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 .
Applicant’s election without traverse of the species of Group 1 represented by Figs. 1-5 in the reply filed on 12/10/25 is acknowledged. Although the applicant did not indicate which of claims 1-20 are readable on the elected species, as the last Office action required, the examiner has determined that all of the claims except for claim 19 read on the elected species of Group 1 (claim 19 does not read on elected Group 1 because it requires attachment of the first and second bodies at a vertical plane which is a feature of non-elected Group 2 (Fig 6)).
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/10/25. An action on the merits of claims 1-18 and 20 follows.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the features of claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 7 is 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. The features of claim 7 were not described in the specification in the full, clear, concise and exact terms required by the Statute. As also indicated above, the features of claim 7 are not shown in the application drawings either. Therefore, the features of claim 7 were not described in the specification in such a way as to reasonably convey possession of the claimed invention by the applicant.
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 1-18 and 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 7 is indefinite because it cannot be properly interpreted due to the lack of adequate description of the features therein as pointed out above. That is to say the configuration of the claimed apparatus when it almost completely contains the nasal spray bottle cannot be adequately determined because it was inadequately described in the specification including not shown in the application drawings. This determination also includes the finding that the configuration of the claimed spray opening cannot be determined as well as the location of the claimed spray end of the apparatus (based on the noted lack of adequate description of these features). Claim 7 is so indefinite for the reasons above that it has not been further treated on its merits.
Independent claims 1 and 20 are indefinite because in requiring the first and second cavity to secure the nasal spray bottle when the apparatus is closed by mating a first mating part of the first body with a second mating part of the second body (see claim 1 last paragraph), applicant has drafted the claims to further structurally limit the claimed apparatus by reference to its content, the nasal spray bottle. This suggests that the nasal spray bottle might be positively claimed.
On the other hand, claim limitations in claim 1 such as “configured to contain a first portion if a nasal spray bottle” and “configured to: contain a second portion of the nasal spray bottle” indicate that the nasal spray bottle is not positively claimed in the claimed combination, but merely recited as an intended use of the apparatus comprising the claimed first and second bodies.
Thus, claims 1, 20 and their dependent claims are indefinite because it is not clear whether they are drawn to a combination including the nasal spray bottle or to a sub-combination not including the nasal spray bottle.
Claim 9 is indefinite following similar reasoning to that immediately above. Requiring that the first body contain a larger portion of the bottle than the portion of the bottle contained by the second body is a structural limitation on the apparatus that clearly depends at least in part on the structure of the bottle, and suggests that the bottle is claimed (since applicant is relying at least in part on the structure of the bottle in claim 9).
In the comparison of the claims with the prior art in the paragraphs below, the claims are interpreted as if the nasal spray bottle is recited only functionally in order to give the claims their broadest reasonable interpretation. On the other hand, amendments to clarify the scope of the claims are required.
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.
Claim(s) 1-6 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bornmann (1,712,686). Bonmann discloses an apparatus (the medication kit shown in the reference drawings) that has all of the features of the claimed apparatus. That is to say the medication kit of Bornmann has all of the claimed structural elements and can perform all of the claimed functions. Thus:
The claimed first and second bodies can be compartment 1 and cover section 3 respectively. It is noted that the cavities of these bodies can contain first and second portions of some nasal spray bottle as apparently functionally claimed (for example, see lines 2 and 4 of claim 1). For example only, they can do so in the manner a medicine bottle 2 is contained in the Bornmann apparatus, as shown in the Bornmann drawings.
Moreover, the cavities of the first and second bodies align as also structurally required in claims 1 and 20.
The claimed device coupler of claims such as claim 2 can be handle 7 (that can couple the apparatus with a device or another apparatus as functionally claimed).
The claimed body coupler of claims such as claim 3 can be the hinge at 2a (that meets al of the claimed functions for the body coupler).
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) 8-13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bornmann in view of Wilson et al. (2,183,663). Bornmann does not disclose that the first cavity has a larger volume than the second cavity, as required in claim 8. On the other hand, Wilson is cited to show that the feature is conventional in the relevant art. In the hinged apparatus of Wilson, box 10 forms a first body having a first cavity that is larger than the cavity formed by cover 11 (that can form a second body). It would have been obvious in view of Wilson to provide the apparatus of Bornmann with the missing feature, for the purpose of making the apparatus more attractive to a user thereof, or for the purpose of allowing the first body to form a more stable resting surface for the apparatus in its opened state.
Regarding claim 9, the modified apparatus of Bornmann can contain some nasal spray bottle in the manner apparently functionally claimed.
Regarding claim 13, Bornmann may not disclose plastic material. However, Wilson discloses the feature (see the second page second column line 28). It would also have been obvious in view of Wilson to provide for the first and second body of Bornmann to comprise plastic material, for the purpose of providing a more durable construction.
Claim(s) 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bornmann in view of Fathollahi (8,800,762). Bornmann may not disclose the elastic polymeric substance of claim 14, the rubber of claim 15 or the silicon rubber of claim 16. On the other hand, Fathollahi is cited to show the missing features. That is to say Fatholli discloses the use of a silicon rubber lining (such as lining 700) to cushion against shocks. Materials 14 and 15 in the first and second bodies of Bornmann are intended by Bornmann to be cushioning materials. It would have been obvious in view of Fathollahi to provide for the materials 14 and 15 in Bornmann to be a polymeric substance such as silicon rubber, in order to more economically construct the Bornmann apparatus, or to provide better cushioning for the bottles therein.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bornmann in view of Chan et al. (2014/0091001). Bornmann may not disclose a code linked to online instructions as claimed. Chan is cited to show that such codes (linked to online instructions regarding container contents) are conventional. See QR codes 2, 4, 6, 8 etc. on the different kinds of containers shown in the reference drawings. It would have been obvious in view of Chan to provide a code linked to online instructions regarding using the Bormann apparatus content on the outer surface of the apparatus, to provide a user of the apparatus with added convenience.
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.
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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