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 § 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 12-13 and 17-20 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 12 recites “a remaining length of the second portion defined by the total length of the second portion less the interface length does not contact the inner surface of the barrel” rendering the claim indefinite. The examiner interprets the length of the second portion that does not contact the inner surface as the remaining length and recommends amending the claim. Appropriate action is required.
Claims 17-20 recite “the piston of” in the preamble rendering the claims indefinite. It is unclear whether the claims depend on claim 10 (a dispensing syringe) or claim 1 (a piston). Appropriate action is required.
Claim 13 is rejected by virtue of dependency on rejected claim 12.
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.
Claims 1-3, 6-10, 13-16 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Digregorio et al. (US 9309042 B2, herein, Digregorio).
Regarding claim 1, Digregorio discloses a piston (piston 20 – Fig.3B) configured to be used with a dispensing syringe (dispensing syringe 10 – Fig.3B), the piston comprising:
a body (body 21 – Fig.3B) configured to be slidably positioned within an interior reservoir (interior reservoir 18 – Fig.3A) of the dispensing syringe (dispensing syringe 10 – Fig.3B), the body defining a wall (wall 66 – Fig.3B) that circumferentially surrounds the piston (piston 20 – Fig.3B); and
a wiper seal (first wiper seal 48 – Fig.3B) that extends outwardly and circumferentially (“a first circumferentially extending wiper seal is positioned on the piston”, see abstract) from the wall (wall 66 – Fig.3B), the wiper seal defining a lip (lips 52 – Fig.3B), a first portion, a second portion, and a junction (under broadest reasonable interpretation, examiner interprets the first portion, second portion, and the junction as units that compose the wiper seal lips, see annotated Fig.3B) that connects the first portion and the second portion,
wherein the second portion (see annotated Fig.3B) extends outwardly (“wiper seal 48 extends radially outwardly from the piston 20 to engage an inner surface 50 of the barrel 12”, see para [0022]) from the junction (see annotated Fig.3B) and away from the body to the lip (lips 52 – Fig.3B).
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Digregorio Figure 3B
Regarding claim 2, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 1, wherein in a relaxed state (“in a relaxed state as shown outside of the interior reservoir 18”, see para [0023], Fig.3B) the second portion (see annotated Fig.3B) extends outwardly (“wiper seal 48 extends radially outwardly from the piston 20”, see para [0022]) from the junction (see annotated Fig.3B) and away from the body (body 21 – Fig.3B) at an angle relative to an axis that extends parallel to a longitudinal extending direction of the piston and through the junction (see annotated Fig.3B)
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Digregorio Figure 3B
Regarding claim 3, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 2, as recited above, wherein the angle (see annotated Fig.3B) is greater than 0°.
Regarding claim 6, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 2, wherein the angle (see annotated Fig.3B) is between 0° and 45°.
Regarding claim 7, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 1, wherein the first portion (see annotated Fig.3B) is structured to taper from the junction (see annotated Fig.3B) to the wall (“a wall 66 of the piston 20 tapers proximally from the first wiper seal 48”, see para [0025]).
Regarding claim 8, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 1, wherein the junction is radially shaped (see annotated Fig.3B) with a center of curvature disposed towards the body (body 21 – Fig.3B).
Regarding claim 9, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 1, wherein the wiper seal (wiper seal 48 – Fig.3B) is configured to provide a liquid tight seal with an inner surface (“the first wiper seal 48 liquidly seals against the inner surface 50”, see para [0025]) of a barrel (barrel 12 – Fig.3B) of the dispensing syringe (dispensing syringe 10 – Fig.3B) and to inhibit a liquid from flowing beyond the wiper seal (“the first wiper seal inhibits the liquid within the interior reservoir from flowing proximally beyond the first wiper seal”, see para [0009]).
Regarding claim 10, Digregorio discloses a dispensing syringe (dispensing syringe 10 – Fig.3B) comprising:
a barrel (barrel 12 – Fig.3B) defining an inner surface (inner surface 50 – Fig.3B) and an interior reservoir (interior reservoir 18 – Fig.3B); and
a piston (piston 20 – Fig.3B) slidably disposed within the interior reservoir (“piston slidably disposed within an interior reservoir”, see para [0008]), the piston comprising:
a body (body 21 – Fig.3B) defining a wall (wall 66 – Fig.3B) that circumferentially surrounds the piston (piston 20 – Fig.3B); and
a wiper seal (first wiper seal 48 – Fig.3B) that extends outwardly and circumferentially (“a first circumferentially extending wiper seal is positioned on the piston”, see abstract) from the wall (wall 66 – Fig.3B), the wiper seal defining a lip (lips 52 – Fig.3B), a first portion, a second portion, and a junction (under broadest reasonable interpretation, examiner interprets the first portion, second portion, and the junction as units that compose the wiper seal lips, see annotated Fig.3B) that connects the first portion and the second portion,
wherein the second portion (see annotated Fig.3B) extends outwardly (“wiper seal 48 extends radially outwardly from the piston 20”, see para [0022]) from the junction (see annotated Fig.3B) and away from the body to the lip (lips 52 – Fig.3B), and
wherein an interface length of the second portion (see annotated Fig.3B) of the wiper seal (wiper seal 48 – Fig.3B) contacts the inner surface of the barrel (barrel 12 – Fig.3B) to form a liquid tight seal (“the first wiper seal 48 liquidly seals against the inner surface 50”, see para [0025]).
