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 .
Claims 1-20 are pending.
This application is a continuation of 18/531447, which is a divisional of 18/054449.
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.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by
BOSTICK (US 7007838 B1).
Re: 17, BOSTICK teaches of a system, the system comprising:
a backer board comprising:
a flat surface when oriented in a first condition and a folded surface when oriented in a second condition;
two raised edges disposed at a periphery of the flat surface along adjacent sides of the backer board, the raised edges converging toward but not meeting at a corner between the adjacent sides in a manner forming a gap therebetween, the gap being sized to pour therethrough from the flat surface when in the second condition.
Here, BOSTICK teaches of a foldable tray of the flat surface and raised edges along the adjacent sides and forming a gap between at a corner, see Figs. 1-7, see abstract, and wherein, the foldable state of BOSTICK would encompass the claimed first and second conditions.
Further, regarding the “system for forming in an elastomeric mold defining one or more cavities”, the only positively described features pertains to a backer board and the features to this, as the claim does not positively claim for an elastomeric mold. Similarly, “the board configured to removably support the elastomeric mold during a molding process, the backer board having rigidity to support the mold while filling the mold with a therapeutic material to form the therapeutic pellets” are intended use of the of the apparatus.
Regarding forming and to pour the formed therapeutic pellets, this is an intended use of the apparatus. Further, the claimed material worked upon does not further limit the structure, see MPEP 2115. Lastly, the claimed material worked upon by the mold is note, however, the mold structure itself does not appear to be positively claimed.
Re: 18 (upon 17), wherein the backer board comprises a first cutout in the flat surface configured to further form a spout sized to pour the formed therapeutic pellets therethrough. See also the spout 54 that is interpreted as the claimed cut out, and would be capable of pouring the desired materials.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 4-9, and 11 are is/are rejected under 35 U.S.C. 103 as being unpatentable over LION (US 7014162) in view of CUTLER (US 2011/0101000 A1).
Re: 1, LION teaches of a system for forming , the system comprising:
an elastomeric mold (see mold teaching with the compartments 12) defining one or more cavities;
a backer board configured to receive and support the elastomeric mold (see flat surface and cover, 14, see Fig. 1),
wherein the backer board comprises:
a flat surface (see compartment surface 14 in Lion, Fig. 1);
two or more raised edges disposed at a periphery of the flat surface (see 18, gripping surface and water retaining surface 16, see Figs. 1 and 2); and
wherein the elastomeric mold is more flexible than the backer board in at least one direction (see teaching of the firm material of hard plastic or metal, Col. 2, lines 60-662, compared to the elastomeric mold of second rigidity, see teaching of bottom surface 12b of compartments being of silicone, TPR or natural rubber, Col. 2, lines 51-55 and 60-64, see claim 2 wherein the compartment bottom surface and side walls are made of deformable flexible and substantially elastic material, see Col. 5, lines 63-67).
Regarding the claimed system for forming therapeutic pellets, this is an intended use of the device. Wherein, the structure taught by LION reference would be capable of forming such pellets. The claimed material worked upon does not further limit the structure and wherein the LION would teach this feature, see also MPEP 2115.
LION does not teach of a first cutout of the two or more raised edges at a first corner of the backer board.
Whereupon, CUTLER teaches of a tray or pan which would correspond to the claimed board with the raised sides, see the edge portions 36a, 36b which have a peripheral lip 36, and having a cutout at a corner that would facilitate pouring, see Fig. 2-4, see 39 of a pouring spout being a groove or depression 39A, 39B. This concept of such a cutout located along the corner of a tray (which is what is interpreted of the backer board having the raised sides) is a known concept in the container and tray arts.
It would have been obvious for one of ordinary skill in the art to have modified LION with a cutout as taught by CUTLER to facilitate in ease of pouring/draining of the tray/board.
Re: 4 (upon 1), the backer board further comprising a second cutout located at a second corner of the backer board. This is seen as a duplication of the cutout of CUTLER in adding additional locations for pouring, it would have been obvious for one of ordinary skill in the art to have duplicated the cutout of CUTLER, see also MPEP 2144.04 (VI) (B).
Re: 5 (upon 1), wherein the backer board is formed of a first material comprising a first rigidity, wherein the elastomeric mold is formed of a second material comprising a second rigidity that is less than the first rigidity. See teaching by LION concerning the materials for the respective parts.
Re: 6 (upon 1), wherein the backer board supporting the elastomeric mold is configured to be supportable by one hand of a user. This claimed feature regarding being able to be used by one hand of a user is a broad interpretation as a user’s hand can be of various sizes. Whereupon the backer board being configured to be supportable by one hand of a user, is viewed as being capable of being held in one hand of a user, see standard ice cube trays, see also teaching in LION (abstract) of being for easy handling and manipulation.
Re: 7 (upon 1), wherein the backer board comprises: a width in a range of 2 to 6 inches; and, a length in a range of 3 to 12 inches.
