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 .
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.
Election/Restrictions
Applicant’s election without traverse of Invention I, drawn to an evaluation method of claims 1-8 in the reply filed on 8/31/26 is acknowledged.
Claim(s) 9-16 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/31/26.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a coupling device operable to output a measurement of a movement of the nipple wall by the subject,” in claim 3, which corresponds to “a coupling element. The coupling element includes a wall defining a passage. The wall defines a passage opening in communication with the passage and further defines an aperture in communication with the passage. The coupling element includes a coupling end configured to receive a nipple element such that the passage is in fluid communication via the passage opening with a nipple cavity defined by the nipple element. A sensor plug of the device encloses and seals the aperture. The coupling element includes a receiver disposed in the passage” (see para [0005] of Applicant’s specification as originally filed).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1-8 is/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.
For claim 1, the claim term “the tip portion of the second NNS nipple” (line 18) lacks antecedent basis. Although the claim previously recites a “tip portion” that tip portion is for the first NNS nipple, not the second. The claim is examined as this being a newly introduced claim term.
For claim 1, the claim term “the nipple cavity” (line 19) lacks antecedent basis. Although the claim previously recites a “nipple cavity” that nipple cavity is for the first NNS nipple, not the second. The claim is examined as this being a newly introduced claim term.
For claim 1, the claim term “the nipple wall” (lines 19-20) lacks antecedent basis. Although the claim previously recites a “nipple wall” that nipple wall is for the first NNS nipple, not the second. The claim is examined as this being a newly introduced claim term.
For claim 2, the claim language “wherein the second nipple is one of the first nipple…” is ambiguous. This claim language just doesn’t make sense. How can a structure be both a first and a second, when using the terms “first” and “second,” by definition, separates the two structures? The claim is examined as “wherein the second nipple is another nipple of the nipple set.”
For claim 4, the claim language “wherein the coupling device comprises: a lever … wherein the lever is pivotably connected to the coupling device” is ambiguous. What is the scope of the coupling device comprises the lever, but also being connected to the lever? Does that mean the lever is connected to itself? The claim is examined as the lever not being a part of the coupling device.
Dependent claim(s) 2-8 fail to cure the ambiguity of independent claim 1, thus claim(s) 1-18 is/are rejected under 35 U.S.C. 112(b).
Allowable Subject Matter
Claim(s) 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
JP 2007-75212 to Furuse et al. (hereinafter “Furuse”) (Examiner’s Note: a copy of this reference found in the parent application, serial no. 13/479,640) discloses an evaluation system (Abstract) comprising: a non-nutritive suck nipple (1) (Fig. 1) comprising: a nipple wall (wall of 1) (as can be seen in Fig. 1) forming a tip portion (where reference numeral “2” points to in Fig. 1) and a base portion (where reference numeral “4” points to in Fig. 1); a nipple cavity (14) defined by the nipple wall (as can be seen in Fig. 1); a flange (unlabeled, but the part that extends out at the very proximal portion of the nipple as can be seen in Fig. 1) including an opening to the nipple cavity (as can be seen in Fig. 1); wherein the base portion is intermediate the tip portion and the flange (as can be seen in Fig. 1); wherein the flange is configured for joining the no-flow nipple to a nipple collar (i.e., 11) (as can be seen in Fig. 1); and wherein the tip portion is enclosed such that none of a fluid contained in the nipple cavity can flow directly from the nipple cavity through the nipple wall of the tip portion (as can be seen in Fig. 1). Furuse further discloses a coupling device (7, 8, 10, and/or 16) at least partially disposed within the nipple cavity (Examiner’s Note: this claim limitation construed in view of Fig. 2 of Applicant’s drawings) (as can be seen in Fig. 1); wherein the coupling device is operable to output a measurement of a movement exerted on the nipple wall (Abstract, via 3) (as can be seen in Fig. 1). Furuse further discloses the nipple collar (11); wherein the coupling device comprises: a coupling body (8, 10) having a proximal end (proximal end of 8, 10) and a distal end (distal end of 8, 10); wherein the coupling body includes a passage extending from the proximal end to the distal end (as can be seen in Fig. 1); wherein the coupling body is joined to the flange by the nipple collar such that the passage is in fluid communication with the nipple cavity (as can be seen in Fig. 1).
However, the prior art of record does not disclose and would not have rendered obvious the ordered combination of elements in the claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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, Jennifer Robertson can be reached at (571) 272-5001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
