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 .
Status of Claims
The pending 9/20/2024 claims 1-6 are under consideration.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Fig. 21a of Applicant’s disclosure (see MPEP 2129).
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Regarding independent claim 1, Fig. 21a of Applicant’s specification (annotated above) discloses and admits that a syringe shown in Fig.21 is an admitted prior art syringe (the first paragraph on Page 30 of Applicant’s specification refers to Fig. 21a as a prior art syringe and does not indicate said prior art as the work of the same inventive entity; See MPEP 2129 and 2152.03, where applicant’s identification/disclosure of prior art in applicant’s specification/figures is considered admitted prior art and can be used to reject applicant’s claimed invention).
Applicant’s admitted prior art as Fig.21a discloses the syringe comprising a sealing element at a proximal end of the syringe (lid 180, gasket 182, element 178, etc.), the sealing element comprised of a sealing assembly having a hole in its center through which a piston rod passes (at least lid 180 with piston rod 24 passing therethrough), the sealing assembly comprised of an upper part and a lower part that are pressed together towards each other between the barrel and the piston rod at least in a direction transverse to the barrel (see annotated Fig. 21a below, the upper and lower part are arranged in the claimed manner and thus are interpreted as being pressed together and there would necessarily be frictional contact between elements); wherein the sealing assembly is placed at least partially inside the barrel and is fixedly held in place at the proximal end of the barrel (see annotated Fig. 21a below; the upper part and element 176 would fixedly hold the sealing assembly in place; while Applicant’s specification notes the present solution proposed by the instant invention is distinct from the prior art of Fig. 21a, these differences are not reflected in the claim language).
Regarding claim 2, admitted prior art Fig. 21a of Applicant’s specification further discloses the sealing assembly held in place and sealed to the inside of the battel of the syringe by press fitting (by using upper and lower parts sealed around an O-ring, Fig. 21a of Applicant’s specification is interpreted as being held in place by press fitting as there would necessarily be frictional contact between elements).
Regarding claim 3, the limitations of the syringe as presented above “can be used for either closed or open transfer systems” is considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus 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)). Thus, if a prior art structure is capable of performing the intended use as recited the claim, then it meets the claim. In the instant case, syringe of Fig. 21a of Applicant’s specification has all the structure as claimed. As such, it is capable of being used as claimed.
Regarding claim 4, the limitations of wherein the upper part and the lower part are “pressed together towards each other between the barrel and the piston rod at least in a direction extending between the barrel and piston rod” is considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus 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)). Thus, if a prior art structure is capable of performing the intended use as recited the claim, then it meets the claim. In the instant case, syringe of Fig. 21a of Applicant’s specification has all the structure as claimed. As such, it is capable of functioning as claimed (Fig. 21a shows the upper and lower parts being positioned between the barrel and piston rod, and are in contact with one another, thus pressing forces between these elements is expected).
Regarding claim 5, the limitations of wherein the barrel “applies a force on one of the upper part and the lower part in a direction transverse to the barrel and towards the piston rod from the barrel, and the piston rod applies a force on the other one of the upper part and the lower part in a direction transverse to the piston rod and towards the barrel from the piston rod, thereby pressing the upper part and the lower part together towards each other” is considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus 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)). Thus, if a prior art structure is capable of performing the intended use as recited the claim, then it meets the claim. In the instant case, syringe of Fig. 21a of Applicant’s specification has all the structure as claimed. As such, it is capable of functioning as claimed (Fig. 21a shows the upper and lower parts being positioned between the barrel and piston rod, and are in contact with one another, thus pressing forces between these elements is expected).
Regarding claim 6, the limitations of wherein the barrel “applies a force on the upper part in a direction transverse to the barrel and towards the piston rod form the barrel, and the piston rod applies a force on the lower part in a direction transverse to the piston rod and towards the barrel from the piston rod, thereby pressing the upper part and the lower part together towards each other” is considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus 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)). Thus, if a prior art structure is capable of performing the intended use as recited the claim, then it meets the claim. In the instant case, syringe of Fig. 21a of Applicant’s specification has all the structure as claimed. As such, it is capable of functioning as claimed (Fig. 21a shows the upper and lower parts being positioned between the barrel and piston rod, and are in contact with one another, thus pressing forces between these elements is expected).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALESSANDRO R DEL PRIORE whose telephone number is (571)272-9902. The examiner can normally be reached Monday - Friday, 8:00 - 5:30.
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, Rebecca E Eisenberg can be reached at (571) 270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALESSANDRO R DEL PRIORE/Examiner, Art Unit 3781
/GUY K TOWNSEND/Primary Examiner, Art Unit 3781
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