Similarly regarding the sizing of the board in claim 6, the range of the particular dimensions is a range within being manipulable by a user, and see teaching by the LION reference. Wherein, the claimed particular ranges would be encompassed by the teaching of LION particularly in regards to ice cube trays.
In regards to claim 8, LION teaches of the raised edges of the backer board (or lid) that is seen as being sized and shaped to form an interference fit with the elastomeric mold to grip the elastomeric mold, see Figures of LION regarding the board fitting with the mold.
In regards to claim 9 (upon 8), wherein the two or more raised edges of the backer board are configured to fit around a perimeter of the elastomeric mold. See Figs. 1 and 2 of LION.
In regards to claim 11 (upon 8), wherein the one or more cavities are configured to hold a paste during a curing process to form the therapeutic pellets. This is an intended use of the apparatus and the claimed method does not provide further limitations from the prior art teachings. Wherein, the structure taught by Lion regarding the cavities are capable of holding the paste and for a curing process in forming a product.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over LION in view of CUTLER as applied to claim 8 above, and further in view of SLAPPAY (US 2009/0050784).
In regards to claim 10 (upon 8), wherein the elastomeric mold is formed of a silicone rubber, and wherein the backer board is formed of a material that is more rigid that the silicone rubber.
See teaching of the materials as set forth in claim 1 above by Lion including of silicone, TPR, natural rubber, compared teaching of hard plastic or metal for the board/tray itself. Lion does not specifically state of the material of silicone rubber.
Wherein, Slappay teaches of an ice cube tray fromed of flexible material that includes the plastics, but also of “natural rubber compounds, silicone rubber, polyurethane rubber, as well as other synthetic rubbers”, see [0011].
Here, it would have been obvious for one of ordinary skill in the art to modify Lion with the teaching of other types of known rubber materials such as silicone rubber in Slappay for known material construction for flexible materials, this is seen as a simple substitution of one known element (in this case of the flexible material in Lion) for another (the use of silicone rubber in Slappay) to obtain predictable results, see MPEP 2143.
Claim(s) 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over LION in view of CUTLER, as applied to claim 1 above, and further in view of DE GROOTE (US 6793193 B2) .
Re: 12 (upon 8), wherein the elastomeric mold comprises a first set of cavities and a second set of cavities, wherein a volume of each cavity in the first set of cavities is greater than a volume of each cavity in the second set of cavities.
See in LION of changing of the dimensions regarding the compartment size, shape, and number, see Col. 5, lines 35-44). Though LION does not specifically state of second set of cavities.
See teaching by DE GROOTE of different sets of cavity sizes, see Figs. 8, 9, and 10, see also Col. 3, line 66 to Col. 4, line 65. This is seen as a change in size and shape of the cavities of the mold, see also MPEP 2144.04 (IV)(A) and MPEP 2144.04 (IV)(B) regarding modification of the mold cavities, whereupon, allowing for forming the desired size and shape of the formed product as desired by the user.
It would have been obvious for one of ordinary skill in the art to have further modify the cavities of the modified LION with the different sets of cavity sizes as taught by DE GROOTE for forming the desired shapes of the formed products from the mold, see also change in size and shape regarding the structure while having the same function, see MPEP 2144.04 (IV).
Re: 13 (upon 12), wherein the elastomeric mold comprises a first height at the first set of cavities and a second height at the second set of cavities, wherein the first height is greater than the second height, and wherein the elastomeric mold comprises a first depth for each of the first set of cavities and a second depth for each of the second set of cavities, wherein the first height is proportional to the first depth, and wherein the second height is proportional to the second depth.
Similarity, as to claim 13 above, the different changes in the depth in relation to the set of the cavities are seen as change in size and shape as desired by the user and it would have been obvious for one of ordinary skill in the art to have modified in accordance to the particular shapes.
Re: 14 (upon 13), wherein the first height is in a range of 1.25 to 1.75 times the first depth, and wherein the second height is in a range of 1.25 to 1.75 times the second depth.
Similarity, as to claims 12 and 13 above, the different changes in the height and depth in relation to the other set of the cavities are seen as change in size and shape as desired by the user and it would have been obvious for one of ordinary skill in the art to have modified in accordance to the particular shapes.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over LION (US 7014162) in view of CUTLER (US 2011/0101000 A1).
Re: 15, a system for forming therapeutic pellets comprising:
a mold formed of a flexible material comprising a plurality of cavities sized and shaped to form pellets,
wherein the mold is elastically flexible to expel the therapeutic pellets after a curing process,
a backer board formed of a rigid material more rigid than the flexible material, wherein the mold fits within the backer board so that the system can be held by hand during the curing process such that the backer board prevents elastic flexing of the mold,
wherein the backer board is separable from the mold and comprises a basin for catching the therapeutic pellets after the curing process and when the mold is elastically flexed to expel the therapeutic pellets, and
Regarding the claimed system for forming therapeutic pellets, which is not specifically stated by LION. This is an intended use of the device in regards to the both forming the pellets and of the board being used as a tray. Wherein, the structure taught by LION reference would be capable of forming such pellets. The claimed material worked upon does not further limit the structure and wherein the LION would teach this feature, see also MPEP 2115.
