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 .
Status of the Application
Claims 1-14 have been examined in this application. This communication is the first action on the merits. No Information Disclosure Statement (IDS) has been filed with this application.
Claim Interpretation
For the purpose of applying prior art the following broadest reasonable interpretations are applied. The disclosure does not set forth uncommon, special, or otherwise explicit definitions for terms for which the following aforementioned broadest reasonable interpretations are provided. These broadest reasonable interpretations do not appear inconsistent with Applicant’s disclosure.
Broadest Reasonable Interpretations
In regards to claim 1, the term inverted is interpreted as: “to turn inside out or upside down” as per the attached definition obtained on 06/09/26 from Merriam-Webster Online dictionary.
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.
5. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
In regards to claim 9, claim limitation “locking structure” has been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a generic placeholder “structure” and coupled with functional language “locking” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholders are not preceded by a structural modifier.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
identify the following terms in the specification by reference to the drawings, designating the corresponding part or parts therein to which each term applies: “reusable dispensing apparatus”.
establish antecedent basis in the specification for “reusable dispensing apparatus comprising a piercing member to pierce a membrane of a cap of the first end” (claim 5)
The disclosure is objected to because:
"Fig. 6 [...] illustrating [...]. [...] a fluid passageway that is sealed by membrane 60" of [0027] conflicts with the passage in [0026] "Fig. 6 shows membrane 15 in a pierce or punctured condition".
“nozzle 34” should be “nozzle 36” ([0021], Ln. 3)
“[…] embodiment, A container cap 11 […]” should be “[…] embodiment, a container cap 11 […]” ([0026], Ln. 3)
“[…] FIG. 3 […]” should be “[…] FIG. 5 […]” ([0026], Ln. 10)
Appropriate correction is required.
Claim Objections
Claims 7-8 and 12 are objected to because of the following informalities:
“[…] claim 1, the adapter further comprises […]” should be “[…] claim 1, wherein the adapter further comprises […]”. (claims 7-8)
“[…] second end of the containe.” should be “[…] second end of the container.” (claim 12)
Appropriate correction is required.
Drawings
The drawings are objected to:
because Fig. 6 does not show membrane 15 in a pierced or punctured condition as suggested by the specification ([0026], ln. 15)
under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
reusable dispensing apparatus comprising a piercing member to pierce a membrane of a cap of the first end (claim 5)
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: 59, 91.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
Claims 9-10 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.
As per claim 9, MPEP § 2163 II. A. 3. at paragraph three states: "An applicant may show possession of an invention by disclosure of drawings or structural chemical formulas that are sufficiently detailed to show that applicant was in possession of the claimed invention as a whole." Regarding the written description requirement for claims 9-10, insufficient details of the locking structure are provided.
MPEP § 2163 I. at paragraph two states: "To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention." Regarding the written description requirement for claims 9-10, insufficient details of the locking structure are provided.
As set forth in MPEP 2166 at form paragraph 7.31.01, the questions the examiner asked which were not satisfactorily resolved and consequently raised doubt as to possession of the claimed invention at the time of filing, include:
Claim 9 states: “a bottom side of the valve body further comprises […] a locking structure”. What are the physical characteristics of the structure such that enable locking? What relation does the locking structure have to other structures?
Therefore, for the reasons detailed above, claims 9-10 contain 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 9-10 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue”. These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The determination that “undue experimentation” would have been needed to make and use the claimed invention is not a single, simple factual determination. Rather, it is a conclusion reached by weighing all the above noted factual considerations. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404.
As per claim 9, the claim requires an apparatus comprising inter alia “a bottom side of the valve body further comprises: a locking structure”. The limitation “locking structure” invokes 35 USC § 112(f) and the specification does not set forth the particular structure comprising the “locking structure”. For at least this reason, one of ordinary skill in the art could not make and/or use an invention commensurate with the claim.
Claim 10 depends from claim 9 and thus inherit the deficiencies thereof.
Claims 1-14 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.
As per claim 1, the limitation “the contents” lacks antecedent basis in the claim.
As per claim 5, the limitation “to enclose the interior space containing the pressurized” is ambiguous. A correction may include: “to enclose the interior space containing the pressurized fluid”.
As per claim 6, the limitations “the reusable dispensing apparatus” and “the propellant” lack antecedent basis in the claims.
As per claim 9, claim limitation “locking structure” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
As per claim 10, the limitation “the adapter” lacks antecedent basis in the claims.
In view of the 35 USC § 112 issues noted above, although a search of the prior art has been conducted, no meaningful application of prior art against claims 9-10 can be made at this time. This should not be taken as an indication that the claims would be allowable if all of the noted issues are corrected. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
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 1-2 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 3613960 to Beard.
As per claim 1, Beard discloses an apparatus comprising:
a container (10) having an interior space (Fig. 1-2) configured to hold a pressurized fluid to dispense aerosolized (Col. 2, Ln. 43-60 – Col. 3, Ln. 2), the container comprises a first end and a second end (Fig. 1-2);
the first end of the container configured to dispense the contents of the pressurized fluid (12; Col. 2, Ln. 61-75); and
an adapter (22) coupled with the second end of the container, the second end shaped as an inverted dome (Fig. 2).
As per claim 2, Beard further discloses a valve (16) located inside the container, a stem coupled (24) with the container (Fig. 2), and a nozzle (17) coupled with the stem (Fig. 2) the stem providing a fluid passageway between the valve and the nozzle (Fig. 2).
As per claim 11, Beard further discloses a valve (16) located in the interior space of the container and coupled with the adapter at the second end of the container (Fig. 2); and a stem (24) coupled with the valve (Fig. 2).
