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 .
Election/Restrictions
Applicant’s election of group I, claims 1-14 in the reply filed on 4/23/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Since the election is made without traverse, the restriction is deemed as proper and therefore made FINAL. Claim 15 is withdrawn from consideration.
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.
Claims 3, 6-7, 13 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.
Claim 3 contains the limitation “painkillers such as lidocaine, a laxative, etc.,”. The limitation “such as” is confusing because it is unclear whether the limitations following “such as” are required by the claim or if they are merely optional.
Claims 6-7 and 13 contain the term “preferably” which is unclear for substantially the same reasons stated immediately above regarding claim 3.
Claim 4 contains the limitation “the vacuum is adjusted to…” then lists pressures that include values that are above atmospheric pressure (~0.1 MPa). This is confusing because it is unclear if a vacuum exists at these higher pressures.
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.
Claim(s) 1-3, 5-12, 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grossman US 2016/0095816.
Per claim 1, Grossman teaches a method of vacuum assisted liquid transfer infusion of liquid agent into a porous toothpick comprising the steps of: placing one or more porous (see Grossman claim 41) toothpicks (abstract, [0056]) vertically into a first container [0074], filling the first container with the liquid agent to be transferred to the toothpick such that the toothpicks are partially immersed [0074], placing the first container in a vacuum chamber [0075], and applying and maintaining a vacuum to the first container until a desired quantity of liquid agent is transferred by capillary force to the toothpick [0075].
Per claim 2, Grossman teaches that the first container is air sealable and under vacuum the lid close the air sealable first container in an airtight manner [0075] (thus forming the vacuum).
Per claim 3, Grossman teaches the substance to be nicotine [0074].
Per claim 5, Grossman teaches sealing and vacuuming in the container for 2-7 days [0075], which falls within the claimed range.
Per claim 6, Grossman teaches that the liquid is transferred to the entirety of the toothpick (saturated) [0075].
Per claim 7, Grossman teaches a glass jar [0074] (mason jar).
Per claim 8, Grossman teaches a wooden toothpick (abstract).
Per claim 9, Grossman teaches 32 mg/ml of nicotine, which falls within the claimed range [0074].
Per claim 10, Grossman teaches an artificial sweetener flavor or mint flavor [0056].
Per claim 11, Grossman teaches glycerin (Table 1).
Per claim 12, Grossman teaches glycerin present in an amount of 59.5-61.8%, which falls within the claimed range (see claim 36).
Per claim 14, Grossman teaches a nicotine concentration of 3-3.9% which falls within the claimed range (see claim 35).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 4 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grossman US 2016/0095816.
Per claim 4, Grossman is silent regarding the claimed vacuum pressure. However, Grossman teaches that vacuum infusion is the preferred method to open up wood pores and push viscous solution into the pores [0056] and as such, the degree of vacuum would therefore control how much the wood pores would open up. It would have been obvious to one of ordinary skill in the art to have controlled and optimized the vacuum pressure with a reasonable expectation for success to arrive at the desired results via routine experimentation (see MPEP 2144.05).
Per claim 13, Grossman is silent regarding the precooled temperature. However, Grossman teaches that the liquid may be held at lower temperatures to slow degradation of nicotine and other compounds in solution [0046]. As such, it would have been obvious to one of ordinary skill in the art to have controlled and optimized the cooling temperature with a reasonable expectation for success to arrive at the desired results via routine experimentation (see MPEP 2144.05).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN T. LEONG whose telephone number is (571)270-5352. The examiner can normally be reached M-F 10:00-6:00pm.
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, Gordon Baldwin can be reached at 571-272-5166. 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.
/NATHAN T LEONG/Primary Examiner, Art Unit 1718
Prosecution Insights