DETAILED ACTION
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 1-6 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. Claim 1, line 12 states “which the balloon body is housed placed with fixing the balloon valve” (emphasis added). The claim appears to use somewhat repetitive and difficult to interpret language. Is applicant trying to say “which the balloon body is placed while fixing the balloon valve in a state of being inserted therethrough when the balloon case is closed” (see claim 7 using this language)? In any event, applicant should clarify this language.
Claims 2 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 2, line 5 states “the placed balloon case”. The phrase does not have proper antecedent basis.
Claims 3 and 4 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. Claim 3 claims the specifics of the balloon valve as being made of resin. However, looking back at claim 1, the preamble of claim 1 and the body of claim 1 never actually require the balloon body and subsequent balloon valve. That is, claim 1 is geared toward the “gas injection apparatus” that fills the balloon body. Restated, the claim limitations of claim 3 extend beyond both the scope of the preamble of claim 1 and the positive elements required by claim 1 (noting the last line of claim 1 appears to positively require “the balloon body”, so it is possible just the preamble needs to be amended). In any event, applicant should amend claim 1 to make it absolutely clear that “the balloon body” is required for claim 1. If this amendment is made to claim 1, then applicant can subsequently claim the specifics of the balloon valve, a part of the balloon body, in claim 3.
Claims 5 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 5, line 11 states “the pair of case pieces”. This phrase has no proper antecedent basis. Claim 5, line 7 states “the opposing positions”. This phrase also has no proper antecedent basis.
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. The preamble of claim 7 claims “a balloon”, but it is clear that the claims encompass more than just the balloon. For example, the claim encompasses a balloon body and a balloon case. As such, claim 7 is indefinite because the body of the claim goes beyond the scope of the preamble. The Examiner suggests that the preamble of claim 7 be corrected.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon (US Pub. No. 2018/0025574 A1).
Regarding claim 1, Jeon discloses a gas injection apparatus for injecting gas into a balloon body from a balloon valve connected to a gas injection pipe part of the balloon body (see abstract) comprising: a nozzle for being inserted into the balloon valve and injecting gas into the balloon body (Fig. 3, item 48A and par. [0039]), a valve mechanism for opening and closing a gas flow path to the nozzle (par. [0040] and [0045]; noting a “valve mechanism” is obvious because the controller and start and stop the flow of gas), a drive mechanism for moving the nozzle forward and backward (par. [0038]; noting no direction is assigned within the claim body, so “forward” can be “upward”, and “backward” can be “downward”), a balloon case placing section (Fig. 4, proximate item 54) having a flat bottom surface (Fig. 3, proximate item 48) and capable of fixing an open end of the balloon valve in a direction opposite to the forward movement direction of the nozzle by making a balloon case in which the balloon body is (Fig. 6; noting this is clearly seen); and a control unit for controlling the drive mechanism and the valve mechanism (par. [0045]), wherein the control unit moves the nozzle forward in response to a start instruction (par. [0056]), and injects gas into the balloon body (par. [0045]). It is noted that Jeon does not specifically disclose that the controller inserts the nozzle into the balloon valve to tightly contact with each other without clearance. However, with regards to this limitation, the Examiner takes a dual rejection. First, it has been that the omission of an element and its function is obvious if the function of the element is not desired. Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). Here, the user already inserts the nozzle into the balloon valve to tightly contact with each other without clearance (par. [0054]). As such, the need for controller to move nozzle into contact with the ballon valve is not needed or desired. As such, it would be obvious to omit this element as it is not needed or desired. Second, it has been held that providing an automatic or mechanical means to replace a manual activity which accomplishes the same result is not sufficient to distinguish it over the prior art. See In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). As such, having the controller move the nozzle into contact with the balloon valve would merely be automation of a manual activity and thus would not distinguish over the prior art.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Jeon (US Pub. No. 2018/0025574 A1) in view of Boise et al. (herein “Boise”; US Pub. No. 2008/0121309 A1).
