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 .
The elected species is the species of Group 1 represented by Figs. 1-5. Applicant elected species Group 1 without traverse in the reply filed on 12/10/25. Claims 1, 3, 5-6, 8-9, 13-16 and 18-27 are examined below as belonging to the elected species of Group 1.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 5-6, 8-9, 13-16 and 18-27 are finally rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Subject matter in the claims that was not described in the specification in such a way as to show possession of the claimed invention by the applicant is (with emphasis on the text highlighted in bold below):
“the device coupler and the first body....comprise a similar material”, and any limitations dependent on this one such as “wherein the similar material comprises an elastic polymeric substance”. Applicant cites generally Fig 1 and its corresponding specification text, as well as the originally filed claims as supporting all of the latest additions to the claims including the one above. The examiner cannot find supporting disclosure for the above noted limitation in either Fig 1, its corresponding text or the original claims. Additionally, the examiner notes that the relevant rules require that the applicant specifically point to the supporting disclosure for any and all claim amendments,
The tab configured as a handle and the other features of claims 26 and 27. In these cases too the examiner cannot find the supporting disclosure for the new claim limitations in either Fig 1, its corresponding text or the original claims
The rejections are also ones for new matter for the indicated reasons.
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, 3, 5-6, 8-9, 13-16 and 18-27 are finally 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 and its dependent claims are indefinite because the last line in claim 1 is incomplete.
All of the claims remain indefinite for the same reason indicated in the last Office action at paragraph 8 lines 17-40. That is to say the claims are indefinite because they are drafted in such a way that they are not clear as to whether they are drawn to a combination including the nasal spray bottle or to a sub-combination not including the nasal spray bottle. Refer to the commentary in the last Office action.
By way of even further explanation, expressions such as “configured to contain a first portion of a nasal spray bottle” in claim 1, for example only, recite the first portion of the nasal spray bottle only functionally, thereby conveying that applicant’s intention is not to positively claim the nasal spray bottle. On the other hand, the claim requirement in the same claim that the first cavity and second cavity are configured to secure the nasal spray bottle when the apparatus is closed by mating a first part of the first body with a second mating part of the second body depends structurally on the nasal spray bottle (the nasal spray bottle has to be secured when the first and second parts are mated, and therefore it has to have at least a configuration that allows it to be secured as claimed). In another example note the specific claim limitations of claims such as claims 6 and 9. These also attempt to perhaps indirectly interject structure into the claims by reference to the nasal spray bottle that is also apparently only functionally claimed. This dependence on the nasal spray bottle in the claim for claimed structure suggests that perhaps applicant’s intention is to positively claim the nasal spray bottle in the claimed combination.
As before, the claims are interpreted for purposes of their comparison with the prior art (see below) as not positively claiming the nasal spray bottle, and accordingly, all references in the claims to the nasal spray bottle are interpreted to the extent possible as merely statements of intended use with regard to the nasal spray bottle.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 5-6, 8-9, 13-16 and 18-27 is/are finally rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Maute (2003/0230498).
The claims clearly read on at least the embodiment shown in Figs. 1-5 of Maute. As to the structure of the claimed apparatus:
Regarding claims such as claim 1, the claimed first body can be right portion 106 and the claimed second body can be left portion 104. The claimed cavities can be 212 for the first body and 210 for the second body.
The claimed device coupler can be mounting tab 114. See also paragraph [0026] of Maute.
The first mating part is peak 320 and the second mating part is valley 310, as most clearly shown in Fig. 3.
This Maute apparatus can secure some nasal spray bottle as functionally claimed (such as a nasal spray bottle having a configuration similar to the configuration of the combined first and second cavities of the Maute apparatus. Note also how the cavities can secure a single tablet having dimensions that closely match the dimensions of the cavities as described in [0031] and [0032] of Maute.).
The claimed body coupler can be hinge 108.
Features of some dependent claims that may not be specifically disclosed in Maute (such as the different size cavities of claim 8 or some specific materials of construction of the claimed apparatus) are conventional and/or well within the level of skill of one of ordinary skill in the art to provide. Therefore, it would have been obvious to provide the apparatus of Maute with the missing elements, for the purpose of constructing a more attractive or more economical apparatus.
Applicant's arguments filed 6/10/26 have been fully considered but they are not persuasive. Note the commentary above with respect to any rejection made last time and repeated herein.
Applicant’s arguments with respect to the prior art rejection has been considered but is moot as to any new grounds of rejection because the new grounds of rejection do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736
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