Regarding claim 13, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 12, wherein the junction and the first portion (see annotated Fig.3B) do not contact the inner surface (inner surface 50 – Fig.3B) of the barrel (barrel 12 – Fig.3B).
Regarding claim 14, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 10, wherein the wiper seal (wiper seal 48 – Fig.3B) has a material that is less rigid than a material of the barrel (barrel 12 – Fig.3B) and the wiper seal is arranged in a compressed state within the barrel (under broadest reasonable interpretation, examiner interprets the material of the wiper seal less rigid than the barrel as it has a larger diameter pre-insertion but is able to be compressed and inserted (“when the piston 20 inserts into interior reservoir 18, as indicated by arrow 60, the first and second lips 52, 56 have an interference fit with the inner surface 50” and “the first wiper seal 48 is positioned on a generally rigid portion 62 of the piston 20”, see para [0023]-[0024])).
Regarding claim 15, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 14, wherein the piston (piston 20 – Fig.3B) is removable from barrel and when removed from the wiper seal is configured to revert to a relaxed state (“the elastic portion 64 of the piston 20 is flexible such that the elastic portion 64 expands under the influence of a force and then contracts when that force is removed or reduced”, see para [0024]).
Regarding claim 16, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 15, wherein in the relaxed state (“in a relaxed state as shown outside of the interior reservoir 18”, see para [0023], Fig.3B) the second portion (see annotated Fig.3B) extends outwardly (“wiper seal 48 extends radially outwardly from the piston 20”, see para [0022]) from the junction (see annotated Fig.3B) and away from the body (body 21 – Fig.3B) at an angle relative to an axis that extends parallel to a longitudinal extending direction of the piston and through the junction (see annotated Fig.3B cited for claim 2).
Regarding claim 19, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 10, wherein the first portion (see annotated Fig.3B) is structured to taper from the junction (see annotated Fig.3B) to the wall (“a wall 66 of the piston 20 tapers proximally from the first wiper seal 48”, see para [0025]).
Regarding claim 20, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 19, wherein the junction is radially shaped (see annotated Fig.3B) with a center of curvature disposed towards the body (body 21 – Fig.3B).
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, 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.
Claims 4-5, 11-12 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Digregorio.
Regarding claim 4, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 2, wherein the angle (see annotated Fig.3B cited for claim 2) is greater than 4°.
Digregorio does not appear to expressly disclose that the angle “is greater than 4°”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle of Digregorio to be greater than 4° since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see pp. [0012] indicating the angle “may” be within the claimed range).
Regarding claim 5, Digregorio discloses the piston (piston 20 – Fig.3B) of claim 2, wherein the angle (see annotated Fig.3B cited for claim 2) is between 4° and 10°.
Digregorio does not appear to expressly disclose that the angle “is between 4° and 10°”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle of Digregorio to a range between 4° and 10° since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see pp. [0012] indicating the angle “may” be within the claimed range).
Regarding claim 11, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 10, wherein the interface length of the second portion (see annotated Fig.3B) of the wiper seal (wiper seal 48 – Fig.3B) that contacts the inner surface (inner surface 50 – Fig.3B) of the barrel (barrel 12 – Fig.3B) is less than two thirds of a total length of the second portion (see annotated Fig.3B).
Digregorio does not appear to expressly disclose that “the interface length of the second portion of the wiper seal that contacts the inner surface of the barrel is less than two thirds of a total length of the second portion”
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the length interface portion of Digregorio so it is less than two thirds of a total length of the second portion since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see pp. [0012] indicating the angle “may” be within the claimed range).
Regarding claim 12, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 11, wherein a remaining length (under broadest reasonable interpretation, examiner interprets the interface length of the second portion as the sole portion that comes in contact with the inner surface, hence, the remaining length does not make contact with the inner surface) of the second portion (see annotated Fig.3B) defined by the total length of the second portion less the interface length does not contact the inner surface (inner surface 50 – Fig.3B) of the barrel (barrel 12 – Fig.3B).
Regarding claim 17, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 16, wherein the angle (see annotated Fig.3B cited for claim 2) is greater than 4°.
Digregorio does not appear to expressly disclose that the angle “is greater than 4°”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle of Digregorio to be greater than 4° since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see pp. [0012] indicating the angle “may” be within the claimed range).
Regarding claim 18, Digregorio discloses the dispensing syringe (dispensing syringe 10 – Fig.3B) of claim 17, wherein the angle (see annotated Fig.3B cited for claim 2) is between 4° and 10°.
Digregorio does not appear to expressly disclose that the angle “is between 4° and 10°”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the angle of Digregorio to a range between 4° and 10° since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see pp. [0012] indicating the angle “may” be within the claimed range).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAGWA M ABU-DAYEH whose telephone number is (571)270-0389. The examiner can normally be reached 8am-5pm.
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, CHELSEA STINSON can be reached at (571)270-1744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.M.A./Examiner, Art Unit 3783 /CHELSEA E STINSON/Supervisory Patent Examiner, Art Unit 3783
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