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 .
Election/Restrictions
Applicant's election with traverse of Invention III, drawn to an applicator with a means to position a wick at a non-zero angle relative to a housing, and Species N, depicted in Figs. 30, 21A, 21B, 22A, 22B, 23, and 24, and directed to a flexible conduit between the reservoir and the tip in the reply filed on 18 December 2025 is acknowledged. The traversal is on the ground(s) that Examiner has not established that there is a serious burden to perform a complete search and examination of all the original claims. This is not found persuasive because Examiner established the search burden in the Restriction Requirement mailed 18 June 2025. As per MPEP 808.02, a serious search burden may be established by showing:
(A) Separate classification thereof: This shows that each invention has attained recognition in the art as a separate subject for inventive effort, and also a separate field of search. Patents need not be cited to show separate classification.
(B) A separate status in the art when they are classifiable together: Even though they are classified together, each invention can be shown to have formed a separate subject for inventive effort when the examiner can show a recognition of separate inventive effort by inventors. Separate status in the art may be shown by citing patents which are evidence of such separate status, and also of a separate field of search.
(C) A different field of search: Where it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention(s) (e.g., searching different classes/subclasses or electronic resources, or employing different search queries), a different field of search is shown, even though the two are classified together. The indicated different field of search must in fact be pertinent to the type of subject matter covered by the claims. Patents need not be cited to show different fields of search.
In this case, the claimed inventions have separate classifications and require different fields of search.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-31, 35, and 42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Invention or Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 18 December 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 36 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 36 merely recites that the means for positioning the wick at a nonzero angle to at least a portion of the housing comprises a flexible tube. This limitation is previously recited in claim 32, from which claim 36 depends. Claim 36 therefore fails to further limit claim 32. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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) 32-34 and 36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Düring (US 3343200).
Regarding claim 32, Düring discloses an applicator comprising: a housing (comprising 3 and 1) extending in a longitudinal direction "L" and having a chamber (interior of 3); a discharge port (9); a wick (12) connected to the discharge port; and a valve (comprising 13, 17, 18) fluidly connected to the chamber and movable between a closed position (Fig. 3) in which the valve fluidly disconnects the discharge port from the chamber, and an open position in which the valve fluidly connects the discharge port to the chamber (col. 3, ll. 25-31); wherein the applicator is characterized by: means for positioning the wick at a nonzero angle relative to at least a portion of the housing, comprising a flexible tube (4), optionally the nonzero angle is greater than or equal to 1 degree relative to the longitudinal direction "L" of the housing.
Regarding claim 33, Düring discloses the applicator of claim 32, wherein the means for positioning the wick relative to at least a portion of the housing comprises a proximal portion (1) of the housing that is movable relative to a distal portion (3) of the housing.
Regarding claim 34 Düring discloses the applicator of claim 33, wherein the proximal portion of the housing is connected to the distal portion of the housing by a rotating connection or flexible section (flexible section 4).
Regarding claim 36, Düring discloses the applicator of claim 32, wherein the means for positioning the wick at a nonzero angle relative to at least a portion of the housing comprises a flexible tube (4).
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(s) 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Düring as applied to claim 32 above, and further in view of Anderson (US 5154524).
Regarding claim 37, Düring teaches the applicator of claim 32, but does not teach means for regulating the volume of flow comprising a flexible wall of the chamber, the flexible wall being configured to be compressed to increase the volume of flow.
Anderson teaches a means for regulating the volume of flow comprising a flexible wall of a chamber (3), the flexible wall being configured to be compressed to increase the volume of flow (col. 4, ll. 14-18).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have replaced the container of Düring with a container with a flexible wall, the flexible wall being configured to be compressed to increase the volume of flow as taught by Anderson for the purpose of reducing the complexity of the device by eliminating the need for a suction ball.
Regarding claim 38, the combination of Düring and Anderson teaches the applicator of claim 37, wherein the housing comprises a flexible bottle forming the flexible wall (Anderson 3), or a portion of the housing comprises a flexible membrane forming the flexible wall.
Claim(s) 39-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Düring as applied to claim 32 above, and further in view of Wright (US 3079628).
Regarding claim 39, Düring teaches the applicator of claim 32, but does not teach means for regulating the volume of flow comprising a piston slidable within and sealed against a cylinder to form a variable sized chamber in fluid communication with the wick, the piston being movable to reduce the volume of the variable sized chamber and thereby displace fluid from the variable sized chamber to the wick.
Wright teaches a means for regulating the volume of flow comprising a piston (27) slidable within and sealed against a cylinder (25) to form a variable sized chamber (to left of piston 27 in Fig. 5) in fluid communication with the wick, the piston being movable to reduce the volume of the variable sized chamber and thereby displace fluid from the variable sized chamber to the wick (col. 3, ll. 17-31).
Accordingly, it would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to have provided the device of Düring with means for regulating the volume of flow comprising a piston slidable within and sealed against a cylinder to form a variable sized chamber in fluid communication with the wick, the piston being movable to reduce the volume of the variable sized chamber and thereby displace fluid from the variable sized chamber to the wick as taught by Wright for the purpose of providing a user with a simple means to control the supply of material to the wick (Wright col. 3, ll. 31-33).
Regarding claim 40, the combination of Düring and Wright teaches the applicator of claim 39, wherein the piston and cylinder are located in the housing (Wright Fig. 5).
Regarding claim 41, the combination of Düring and Wright teaches the applicator of claim 39, wherein the piston and cylinder are connected to the housing by the flexible tube (Wright Fig. 5).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Stewart, Vial, and Lee references are cited as being directed to the state of the art of applicators with valves.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY S OLIVER whose telephone number is (571)270-3787. The examiner can normally be reached Monday-Friday, 7-3 ET.
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, David Angwin can be reached at (571)270-3735. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADLEY S OLIVER/Examiner, Art Unit 3754
/DAVID P ANGWIN/Supervisory Patent Examiner, Art Unit 3754
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