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.
Claim 2,3 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 claims 2 and 3, said claims require “ the first and second seals”. The examiner notes that there is no antecedence for a first and second seal in the independent claim 1. The examiner notes however there is disclosure for a first and second O-ring, commonly used as seals. Therefore, it is interpreted that the first and second seal as required by claim 2 and 3 are the first and second O-ring, respectively. Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4,6-8 is/are rejected under 35 U.S.C. 102(a)(1)(a)(2) as being anticipated by Parrish US 7455280, hereafter Parrish.
Regarding claim 1, Parrish discloses
A delivery port (Fig. 1, fitting (12)) for use with a delivery device (tubing (22) defined as a supply line between components, fluid supply and mold (Column 6, lines 11-14))), the delivery port comprising: an inlet (Fig. 1, (17)); an outlet (15); a pin (valve (26)); a first O-ring (52); and a second O-ring (33) (See also annotated figure below). The examiner notes that the valve of Parrish is interpreted as a pin, as it is movable (compressible when the tubing is connected) in combination with springs (see first position in figure 1, second position in figure 2), and serves to close the fluid pathway of the device until activated (Column 2, lines 4-10).
Parrish further discloses wherein the port connector having a sealed configuration in which the first and second O-rings are positioned in sealed engagement with the pin to close the delivery port (Fig. 1); an intermediate configuration in which the first O-ring is positioned in sealed engagement with the delivery device and the second O-ring is positioned in sealed engagement with the pin (Fig. 1); and a delivery configuration in which the first O-ring is positioned in sealed engagement with the delivery device and the delivery port is positioned in fluid communication with a fluid passageway of the delivery device (Fig. 2). The examiner notes that Figure 1 is interpreted as the sealed configuration where both O-rings (52,33) are interfacing with the valve (26) to close the fluid pathway between two ends of the device ((Column 2, lines 4-10). As the first O-ring interfaces with pathway (25) which interfaces with the valve (pin) and the second O-ring directly interfaces with the valve, and in this position the device pathway is sealed, it is interpreted that both O-rings are in sealed engagement with the pin. Further, as detailed in Column 3, lines 61-63, when in use, the tube (22) previously interpreted as the delivery device, and engages with first O-ring (52), this step is interpreted as the intermediate configuration, as the delivery device is engaged with the first O-ring, and the second O-ring is still engaged with the valve (pin). The examiner notes that Parrish further discloses that “upon further insertion the tube will engage with abutment (28)” which causes the valve to be pushed and thus open the fluid passage (Column 3, lines 64-67, Column 4, line 1-7). The examiner notes that as this configuration require a further insertion of the delivery device to occur, it is interpreted as a third configuration, and further interpreted as the delivery configuration, as the first O-ring remains in engagement with the delivery device (Fig. 3), and fluid is able to flow through the device.
The examiner further notes that the device of Parrish is configured to connect to a fluid supply (70) and a mold (72), and is thus interpreted as comprising a container.
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Regarding claim 2, Parrish discloses
The delivery port of claim 1, wherein in the delivery configuration, the first and second O-rings are positioned in sealed engagement with the delivery device. The examiner notes that as detailed under the rejection of claim 1, the delivery configuration is best seen in figure 3 of Parrish. The examiner notes that first O-ring (52) is disclosed to engage with delivery device (22) when connected (Column 3, line 61-63). Further, as second O-ring forms a sealed engagement with valve (26) and said valve is directly connected to the delivery device via fluid passage (25), it is interpreted that the second O-ring is also engaged with the delivery device.
Regarding claim 3, Parrish discloses
The delivery port of claim 1, wherein in the delivery configuration, the first O-ring is positioned in sealed engagement with the delivery device and the second O-ring is positioned in sealed engagement with the pin. The examiner notes that as detailed under the rejection of claim 1, and as seen in figure 3, the first O-ring (52) engages with the delivery device (22) (column 3, lines 61-63), and the second O-ring (33) engages with the valve (interpreted as the pin) (26).
