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 .
Information Disclosure Statement
The NPL citation, Written Opinion of the ISA (Citation No. 2) has not been considered because an English translation was not provided.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because legal phraseology e.g. “said”. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation a power less than 10 Joules and claim 7 recites a power of between 1.2 and 8 Joule and the claims also recite preferably greater than 1.0 Joule and preferably between 1.2 and 4 Joules respectively which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 1, lines 1, 16, 25, Claim 6, and Claim 7, the use of the term “preferably” renders the claim indefinite. The use of the term does not clearly establish the boundaries of the claim.
Claims 2-5 and 8-11 are rejected as being dependent upon a rejected base claim.
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.
Claim(s) 1-7 and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 11,910,764 to Steuperaert et al in view of PCT WO 2019/238262 to Beuste et al.
Regarding Claims 1, 7, and 11, Steuperaert as best understood by the indefinite nature of the claim teaches an injection device and use, preferably intended for the subcortical injection of a substance into a plant (Steuperaert title and abstract), comprising: A body (Steuperaert Fig. 1); an injector head comprising: a needle holder in which a substantially straight needle (Steuperaert Fig. 1 #3; applicant doesn’t claim the structural features of the needle holder and Fig. 4 end of #3 held by hash marked unnumbered structure satisfies the broad term of needle holder) is held and defines the longitudinal axis of the device, said needle is pierced in its center by a channel opening through at least one hole on the side wall of the needle (Steuperaert Fig. 4 #2), and therefore not at the end thereof intended to penetrate the plant; a first actuator (Steuperaert Fig. 1 #6) capable of acting on a tank (Steuperaert #5) so as to pressurize the substance stored in the tank and to allow the injection of this substance through the needle to the plant via the channel, a second actuator (Steuperaert Fig. 1 #7), able to allow the extraction of the needle after its insertion into the plant; the injection device also includes a striking mechanism (Steuperaert Col. 4 line 9,applicant doesn’t claim the structural features of the striker nor the structural links between the striker and the device) capable of striking a needle holder, with a power to allow the insertion of the needle into the plant; a guide (Steuperaert Fig. 1 #1 portion surrounding needle #3 satisfies broad nature of a guide) which has a cavity in which the needle holder and the needle can move along the longitudinal axis of the device, which cavity has an opening so as to allow the passage of the needle and its insertion into the bark of the plant.
Steuperaert teaches the needle pass into the subcortical of the plant and thus has a power in the claimed range, but is silent on explicitly teaching of less than 10 Joules, preferably greater than 1.0 Joule; the striking mechanism has a power of between 1.2 and 8 Joules, preferably between 1.2 and 4 Joules. However, applicant does not provide criticality in the specification for these ranges. The modification is merely an obvious engineering design choice derived through routine tests and experimentation to optimize performance for a particular species of plant and does not provide a patentable distinction. It would have been obvious to one of ordinary skill in the art to modify the teachings of Steuperaert before the effective filing date of the claimed invention with a reasonable expectation of success to meet applications of different plant species. The modification is merely “obvious to try” choosing from a finite number of identified predictable solutions with a reasonable expectation of success.
Steuperaert as modified is silent on a support tool is able to be positioned in the longitudinal axis of the device and is located close to the needle, preferably this support tool has an orifice allowing the needle to pass through, the support tool also acts as a protective sleeve for the end of the needle; the second actuator is also capable of retracting the support tool as the needle is inserted into the plant. However, Beuste teaches the general knowledge of one of ordinary skill in the art that it is known to provide a support tool (Beuste Fig. 3 element D), positioned in the longitudinal axis of the device and is located close to the needle, preferably this support tool has an orifice allowing the needle to pass through, the support tool also acts as a protective sleeve for the end of the needle; capable of the claimed function the second actuator is also capable of retracting the support tool as the needle is inserted into the plant (applicant doesn’t claim the structure that permits this function, the structural connection between the second actuator and the support, these are apparatus claim that contain and the teachings of the prior art contain the support and the second actuator so they are “capable of” the broadly claimed function). It would have been obvious to one of ordinary skill in the art to further modify the teachings of Steuperaert with the teachings of Beuste before the effective filing date of the claimed invention with a reasonable expectation of success to improve handling of the device as taught by Beuste. The modification is merely the application of a known technique to a known device ready for improvement to yield predictable results.