Regarding the board being sized for a user’s hand, this limitation as that of claim 6 above, and wherein the hand of a user is a broad interpretation as a user’s hand can be of various sizes. Whereupon the backer board being configured to be supportable by one hand of a user, is viewed as being capable of being held in one hand of a user, see standard ice cube trays, see also teaching in Lion (abstract) of being for easy handling and manipulation.
LION does not teach of a cutout in the corner of the basin of the backer board.
Whereupon, CUTLER teaches of a tray or pan which would correspond to the claimed board with the raised sides, see the edge portions 36a, 36b which have a peripheral lip 36, and having a cutout at a corner that would facilitate pouring, see Fig. 2-4, see 39 of a pouring spout being a groove or depression 39A, 39B. This concept of such a cutout located along the corner of a tray (which is what is interpreted as corresponding to the claimed basin of the backer board having the raised sides) is a known concept in the container, basin, and tray arts.
It would have been obvious for one of ordinary skill in the art to have modified LION with a cutout as taught by CUTLER to facilitate in ease of pouring/draining of the tray/board.
Claim(s) 2-3 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over LION in view of CUTLER as applied to claims 1 and 15 above, and further in view of KRIDLE (US 3477604 A).
Re: 2 (upon 1), further comprising a relief configured to facilitate bending of the backer board about the relief, and wherein the relief is oriented toward the first cutout.
Regarding the relief, LION does not teach of this particular feature.
Wherein, the KRIDLE reference teaches of a known top/lid which corresponds to the claimed board, and further that it can be made of a single piece that is sufficiently flexible and having a notch or slits 53, 88 that facilitates bending, see Fig. 3 and 5, and see also gap 101 in Fig. 7, allowing for bending, see also Col. 15, lines 45-65. The notches and slits taught by KRIDLE is seen as aiding in the bending of a flat surface particularly in regards to a particular desired direction and orientation.
Wherein, it would have been obvious for one of ordinary skill in the art to have further modify the board of the modified LION with relief and cutout as taught by KRIDLE as additional features for the bending of the board along the desired orientation.
Re: 3 (upon 2), wherein the relief comprises a first end disposed proximal to the first cutout and a second end at a side of the backer board.
The second cutout teaching is noted as a second additional notch as taught by KRIDLE along the periphery to aid in the bending, see Figs. 3 and 5.
Re: 16 (upon 15), wherein the backer board comprises a relief groove extending across at least a portion of the basin such that the backer board is foldable along the relief groove to form a dispensing funnel for the therapeutic pellets. This is similar limitation as to claim 2 above, and see the teaching by KRIDLE.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over BOSTICK as applied to claim 18 above, and further in view of KRIDLE (US 3477604 A).
Re: 19 (upon 18), wherein the backer board comprises a relief configured to facilitate bending of the backer board between the first condition and the second condition about the relief, the relief being oriented toward the first cutout.
Wherein, the KRIDLE reference teaches of a known top/lid which corresponds to the claimed board, and further that it can be made of a single piece that is sufficiently flexible and having a notch or slits 53, 88 that facilitates bending, see Fig. 3 and 5, and see also gap 101 in Fig. 7, allowing for bending, see also Col. 15, lines 45-65. The notches and slits taught by KRIDLE is seen as aiding in the bending of a flat surface particularly in regards to a particular desired direction and orientation.
Wherein, it would have been obvious for one of ordinary skill in the art to have further modified the board of BOSTICK with relief and cutout as taught by KRIDLE as additional features for the bending of the board along the desired orientation.
Re: 20 (upon 19), wherein the backer board comprises a second cutout configured to facilitate bending of the backer board between the first condition and the second condition.
The second cutout teaching is noted as a second additional notch as taught by KRIDLE along the periphery to aid in the bending, see Figs. 3 and 5.
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.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12151075. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed system of the ‘075 patent having the same features concerning thebacker board, the elastomeric mold, and of the raised edges and of the materials of the parts including groove/cut out for the folding of the backer board which encompasses the claimed invention of the instant application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892 form, of note:
PHIPPS (US 2020/0360238 A1) is a troche mold assembly and having a cover.
ABBONDANZIO (US 2018/0319134 A1) teaches of a flexible surface used in food preparation and is flexible, see Fig. 8.
Several ice cube tray designs that can include lid/cover which would teaches the general state of the art of the elastomeric mold with lid/cover (backer board).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMMANUEL S LUK whose telephone number is (571)272-1134. The examiner can normally be reached Monday-Friday 9 to 5.
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, Xiao S Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EMMANUEL S LUK/Primary Examiner, Art Unit 1744