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 .
INFORMATION DISCLOSURE STATEMENT
The information disclosure statement (IDS) submitted on 04 February 2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner herein.
CLAIM STATUS
Claims 1-18 were originally filed.
Claims 1-18 are currently pending and have been examined herein.
INITIAL REMARKS
Applicant is reminded that in order to be entitled to reconsideration or further examination, the Applicant or patent owner must reply to the Office action. The reply by the Applicant or patent owner must be reduced to a writing which distinctly and specifically points out the supposed errors in the examiner' s action and must reply to every ground of objection and rejection in the prior Office action. The reply must present arguments pointing out the specific distinctions believed to render the claims, including any newly presented claims, patentable over any applied references. If the reply is with respect to an application, a request may be made that objections or requirements as to form not necessary to further consideration of the claims, be held in abeyance until allowable subject matter is indicated. The Applicant's or patent owner's reply must appear throughout to be a bona fide attempt to advance the application or the reexamination proceeding to final action. A general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references does not comply with the requirements of this section.
Should the Applicant believe that a telephone conference would expedite the prosecution of the instant application, Applicant is invited to call the Examiner.
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 1-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/056,064 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they encompass subject matter of substantially the same scope.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
CLAIM OBJECTION
Claim 10 is objected to for an inadvertent error. Claim 10 is a duplicate of claim 9, with a dependence from claim 9. Appropriate correction is required.
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.
Claims 1-11 and 13-18 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Vogt et al., WO2021023668A1, (“VOGT”).
Re claim 1, VOGT discloses an injection needle positioner (Figs.1-3 and associated text), comprising:
first and second mounting brackets (Figs.1-3 and associated text);
a first grip (Figs.1-3 and associated text), comprising:
a first aperture configured to interface with the first mounting bracket (Figs.1-3 and associated text); and
a first grip face on a lateral side of the first grip (Figs.1-3 and associated text), the first grip face comprising:
a first section toward a first end of the first grip and having a first profile (Figs.1-3 and associated text); and
a second section toward a second end of the first grip, relative to the first section, and having a second profile different than the first profile (Figs.1-3 and associated text); and
a second grip (Figs.1-3 and associated text), comprising:
a second aperture configured to interface with the second mounting bracket (Figs.1-3 and associated text); and
a second grip face on a lateral side of the second grip (Figs.1-3 and associated text)
Re claim 2, VOGT discloses the positioner of claim1, as shown above. VOGT further discloses wherein the second grip face comprises a first section toward a first end of the second grip and having a first profile and a second section toward a second end of the second grip, relative to the first section, and having a second profile different than the first profile (Figs.1-3 and associated text)
Re claim 3, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein the second profile of the first grip comprises a recessed gripping groove configured to interface with an injector having an asymmetric geometry (Figs.1-3 and associated text)
Re claim 4, VOGT discloses the positioner of claim 2, as shown above. VOGT further discloses wherein the second profile of the second grip comprises a recessed gripping groove configured to interface with an injector having an asymmetric geometry (Figs.1-3 and associated text)
Re claim 5, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein the first aperture extends from the first end of the first grip to the second end of the first grip, such that the aperture can interface with the first or second mounting bracket from either end of the first grip (Figs.1-3 and associated text)
Re claim 6, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein the second aperture extends from a first end of the second grip to a second end of the second grip, such that the aperture can interface with the first or second mounting bracket from either end of the second grip (Figs.1-3 and associated text)
Re claim 7, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein the first profile of the first grip is configured to interface with an injector having a symmetric geometry (Figs.1-3 and associated text)
Re claim 8, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein the first profile of the second grip comprises is configured to interface with an injector having a symmetric geometry (Figs.1-3 and associated text)
Re claim 9, VOGT discloses the positioner of claim 7, as shown above. VOGT further discloses wherein the symmetrically shaped injector has a cylindrical, elliptical, or semi-square geometry (Figs.1-3 and associated text)
Re claim 10, VOGT discloses the positioner of claim 8, as shown above. VOGT further discloses wherein the symmetrically shaped injector has a cylindrical, elliptical, or semi-square geometry (Figs.1-3 and associated text)
Re claim 11, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein at least one of the first grip face or the second grip face comprises a slip-resistant coating (Figs.1-3 and associated text)
Re claim 13, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein each grip lock further comprises one or more accessory mounting holes oriented parallel to the central aperture (Figs.1-3 and associated text)
Re claim 14, VOGT discloses the positioner of claim 11, as shown above. VOGT further discloses wherein the accessory mounting holes are configured to interface with one or more customization plate (Figs.1-3 and associated text)
Re claim 15, VOGT discloses the positioner of claim 11, as shown above. VOGT further discloses wherein each grip further comprises a top and bottom mounting hole oriented perpendicular to the central aperture and configured to align with the mounting openings on the mounting bracket (Figs.1-3 and associated text)
Re claim 16, VOGT discloses the positioner of claim 15, as shown above. VOGT further discloses wherein each mounting hole is threaded and configured to interface with a mounting screw (Figs.1-3 and associated text)
Re claim 17, VOGT discloses the positioner of claim 1, as shown above. VOGT further discloses wherein each grip further comprises a directional indicator configured to point in a predetermined direction when installed in a corresponding configuration (Figs.1-3 and associated text)
Re claim 18, Applicant recites claim limitations of the same or substantially the same scope as that of claim 1. Accordingly, claim 18 is rejected in the same or substantially the same manner as claim 1.
CLAIM REJECTIONS - 35 USC § 103
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 12 is rejected under 35 U.S.C. § 103 as being unpatentable over VOGT in view of OFFICIAL NOTICE.
Re claim 12, VOGT discloses the positioner of claim 9, as shown above.
VOGT fails to explicitly disclose wherein the slip-resistant coating is surfalloy
However, the Examiner takes Official Notice that surfalloy was a well-known slip-resistant coating used for grippers in a similar system
Furthermore, it would have been obvious to one of ordinary skill in the art, at the time of filing of the instant invention, to modify VOGT to include this specific coating for its grippers. One would have been motivated to do so in order to provide a secure hold for the needle injection system. Further still, the Supreme Court in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) provided that combining prior art elements according to known methods to yield predictable results may render a claimed invention obvious over such combination. Here, the Examiner’s assertion merely teaches that it is well-known to have a specific slip-resistant coating for a gripping system. Since both VOGT and the Examiner’s assertion are disclosed in the same or substantially the same environment, one of ordinary skill in the art would recognize that the combination of elements here has previously been executed according to known methods, thereby evidencing that such combination would yield predictable results.
OTHER RELEVANT PRIOR ART
Hoffer et al., US20240165333 – parenteral injection system for guiding a needle
Vogt et al., US20220134010 – syringe plunger system with gripping system
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS M HAMMOND III whose telephone number is 571-272-2215. The Examiner can normally be reached on Monday-Friday 0800-1700.
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, Peter Macchiarolo can be reached on 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. For more information about the PAIR system, see: https://ppair-my.uspto.gov/pair/PrivatePair.
Respectfully,
/Thomas M Hammond III/Primary Examiner, GAU 2855
Prosecution Insights