Regarding Claim 2, Steuperaert as modified teaches the striking mechanism is an electromechanical or electropneumatic system (Beuste English translation “electrical and/or pneumatic”). It would have been obvious to one of ordinary skill in the art to further modify the teachings of Steuperaert with the teachings of Beuste before the effective filing date of the claimed invention with a reasonable expectation of success to provide desired amount of power to reach desired injection depth as taught by Beuste. The modification is merely the application of a known technique to a similar known device ready for improvement to yield predictable results. The modification is merely the simple substitution of one known power for another to obtain predictable results.
Regarding Claim 3, Steuperaert as modified teaches needle holder and the needle are integral with the body (Steuperaert Fig. 1 #3 and end of #3 connected to #5) of the device, and appears to teach a clearance of between 2 and 15 mm along the longitudinal axis of the device, but is silent on explicitly teaching the claimed range. However, applicant does not provide criticality in the specification for these ranges. The modification is merely an obvious engineering design choice derived through routine tests and experimentation to optimize performance in a compact manner for ease of use and transport and does not provide a patentable distinction. It would have been obvious to one of ordinary skill in the art to modify the teachings of Steuperaert before the effective filing date of the claimed invention with a reasonable expectation of success for ease of handling and maneuvering. The modification is merely “obvious to try” choosing from a finite number of identified predictable solutions with a reasonable expectation of success.
Regarding Claim 4, Steuperaert as modified the support tool comprises a support jack (Beuste Fig. 1 front face of element D, applicant doesn’t claim the structural features of the jack or its structural connection with the rest of the device) capable of coming into contact with the bark of the plant.
Regarding Claim 5, Steuperaert as modified teaches a first force sensor (Steuperaert English abstract; #8, #9, #10) and a microcontroller (Steuperaert abstract; English translation teaches microcontroller) capable of measuring the applied force of the support tool against the bark of the plant and at least one microcontroller which enables: i) as soon as a minimum effort, corresponding to the activation value, is detected, the activation of the second actuator so as to retract the support tool (6) and allow the insertion of the needle into the bark of the plant; ii) as soon as the applied force is less than a threshold value called the strike value, the activation of the strike mechanism; iii) as soon as the applied force becomes less than a limit value, deactivation of the second actuator (Steuperaert the sensors and microcontroller are “capable of” the claimed function, these are apparatus claims and patentable distinction needs to derive from a structural distinction not function).
Regarding Claim 6, Steuperaert as modified and as best understood by the indefinite nature of the claim teaches a first position sensor (Steuperaert English Translation teaches a first position sensor), associated with the second actuator, capable of measuring the depth of insertion of the needle into the bark of the plant, and at least one microcontroller (Steuperaert abstract and English Translation) allowing, once the target depth is reached for the plant into which the needle is inserted, a deactivation of the second actuator and the striking mechanism and, preferably the activation of the first actuator capable of acting on the tank so as to pressurize the substance stored therein, and the injection of the substance through the needle up to the plant. (Steuperaert the sensors and microcontroller are “capable of” the claimed function, these are apparatus claims and patentable distinction needs to derive from a structural distinction not function; Steuperaert satisfies the structure which is capable of the claimed function).
Regarding Claim 9, Steuperaert as modified teaches the needle holder comprises a frame can either be an integral part of the needle holder (Steuperaert Fig. 4 outer perimeter of hash marked portion hold end of the needle that connects to #5) or consist of an independent part which is fixed to the needle holder.
Regarding Claim 10, Steuperaert as modified teaches a method for treating a plant by subcortical injection of a substance; said method comprising the following steps: application of a device, as defined in claim 1, to the bark of the plant, activation of said device so as to allow the insertion of the needle under the bark of the plant and the subsequent subcortical injection of the substance (Steuperaert as modified abstract), and extraction of the needle from the plant by activation of the second actuator of said device (Steuperaert claim 2, applicant doesn’t positively claim that the second actuator is performing the action of extracting but merely extraction occurs at the same time and Steuperaert satisfies the broad nature of the claim).
Allowable Subject Matter
Claim 8 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The prior art of record is a teaching of the general knowledge of one of ordinary skill in the art with regard to injection devices: U.S. Patent No. 5,046,281 and U.S. Patent Pub. No. 2007/0266628.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA M VALENTI whose telephone number is (571)272-6895. The examiner can normally be reached Available Monday and Tuesday only, eastern time.
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/ANDREA M VALENTI/Primary Examiner, Art Unit 3643
14 July 2026
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