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 .
Applicant’s filing of claims 1-10 on 3/6/24 is acknowledged. Claims 1-10 are pending and are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/6/24 was acknowledged. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The Office asserts that terms and phrases like “configured to” and “wherein” constitute recitations of intended use language for purposes of examination. The Office asserts that in the examined claims reciting such “configured to” language, the claim language that follows such recitations does not necessarily denote structure MPEP 2173.05(g). The functional limitation was evaluated and considered, for what it fairly conveys to a person of ordinary skill in the art. Similarly, a “wherein” clause may have a limiting effect on a claim if the language limits the claim to a particular structure. MPEP 2111.04. The determination of whether a “wherein” clause is a limitation in a claim depends on the specific facts of the case. While all words in each claim are considered in judging the patentability of the claim language, including functional claim limitations, not all limitations provide a patentable distinction.
During patent examination, the examined claims must be given their broadest reasonable interpretation consistent with the specification, unless a term has been given a special definition in the specification (“BRI”). See MPEP 2111.
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.
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.
Claims 1 and 3-9 are rejected because it is unclear how the claimed functions of the processing device and the claim language following, “in a case where,” structurally further define the claimed dispensing apparatus. Because claims 1 and 3-9 are directed to a “device,” i.e., a structure, the limitations of the claims serve to further define the structure. Thus, it is unclear how the claimed functions of the processing device and the claim language following, “in a case where,” structurally further define the claimed invention.
Claim 10 is rejected because “by the processing device” after “comprising:” is unclear.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shibahara et al. (“Shibahara,” WO 2019/150757 A1) in view of Nishimura et al. (“Nishimura,” US Pub. No. 2018/0038879).
As to claims 1 and 10, Shibahara discloses a dispensing device configured to dispense a liquid, the device comprising: a piston (108); a first drive device (motor 102) that drives the piston; a block (tip detaching part 111 has a through hole) having a first orifice and a second orifice that are able to be fitted to the tip mounting part; a pump (See piston 108 and piston receiving portion 109) connected to the first orifice and the second orifice; and a second drive device (motor 112) that varies a relative position between the syringe and the block, wherein a processing device (control PC 901) drives the second drive device to fit the tip mounting part and the first orifice to each other. See claim interpretation above. The control PC is capable of performing the claimed functions, e.g., drives the second drive device and identifies.
Regarding claims 1 and 10, Shibahara does not specifically disclose a syringe and a pressure sensor, and a processing device that processes a detection signal of the pressure measured by the pressure sensor. Nishimura discloses a syringe 107 in e.g., [0027] et seq., a pressure sensor 152 in [0047] et seq., and a pressure detection circuit 153 in e.g., [0047] et seq. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the syringe, pressure sensor and processing device associated with pressure sensor because it would help improve the dispensing accuracy of the apparatus. See also MPEP 2112.02 for claim 10.
As to claim 2, Shibahara in combination with Nishimura disclose the elastic member passes through the first orifice when the tip mounting part and the first orifice are fitted to each other, and is brought into close contact with the second orifice when the tip mounting part and the second orifice are fitted to each other. See Nishimura’s syringe pump in e.g., [0027] et seq.
As to claim 3-9, Shibahara in combination with Nishimura disclose the functions of the processing device. See 112 rejection and claim interpretation above.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/688807. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims and the examined claims comprise substantially the same subject matter. For example, copending claim 1 and examined claim 1 comprise a dispensing apparatus (or “device”) configured to dispense a liquid, the apparatus comprising: a piston; a first drive device that drives the piston; a syringe that has a tip mounting unit to which a dispensing tip is attached and receives the piston; a pressure sensor that measures pressure in the syringe; a processing device that processes a detection signal of the pressure measured by the pressure sensor; a block that has a hole to which the tip mounting unit is able to be fitted; and a second drive device that varies a relative position between the syringe and the block, wherein the processing device drives the second drive device to fit the tip mounting unit and the hole to each other and seal up an interior of the syringe, applies positive pressure or negative pressure into the syringe, and calculates a correction value for a dispensing command value associated with a drive amount of the first drive device based on the pressure in the syringe after the positive pressure or the negative pressure is applied. The claimed functions of the processing device are considered functional claim language, and thus, the copending and examined processing device are considered substantially the same subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORE RAMILLANO JARRETT whose telephone number is (571)272-7420. The examiner can normally be reached Monday to Friday.
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, Lyle Alexander can be reached at 571-272-1254.
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/LORE R JARRETT/Primary Examiner, Art Unit 1797
9/19/2026
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