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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/28/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Means for fluid connection between the reservoir and the pump system
Means for activating an electrical power supply of electrical and electronic components of the transdermal drug administration
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.
Claims 1-20 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.
In regard to claim 1, there is no antecedent basis for “this network” on line 9. It is assumed that the applicant is referring to “a fluid network”. The examiner suggests amending the limitation to “the fluid network”.
In further regard to claim 1, “on one side” and “on the other” on line 15 renders the claim indefinite because it is unclear which structures “sides” are being referenced. Furthermore, “on the other” does not clearly even refer to a side. The applicant should recite the particular structure being referenced.
In further regard to claim 1, “to allow a movement” on line 15 is so generic that it can be referencing any type of movement. The applicant should amend the claim to more specifically define the movement.
In further regard to claim 1, please the 112f interpretation above. The specification does not clearly describe the structure associated with the means language. The applicant should amend the claims to recite specific structure or point to the disclosure in the specification that defines the structure for the means language.
In regard to claim 3, “previously connected” renders the claim indefinite because the claim never sets forth the previous connection status.
The dependent claims are rejected by virtue of their dependency on the rejected independent claim.
Claim Rejections - 35 USC § 102
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) 1-2 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by O’Connor et al. (US 2020/0023123; hereafter O’Connor).
In regard to claim 1, O’Connor discloses a transdermal drug administration device (300) comprising: a. a housing (housing of 301 and 305); b. a battery (see par. [0032]); an injection system (321); d. a movable connection part (315, 317) for providing fluid connection between the injection system and a reservoir (310 or 307) for containing an active ingredient intended to be administered (see par. [0030]); e. a pump system (355) connected to the movable connection part and to the injection system by way of flexible pipes so as to form a fluid network, the pump system being motorized so as to enable a fluid supply to circulate within this network (see par. [0032]); and f. an electronic system (see par. [0027] and [0033]) for controlling the driving of driving of the pump system, the electronic system including a mechanical switch (302) for powering the pump system with the battery; wherein the movable connection part has at least one degree of freedom relative to the housing on one side and the reservoir on the other to allow a movement (see par. [0030] and [0033]), the movable connection part jointly controlling the fluid supply of the pump system and a power supply of the electronic system during the movement, at least part of the movement of the movable connection part configured to be performed by a human mechanical action (see par. [0030]), the movable connection part comprising a means for fluid connection (309) between the reservoir and the pump system and providing disconnection at rest and fluid communication during the movement, and the movable connection part comprising a means for activating an electrical power supply of electrical and electronic components of the transdermal drug administration device, providing disconnection at rest and supplying power during the movement (see par. [0027] and [0033]).
In regard to claim 2, O’Connor discloses wherein the reservoir comprises a vial (307 can be considered a vial), and the movable connection part is configured to receive the vial (see Fig. 3), the vial being removable from the transdermal drug administration device, the movable connection part being configured to be moved according to the at least one degree of freedom when receiving the vial (see Fig. 3).
In regard to claim 15, O’ Connor discloses wherein the movable connection part includes a hollow needle (distal end of 309) connected to a flexible pipe (proximal portion of 309), the hollow needle being configured to be inserted into the reservoir upon a translational movement of the movable connection part to reach a final state (see Fig. 3).
In regard to claim 16, O’Connor discoses wherein the translational movement is induced by a spring (304).
Allowable Subject Matter
Claims 3-14 and 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.*** Allowability is predicated upon the resolution of the 112 rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THEODORE J STIGELL whose telephone number is (571)272-8759. The examiner can normally be reached M-F 9-5:30 EST.
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, Michael Tsai can be reached at 571-270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THEODORE J. STIGELL
Primary Examiner
Art Unit 3783
/THEODORE J STIGELL/Primary Examiner, Art Unit 3783
