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 with traverse of the invention of Group I, claims 1-12 drawn to a carton in the reply filed on 10/22/25 is acknowledged. The traversal is on the ground(s) set forth in the reply. This is not found persuasive for the reasons indicated in the restriction. Additionally, applicant’s traverse of the restriction on the grounds that claims 13 and 18 are dependent claims that are dependent on claim 1, and as such, include a corresponding technical feature with claim 1 are responded to as follows.
The examiner disagrees. First of all, as applicant should be well aware, claim 13 is not a dependent claim. Claim 13 is drawn to a combination including the carton of claim 1 and a syringe disposed in the carton. Such a combination cannot be dependent on a claim such as claim 1 that ostensibly is drawn to a carton per se (note the express language of the preamble of claim 1), in spite of the wording applicant has used to draft claim 13. A claim to a carton and a syringe simply cannot be dependent on a claim to a carton because the syringe is not part of the carton but rather is a feature in addition to the carton. Moreover, as indicated in the restriction itself, the syringe provides the syringe and carton combination with a technical feature that the claims to the carton alone do not possess.
Regarding the amendments to claim 18, the claim appears to still be drawn to a blank for a carton as previously claimed, in spite of the change in the claim preamble, because the body of the claim recites features that were only described in the application specification with regard to the blank, not the carton. For example, and not by way of limitation, the claimed “first section” and “second section” of claim 18 are blank features as can clearly be appreciated by their use in the specification to describe the blank and not the carton. Compare specification page 8 lines 29-34 describing the blank and including the noted “first section” and “second section” with the preceding portions of the specification describing the carton. Therefore claim 18 is not considered to be properly dependent on claim 1 in spite of its new preamble. Then see the reasons for restricting the blank from the carton already set forth in the restriction.
The requirement is still deemed proper and is therefore made FINAL.
Claims 13-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/22/25.
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 1-4 and 7-12 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. The claims are indefinite because on the one hand they have been drafted by the applicant so that they appear to be directed to the sub-combination of the carton only (for example, see the claim 1 preamble), and on the other hand, they appear to be directed to the combination of the carton and a syringe because they contain limitations that depend structurally on the syringe (for example, see the limitation in claim 1 requiring that the tip of the syringe may protrude through the aperture in the carton. This depends on the structural configuration of the syringe including its length, not just on the carton features claimed). In other examples suggesting that claims 1-12 may depend on the syringe, in spite of their expressly being drafted by the applicant to claim the sub-combination of the carton only, as indicated above, see the requirement in claim 2 requiring that the flap portion has a first configuration in which the flap portion does not engage with the syringe and a second configuration in which the flap portion engages with the flange of the syringe. Again, this clearly depends on the structural configuration of the syringe, not just on the carton. For example, it depends on the size and/or length of the syringe and on the placement of the flange relative to the syringe barrel. Then see claim 4 expressly requiring a flap portion to be dimensioned based on the syringe. Or, see claim 8 actually expressly requiring that the housing of the carton be substantially complementary in shape to the syringe. And so on.
It is by now well settled that features that are not claimed cannot be relied upon by an applicant in support of patentability. Therefore, and clearly, the applicant in this patent application cannot rely on the features of a syringe to obtain patentability for a carton per se.
In the comparison of the claims with the prior art below, the claims are interpreted as being drawn to the sub-combination of the carton only, in order to give them their broadest reasonable interpretation, and consistent with the way applicant has expressly drafted the claim preambles. Therefore, all references in claims 1-12 to any syringe or syringe features are interpreted to the extent possible below as reciting merely statements of intended use with regard to the claimed carton. On the other hand, amendments to claims 1-12 are required to clarify their scope. The examiner notes in this regard that in addition to the way the preambles of claims 1-12 were expressly drafted (to claim the noted sub-combination) applicant also expressly elected the claims to the carton only, pursuant to the restriction. Accordingly, it appears the claims should be amended to make clear that they are directed to and claim (structurally) carton features only, in order to obviate the noted rejection.
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) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pawlowski et al. (3,618,848) cited herein.
The claimed carton reads on the sleeves of Pawlowski because the sleeves have all of the structural elements of the claims, and in addition, the sleeves meet all of the claimed functions. Note the embodiment of sleeve in Figs 2-6 of the reference, for example only. It can obscure the contents of the barrel of some syringe as functionally required in the claim 1 preamble.
The claimed housing can be the body of the sleeve.
The claimed opening can be the opening into the sleeve visible on the left side of Fig 2.
The claimed chamber can be the interior of the sleeve and the claimed first and second portions of the chamber can be the right and left parts of the interior of the sleeve respectively (again looking at Fig. 2). These parts of the sleeve interior can clearly receive the barrel and flange of some syringe therein as functionally claimed in claim 1.
The claimed aperture opposite the opening can be the opening into the sleeve on its right side in Fig 2 (the opening that is not visible in Fig 2 that may or may not have the same construction as the opening on the left side of the figure as expressly described at the bottom of column 2 in Pawlowski).
Regarding the flap portions of claims 2 and 3 refer to the embodiment of carton of Fig 8, and note restraining panels 116 and 119.
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) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pawlowski et al. Pawlowski may not disclose indents for the Pawlowski chamber. On the other hand, the prior art of record shows that it is conventional to provide locking sleeves, such as the one in Pawlowski with indents to facilitate manipulation of the sleeve and its content. For example, see recessed edges 324 and 332 in Kavanagh 2024/0067388, similar in in Albrecht et al. (2012/0234701) and recess 316 in the reference, etc.). It would have been obvious to provide indents as claimed in the carton of Pawlowski to make it easier to manipulate the carton contents.
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