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
Applicant’s election without traverse of claims 1-5, 7, 9, and 10 in the reply filed on 05/20/2026 is acknowledged.
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 7 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 7 is dependent on non-elected claim 6, which renders the claim indefinite. The claim will be examined as depending on independent claim 1.
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 1, 9, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burgess et al. US Patent Application Publication 2010/0221838.
As to claim 1, Burgess teaches an adapter 106 for use in facilitating dissolution (para. 0029), the adapter comprising:
a container body 108; and a cavity 120 that is operative to contain a suspension 112 disposed in the container body 108 (Fig. 5; paras. 0037-0038);
where the cavity 120 comprises a conical section that protrudes into the container body 108 (Fig. 5; para. 0037); or where the cavity comprises a partial ellipsoidal shape that protrudes into the container body – this portion of the claim is in the alternative, and Applicant has elected a conical shape instead of an ellipsoidal shape.
As to claim 9, the adapter of Claim 1, further comprising a die that is disposed on an opening of the cavity – where Burgess teaches a cell holding cap and O-rings (not shown) are used to fix the sample holder and filter system 110 within the flow-through cell (para. 0037).
As to claim 10, the adapter of Claim 1, where an outer periphery of the container body 108 is a square, a rectangle, an ellipsoid, a circle, a triangle, a polygon, or a combination thereof (Fig. 5).
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.
Claims 2-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Burgess et al. US Patent Application Publication 2010/0221838.
As to claims 2-4, Burgess teaches a conical section (Fig. 5; para. 0037), but does not specifically teach the claimed dimensions of the conical section. However, Burgess teaches the dimensions of the adapter cell design can be varied to correspond with the dimensions of other sizes of sample holders and are simply adjusted accordingly based on the size of the desired sample holder (para. 0035). This indicates the sample holder body size, including the angle of the conical portion may vary in size. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
As to claims 5 and 7, Burgess does not specifically teach the thickness and outer diameter periphery of the container body 108. Burgess does teach the adapter cell is configured for use in conjunction with the standard 22.6 mm diameter sample holder cells for the USP dissolution apparatus 4 (para. 0035), which indicates the outer diameter periphery of the circular container body is at least 22.6 mm, which meets the claimed outer diameter periphery of about 15 to about 26 millimeters. As to the thickness of the periphery, Burgess teaches the dimensions of the adapter cell design can be varied to correspond with the dimensions of other sizes of sample holders and are simply adjusted accordingly based on the size of the desired sample holder (para. 0035). This indicates the sample holder body size, including the thickness of the periphery may vary in size. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE F STEPHENS whose telephone number is (571)272-4937. The examiner can normally be reached 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at 571-272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACQUELINE F STEPHENS/ Primary Examiner, Art Unit 3781
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