Regarding claim 4, Parrish discloses
The delivery port of claim 1, wherein the port connector includes a shoulder (Fig. 1, shoulder formed by abutment (28), Column 3 lines 13-16). The examiner notes that the shoulder formed by the abutment, as seen in the annotated figured under the rejection of claim 1, interfaces with the first O-ring. However, while Parrish does not specifically disclose that the shoulder transfers movement of the port connector to the first O-ring, the examiner notes that per the MPEP section 2114 section II “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.” Therefore, as Parrish teaches the required structure of a shoulder, where the transfer of movement is functional language, and said shoulder is seen to interface with the first O-ring in figure 1 of Parrish, the shoulder of Parrish would reasonably transfer the port movement to the O-ring, through the shoulder and thus reads to the claimed limitation.
Regarding claim 6, Parrish discloses
The delivery port of claim 4, wherein the first O-ring is positioned below the shoulder and the second O-ring is positioned above the shoulder. The examiner notes that as seen in the annotated figure 1 under the rejection of claim 1, the first O-ring is seen to be between the defined outlet and the shoulder, whereas the second O-ring is between the shoulder and the defined inlet. Therefore, it is interpreted that the first O-ring is positioned below the O-ring, as it is closer to the outlet than the shoulder, and the second O-ring is positioned above the shoulder, as it is closer to the inlet than the shoulder.
Regarding claim 7, Parrish discloses the delivery port of claim 1, wherein the port connector includes a fill port configured to transfer fluid from an external source (fluid passage [35], see figure 2).
Regarding claim 8, Parrish discloses the delivery port of claim 1, wherein the delivery port is positioned along a first axis and the fill port is positioned along a second axis, and the first axis is substantially perpendicular to the second axis. The examiner notes that the delivery port inlet and out (thus the port axis) as seen in figure 1 is horizontal (from inlet to outlet). The fill port (35) as best seen in figure 2, runs vertically and thus is interpreted to be perpendicular to the delivery port axis.
The examiner notes that regarding claim 5, Parrish remains the closest prior art. However, Parrish does not disclose that both O-rings are on the same side of the shoulder, as the first O-ring is seen to be between the defined outlet and the shoulder, whereas the second O-ring is between the shoulder and the defined inlet. Therefore, it is interpreted that the first O-ring is positioned below the O-ring, as it is closer to the outlet than the shoulder, and the second O-ring is positioned above the shoulder, as it is closer to the inlet than the shoulder. Further it would not have been obvious to modify the device of Parrish to have both O-rings be on the same side of the shoulder, as there is no way for the valve (with which the second O-ring interfaces with) to be placed on the same side of the shoulder as the first O-ring without altering the functionality and scope of the device of Parrish.
Therefore, as a means to reject claim 5, a second 35 U.S.C. 102 rejection of claim 1 and 4 are provided in view of Hargrove et al. US 4699356, hereafter Hargrove.
Regarding claim 1, Hargrove discloses
A delivery port (Fig. 1, (3)) for use with a delivery device (8) the delivery port comprising: an inlet (Fig. 1, sample end (6))); an outlet (formed in vessel end (4), see column 2, lines 27-29); a pin (formed from stem (9) including face (20))); a first O-ring (17); and a second O-ring (23). The examiner notes that the valve of Hargrove is interpreted as a pin, as it is movable (through spring 11) and serves to close the fluid pathway of the device until activated (as seen in figure 1).
Hargrove further discloses wherein the port connector having a sealed configuration in which the first and second O-rings are positioned in sealed engagement with the pin to close the delivery port (Fig. 1); an intermediate configuration in which the first O-ring is positioned in sealed engagement with the delivery device and the second O-ring is positioned in sealed engagement with the pin (Fig. 2); and a delivery configuration in which the first O-ring is positioned in sealed engagement with the delivery device and the delivery port is positioned in fluid communication with a fluid passageway of the delivery device (Fig. 2). The examiner notes that Figure 1 is interpreted as the sealed configuration where both O-rings (17,23) are interfacing with the valve (9) to close the fluid pathway between two ends of the device. The examiner notes that Hargrove further discloses that insertion of a probe into the valve urges the stem to compress against the spring causing the O-ring (23) to disengage and thus allowing fluid to flow past the rod (column 4, lines 18-25). which causes the valve to be pushed and thus open the fluid passage (Column 3, lines 64-67, Column 4, line 1-7). The examiner notes therefore, the first (sealed) configuration is the sealed device seen in figure 1, the second (intermediate) configuration is when the probe is first inserted and abuts the first O-ring (17), and the third (delivery) configuration is when the probe is further inserted into the valve pushing the rod back and allowing fluid to flow through to the other side. The examiner notes that per column 3 lines 41-52, the valve is configured to connect to a container.