Regarding claim 3, Jeon discloses that an opening part of the balloon valve is formed in a pipe made of resin (par. [0046]), and a tip part of the nozzle is formed of a body having a convergent slope (Fig. 4, item 48A; clearly showing a convergent slope). It is noted that Jeon does not specifically disclose that the nozzle is rubbery. However, Jeon discloses some nozzle tip that would be made of some inherent material (Fig. 4, item 48A). In addition, Boise discloses a nozzle for filling balloons wherein the nozzle is made of rubber (claim 42). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Jeon to use a rubber nozzle as taught by Boise because doing so would be a simple substitution of one element (rubber) for another (some inherent material) to obtain predictable results (the continued ability to make a nozzle for filling balloons out of an inherent material, the inherent material being rubber).
Regarding claim 4, the combined Jeon and Boise disclose an elastic member suppresses sliding of the tip part of the nozzle in a configuration (Jeon: Fig. 6, item 60; noting broadly speaking, item 60 works in concert with item 54 to prevent the tip of the nozzle from separating from the balloon valve; and noting that the solenoid can be considered “elastic” because it can move back and forth; noting “elastic” is defined by merriam-webster.com as “capable of ready change or easy expansion or contraction”).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Jeon (US Pub. No. 2018/0025574 A1) in view of Frazier et al. (herein “Frazier”; US Pub. No. 2015/0283473 A1).
Regarding claim 6, Jeon discloses that the valve mechanism comprises a first valve for opening and closing a flow path of a first gas (par. [0045]; noting a valve is obvious given the ability to stop and start the injection of gas), the control unit injects the first gas into the balloon body for a predetermined time by opening and closing the first valve (par. [0045]; noting this is obvious). It is noted that Jeon does not specifically disclose a second valve for opening and closing a flow path of a second gas, and injects the second gas into the balloon body up to a predetermined pressure by opening and close the second valve. However, regarding using a second valve and gas source, it has been held that the duplication of parts is not given patentable weight unless a new and unexpected result is produced. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing that using a second gas source with a second valve would not produce new and expected results: that is, the second valve and gas source would inflate the balloon much like the first. Finally, it is noted that Jeon does not disclose use a second gas having a pressure lower than that of the first gas and injecting the second gas after the injection of the first gas. However, Frazier makes obvious the ability to use a low pressure system after a high pressure system to ensure that inflation of the balloon and to counteract film stretch, leakage around the nozzle, etc. (par. [0031]). Thus, it would have been obvious to a person of ordinary skill in the art at the time of filing to modify Jeon to make the second gas having a pressure lower than that of the first gas and injecting the second gas after the injection of the first gas as taught and suggested by Frazier because doing so would be use of a known technique (inflating a balloon at a lower pressure after inflation by a higher pressure) to improve a similar product (an inflation machine that can obviously have two gas sources) in the same way (inflating a balloon at a lower pressure with a second gas source after inflation by a higher pressure with a first gas source).
Allowable Subject Matter
Claims 2 and 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding the indicated allowable subject matter above, Jeon US Pub. No. 2018/0025574 A1 is the closest prior art in an area that does not have a lot of prior art (i.e. balloon inflation by machine using a balloon within a case). In addition, Jeon is both the inventor in the cited prior art, and the inventor of the current application. With regards to claim 2, Jeon uses a protruding/projection part (Fig. 6, item 54) that fits around the stem valve of the balloon to fix the balloon in place. As such, and as required by claim 2, the protruding/projection part is not “inserted…into a finger insertion part of the balloon case” with the “projection part fix[ing] the placed ballon case”. With regards to claim 5, the nozzle device does not interact with the balloon case so that “the balloon case can be opened by inserting the wedge-shaped boy into the unfold opening when the pair of cases pieces constituting the balloon case is closed”. Rather, the case opens due to the pressure caused by the inflation of the balloon (see par. [0057]). With regards to claim 7, the Examiner believes applicant is claiming a sub-combination of the current invention directed at the combined balloon case and balloon body. The allowable limitations of claim 7 for the sub-combination are consistent with that of claim 5 for the combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW BRIAN STANCZAK whose telephone number is (571)270-7831. The examiner can normally be reached on 8:30-10 and 1-3:30 M-F.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eugene Kim can be reached on (571)272-4463. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW B STANCZAK/
Examiner, Art Unit 3711
11/6/25
/EUGENE L KIM/Supervisory Patent Examiner, Art Unit 3711