (fig. 5 showing check valve 120; para. 70).
Broselow further teaches that it is well-known to integrate provide visual markers in the syringe system to allow real-time visual verification of the volume of fluid flows (fig. 6 near 42; para. 36).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in the prior art itself as cited above and from an analysis of the prior art teachings that demonstrates that the modification to arrive at the claimed invention would merely involve the substitution/addition of well-known elements (e.g., directional valves or visual markings) with no change in their respective functions. Moreover, the use of prior art elements according to their known functions is a predictable variation that would yield predictable results (e.g., benefit produced by known function), and thus cannot be regarded as a non-obvious modification when the modification is already commonly implemented in the relevant prior art. See also MPEP 2143.I (teaching that simple substitution of one known element for another to obtain predictable results is known to one with ordinary skill in the art); 2144.06, 2144.07 (teaching as obvious the use of art recognized equivalences). Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Bochenko for the reasons set forth above.
Allowable Subject Matter
Claims 5-6, 9-10 and 16-17 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.
Conclusion
Any references not explicitly discussed above but made of record are regarded as helpful in establishing the state of the prior art and are thus considered relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
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February 5, 2026