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 .
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Subject matter in the claims that was not described in the specification in such a way as to reasonably convey possession of the claimed invention by the applicant is (with emphasis on the text of the offending claim limitations in bold):
A. “an oral care device comprising a first portion” (for example only, see claim 1 line 3)(no “first portion” of applicant’s oral care device is expressly described in the specification text with specific reference to any part of the application drawings, such that it is apparent from the specification and drawings what the claimed “first portion” is. Additionally, no part of applicant’s oral care device is described in the specification text with specific reference to any part of the application drawings using terminology other than “first portion”, such that it is apparent what the claimed “first portion” is. The examiner notes in the above regard that claim 1 line 10 requires that the claimed package have “a brush head section cooperating with the with the first layer to enclose the first portion”, however, no “brush head section” is described as such in the specification text. Thus this claim language does not make up for the lack of specification description for the claim feature. The examiner also notes specification [0024] in regard to the above commentary which expressly describes with reference to Fig. 3 that a first end or lumen of the oral care device 122 is enclosed within the first section 107 of package 100, and that a lumen and brush head of the oral care device are enclosed within third section 110 of package 100. For these reasons, the claimed first portion of the oral care device was not described in the specification in the full, clear, concise and exact terms required by the Statute. For this reason, the claim limitation in question was not described in the application specification in such a way as to reasonably convey possession of the claimed invention by the applicant);
B. “ an oral care device comprising a second portion” (for example only, see claim 1 line 4)(note the commentary above and refer once more to specification [0024]. In this case, the claimed “second portion” of applicant’s oral care device was neither expressly described in the subject application specification nor described therein using different terminology than “second portion”, with specific references to the drawings, such that it is apparent exactly what part of the oral care tool is the noted “second portion”.
Additionally, the examiner notes that as required in the last paragraph of claim 1, the plurality of axially stacked folds (included in region 115 per specification [0023]) are supposed to enclose the second portion of the oral care tool (in cooperation with the first layer 102 of the package). However, there is no original disclosure in the application that any part of the oral care tool, much less the inadequately disclosed second portion thereof, is enclosed by the axially stacked folds, or by region 115 that includes the axially stacked folds. Rather, applicant’s specification appears to disclose that the brush head of the oral care device (that per specification [0024] resides in third section 110 of the package) may be moved through the package by collapsing the collapsible region 115 to submerge the brush head in solution contained in the fourth 120 of the package 100. So where is the original support for any part of the oral care tool, much less some “second portion” of the oral care tool, to be enclosed by the axially stacked folds?
Additionally, the examiner notes that at least specification [0024] is drafted in such a way that applicant appears to distinguish the oral care device 122 from a cleaning solution device (not numbered) “for use with the oral care device 122” that is enclosed within the fourth section 120 of applicant’s package 100. However, based on at least the drafting of lines 2-6 of claim 1, it appears that the oral receptacle (oral care solution receptacle or cleaning solution receptacle) is part of the oral care device. For these reasons, the claimed “second portion” of the oral care device was not described in the specification in the full, clear, concise and exact terms required by the Statute. For this reason, the claim limitation in question was not described in the application specification in such a way as to reasonably convey possession of the claimed invention by the applicant);
C. “a brush head section cooperating with the first layer to enclose the first portion” (note the commentary above);
D. “a receptacle section cooperating with the first layer to enclose the oral receptacle” (the features are not described at all or are not well described in the application specification);
F. “a plurality of axially stacked folds.....to enclose the second portion” (note claim 1 last paragraph)(note the commentary above).
G. “a component of the oral care device” (note claim 13, for example)(note the commentary above. See also H below. The specification lacks a description in the full, clear, concise and exact terms required by the Statute of what the applicant considers to be a component of the oral care device. For example, is the disclosed and claimed oral receptacle considered to be such a component? How would one know this from reading the application specification given the issues indicated above.);
H. “an accessory configured for use with the oral care device” (note claim 13, for example)(note the commentary above. In spite of express disclosure, such as that in [0022] line 35 and last sentence, the description of the claim term is inadequate because parts of the disclosure such as [0022] lines 1-6 and claim 1 lines 2-6 suggest that the content of fourth section 120 of the package is a component of the oral care tool itself, rather than an accessory thereof. Therefore, the specification lacks a description in the full, clear, concise and exact terms required by the Statute of what the applicant considers to be an accessory of the oral care device. Is the disclosed and claimed oral receptacle considered to be such an accessory, or is it a component of the tool? How would one know this from reading the application specification given the issues indicated above.);
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.
The claims are indefinite because each one of the claim features that were not well described in the application specification, as indicated above, cannot be properly interpreted. For example, it cannot be determined what portion of the oral care device applicant considers to be the first portion and the second portion thereof.
In another example, it is not clear what the claimed “brush head section” is, and if it is a reference to the originally disclosed third section, how the term “brush head” is intended to be further limiting in the term “brush head section”. Nor is it apparent what first portion of the oral care tool the claimed brush head section encloses.
In another example, this time referring to “F.” above, what does the limitation that the axially stacked folds enclose the second portion of the oral care tool mean?
And so on.
The claims are also indefinite because the claim term “oral receptacle” is not clear. As indicated above, it may be that the term is intended to be a reference to the disclosed cleaning solution receptacle. If so, applicant should amend the claims to make this clear, including whether any solution is claimed along with the receptacle, or whether just the receptacle is claimed. On the other hand, the term “oral receptacle” cannot be given meaning.
The claims are so indefinite for the reasons above that they have not been further treated on their merits. Included in this determination is that the claims cannot be compared with applicant’s patent 11679923 to determine whether or not a double patenting rejection should be made at this time. Regarding the prior art, the examiner notes that Souza, of record, appears to be relevant to the claims since it includes a package for an oral care device that can be a toothbrush. The oral care device may be viewed as having several portions along its length. The package also has a receptacle therein for holding a tooth cleaning substance. The package has axially stacked folds along a length thereof at 1B in Fig 4.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736