DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Claim Objections
Claim 1 is objected to because of the following informalities:
line 5 should be amended to -second section being suitable to receive the outer barrel of [[a]] the prefilled syringe-.
Line 12 should be amended to - diameter than the first proximal hollow cavity, said second distal hollow cavity being-.
Lines 18-20 should be amended to - a spring having a first proximal end and a second distal end, said first proximal end being rigidly attached to the distal end of the spring support cap and said second proximal end being-. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: line 3 should be amended to - the distal end of the outer barrel is at least as long as the outer barrel of the prefilled syringe-. Appropriate correction is required. However, the applicant should note that this amendment may change depending on the 35 USC 112(b) rejection of claim 1 referring to the outer barrel of the prefilled syringe.
Claim 9 is objected to because of the following informalities: line 3 should be amended to - internal diameter larger than the diameter of the radially extending lip of [[a]] the prefilled syringe-. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: line 3 should be amended to - in that, the diameter of the inner plunger is smaller than the inner diameter of the outer barrel of [[a]] the prefilled syringe-. Appropriate correction is required. However, the applicant should note that this amendment may change depending on the 35 USC 112(b) rejection of claim 1 referring to the outer barrel of the prefilled syringe.
Claim 13 is objected to because of the following informalities: line 3 should be amended to - receive the proximal end of a plunger of [[a]] the prefilled syringe-. Appropriate correction is required.
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 1-15 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.
Regarding claim 1:
The limitation “said second section being suitable to receive the outer barrel of a prefilled syringe” (emphasis added by the examiner) in line 5 is unclear. The term “the outer barrel” in line 5 is unclear because it refers to the “outer barrel” in line 2 however these two “outer barrels” are different structures. The outer barrel in line 2 refers to the structure 2 in applicants figures while the second “outer barrel” of line 5 refers to the barrel of the prefilled syringe. For the sake of examination, the office has assumed that the outer barrel of line 5 refers to a different outer barrel than the one established in line 2 however the applicant should amend the claim to clarify. Also, the applicant should note that the term seems to be used through out the dependent claims to refer to the barrel of line 2 and the barrel of line 5.
The limitation “a rear extension extending rearwards from a proximal end of the retraction piece” in line 8 is unclear. This limitation is unclear since the “rear extension: is part of the retraction piece however the limitation proceeds to define the extension of the rear extension relative to the retraction piece. In short, the rear extension is defined relative to itself making the limitation unclear. For the sake of examination, the office has assumed that the rear extension extends from the second or first radially extending lip.
The claim recites the limitation "the proximal end" in line 15. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-15 are rejected due to their dependence on claim 1.
Regarding claim 3:
The claim recites the limitation "the outer diameter" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The limitation “the radially extending lips” in line 3 is unclear. The limitation is unclear because only one “radially extending lip” is established in line 3 claim 1 (on which this claim depends) raising a question of if a plurality is required or only one. For the sake of examination, the office has assumed that only one lip is required by the claim however the applicant should amend claim 3 to clarify.
Regarding claim 4:
The claim recites the limitation "the first section" in line 2. There is insufficient antecedent basis for this limitation in the claim.
The limitation “the distal end” in line 3 is unclear. Its unclear if this refers to the distal end established in claim 1 or a new distal end as indicated in lines 4 and 5 of claim 4. For the sake of examination, the office has assumed that this refers to a new distal end of the first section however the applicant should amend the claim to clarify.
Claims 4-7, 10 and 15 are rejected due to their dependence on claim 4.
Regarding claim 6:
The limitation “which groove is complimentary to the bendable tabs” (emphasis added by the examiner) in line 3 is unclear. It’s unclear if this limitation is establishing a new groove or if it refers to the groove established in line 2 and 3 of the claim. For the sake of examination, the office has assumed that this refers to the same groove.
Regarding claim 12:
The claim recites the limitation "the inner diameter" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
Claims 1-15 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.
Furthermore, the prior art of record does not teach “a spring having a first proximal end and a second distal end, said first end being rigidly attached to the distal end of the spring support cap and said second end being in rigid connection with the rear extension of the retraction piece;” as within the context of the claimed invention as disclosed and within the context of the other limitations present in claim 1.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following is prior art:
US-20020193746-A1
Chevallier
See the outer barrel 16 and outer plunger 19
US-6186980-B1
Brunel
See the outer barrel 9
US-5330430-A
Sullivan
See the outer barrel 5 and spring 60
US-3949748-A
Malmin
See the outer barrel 30 and outer plunger 60
US-3702608-A
Tibbs
See the outer barrel 34
EP-1356839-A1
RIMLINGER
See the outer barrel 30 and the prefilled syringe 12
WO-2014109012-A1
IMAI
See the outer barrel 6
WO-2014045392-A1
ARINOBE
See the outer barrel 2/1
WO-03011378-A1
MARSHALL
See the outer barrel 15 and spring 16
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WESLEY HARRIS whose telephone number is (571)272-3665. The examiner can normally be reached M to F, 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Tsai can be reached on (571) 270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WESLEY G HARRIS/Examiner, Art Unit 3783
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