Regarding claim 4, Hargrove discloses the delivery port of claim 1, wherein the port connector includes a shoulder(boss [19]). The examiner notes that per the MPEP section 2114 section II “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.” Therefore, as Hargrove teaches the required structure of a shoulder, where the transfer of movement is functional language, and said shoulder is seen to interface with the first O-ring in figure 1 of Hargrove, the shoulder of Hargrove would reasonably transfer the port movement to the O-ring, through the shoulder and thus reads to the claimed limitation.
Regarding claim 5, Hargrove discloses the delivery port of claim 4, wherein the first and second O-rings are positioned on the same side of the shoulder (fig. 1). The examiner notes that per the rejection of claim 4, the shoulder is interpreted as boss (19). As seen in figure 1, said shoulder is to the left of both first O-ring (17) and second O-ring (23). Therefore, it is interpreted that the O-rings are positioned on the same side of the shoulder, as they are both to the right of the shoulder.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of U.S. Patent No. 11129772, hereafter 772. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1 of the instant application, see claim 1 of 772. Although 772 is directed to having a first and second seal, an O-ring (of the instant application) is a seal and thus both ports require two seals and pin where there are three distinct configurations of said seals.
Regarding claim 2 of the instant application, see claim 2 of 772
Regarding claim 3 of the instant application, see claim 3 of 772
Regarding claim 4 of the instant application, see claim 4 of 772
Regarding claim 5 of the instant application, see claim 5 of 772
Regarding claim 6 of the instant application, see claim 6 of 772
Regarding claim 7 of the instant application, see claim 7 of 772
Regarding claim 8 of the instant application, see claim 8 of 772
Claims 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-8 of U.S. Patent No. 12090120 hereafter 120 in view of Hargrove, as provided above
Regarding claim 1 of the instant application, see claim 1 of 120. Although 120 is directed to having a first and second seal, an O-ring (of the instant application) is a seal and thus both ports require two seals and pin where there are three distinct configurations of said seals. Further, while 120 is narrower (including limitations about the O-rings positioned adjacent to the shoulder), the instant claims, being broader than 120, thus encompass 120. 120 however, does not require the limitation of a container. Hargrove teaches a delivery port (Fig. 1, (3)) for use with a delivery device (8) the delivery port comprising: an inlet (Fig. 1, sample end (6))); an outlet (formed in vessel end (4), see column 2, lines 27-29); a pin (formed from stem (9) including face (20))); a first O-ring (17); and a second O-ring (23). The examiner notes that the valve of Hargrove is interpreted as a pin, as it is movable (through spring 11) and serves to close the fluid pathway of the device until activated (as seen in figure 1). The examiner notes that per column 3 lines 41-52, the valve is configured to connect to a container. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to apply the connector comprising a pin and two O-rings to a container to transfer fluid, as taught by Hargrave.
Regarding claim 2 of the instant application, see claim 2 of 120
Regarding claim 3 of the instant application, see claim 3 of 120
Regarding claim 4 of the instant application, see claim 1 of 120
Regarding claim 5 of the instant application, see claim 5 of 120
Regarding claim 6 of the instant application, see claim 6 of 120
Regarding claim 7 of the instant application, see claim 7 of 120
Regarding claim 8 of the instant application, see claim 8 of 120
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hull et al. US 6892999, Lapierie US 5293902, and Cocher et al. US 6520480 all disclose a system for transferring fluids comprising a movable sealing valve and two O-rings.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Wrubleski whose telephone number is (571)272-1150. The examiner can normally be reached M-F 8:00-4:00 EST.
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/MATTHEW WRUBLESKI/Examiner, Art Unit 3781
/ARIANA ZIMBOUSKI/Primary Examiner, Art Unit 3781
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