As per claim 12, Beard further discloses a first nozzle (12) coupled with a first internal valve (11); and a second nozzle (17) coupled with second internal valve (16).
As per claim 13, Beard doesn’t explicitly disclose the claimed functionality of the first nozzle dispenses the pressurized fluid, aerosolized, when the container is in a first and a second orientation, and the second nozzle dispenses the pressurized fluid, aerosolized, when the container is in a second orientation and dispenses propellant from the interior space when the container is in a first orientation. However, it has been held that: a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art; and, if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2114(II). In addition, functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 or 103 may be appropriate. See MPEP §2114(IV). Furthermore, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP §2112.01(I). Beard discloses the claimed structure and is capable of dispensing, together, pressurized fluid and propellant from the first nozzle and the second nozzle in any orientation of the nozzles.
As per claim 14, Beard further discloses the container is cylindrical (col. 2, Ln. 43-60).
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.
Claims 1 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 20190270576 to Johnson in view of a first embodiment in US 6169421 to Williams (herein referred to as Williams1).
As per claim 1, and as the examiner can understand the claim, Johnson discloses an apparatus, comprising:
a container (10) having an interior space configured to hold a pressurized fluid to dispense (abstract), the container comprises a first end (Fig. 1 – first end attached to dispensing apparatus 50);
the first end of the container configured to dispense the contents of the pressurized fluid ([0054] and [0069]); and
Johnson does not explicitly disclose: the container configured to dispense aerosolized fluid; the container having a second end.
In regards to the limitation requiring the container to be configured to dispense an aerosolized fluid, it has been held that: a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations; a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art; and, if the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP §2114(II). In addition, functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 or 103 may be appropriate. See MPEP §2114(IV). Furthermore, when the structure recited in the prior art is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. See MPEP §2112.01(I).
In regards to the limitations pertaining to a second end of the container, Williams1 teaches an apparatus (Fig. 8) comprising a container (110) having an interior space configured to hold a pressurized fluid to dispense aerosolized (Col. 1, Ln. 6-8), the container comprising a first end (112 connected to 119) and a second end (112 connected to 33), and an adapter (33) coupled with the second end of the container (Fig. 8), the second end shaped as an inverted dome (Fig. 8), wherein the adapter is connected to a spray head (116). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify Johnson according to the aforementioned teachings from Williams1 to provide a bottom of the container capable of dispensing pressurized fluid.
As per claim 4, Johnson further discloses the first end further comprising a container cap (11) comprising a membrane (15) that seals the pressurized fluid within an interior space of the container, the pressurized fluid in the interior space is at an elevated pressure relative to an ambient pressure outside of the container ([0006])
As per claim 5, Johnson further discloses a reusable dispensing apparatus (50) that comprises a piercing member (27) that pierces the membrane when the reusable dispensing apparatus is installed on the container cap to establish fluid communication between the interior space and the reusable dispensing apparatus, the container cap being installed on the container to enclose the interior space containing the pressurized, and wherein the interior space enclosed by the container cap is devoid of a valve that controls emission of the fluid from the interior space ([0054], [0063]-[0064]).
As per claim 6, Johnson further discloses a threaded fastener (12, 19) comprising threading that engages a compatible fastener provided to the reusable dispensing apparatus to releasably couple the reusable dispensing apparatus to the container cap and establish a seal that interferes with an escape of the propellant between the container cap and the reusable dispensing apparatus after the membrane has been pierced (pg. 4, [0056], ln. 13-28).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 3613960 to Beard in view of Official Notice.
As per claim 3, Beard further discloses the valve being a spring-biased normally closed check valve (Col. 3, Ln. 30-54). Beard does not explicitly disclose the spring-biased normally closed check valve being a “Schrader” type valve. However, the Office makes official notice that it is old and well known that Schrader valves are spring-biased normally closed check valves. It therefore would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify the valve of Beard to comprise any other spring-biased normally closed check valve, including a Schrader type valve, since doing so would be an obvious substitution of one known spring-biased normally closed check valve for another spring-biased normally closed check, with the expected results that the substituted spring-biased normally closed check to control dispensing a fluid.
Claims 1 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over a second embodiment in US 6169421 to Williams (herein referred to as Williams2) in view of US 20190270576 to Johnson.
As per claims 1, 7, and 8, and as the examiner can understand the claim, Williams2 discloses an apparatus (Fig. 2) comprising:
a container (20) having an interior space configured to hold a pressurized fluid to dispense aerosolized (abstract), the container comprises a first end and a second end (Fig. 2);
each of the first end and the second end of the container having a nozzle and configured to dispense the contents of the pressurized fluid (Col. 3, Ln. 66-67; Col. 4, Ln. 1-6); and
the second end shaped as an inverted dome (Fig. 2).
Williams2 does not disclose an adapter coupled with the second end of the container. Johnson teaches an end of a container comprising a threaded adapter (12, 19) having a nozzle (31) and a sealed membrane (15) wherein the membrane is configured to be pierced when the adapter is coupled to a valve body (20, 30, 27; Col. 9, Ln. 39-50). It would have been obvious for one of ordinary skill in the art at the time the application was effectively filed to modify each end of the container of Williams2 according the aforementioned teachings from Johnson for reasons including to provide a compact form factor for a sealed container for reasons such as reduced shipping expenses.
Conclusion
The prior art made of record in FORM PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Gruby, whose telephone number is (571) 272-3415. The examiner can normally be reached from Monday to Friday between 8:00 AM and 5:00 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner’s supervisor, Paul Durand, can be reached at (571) 272-4459.
Another resource that is available to applicants is the Patent Data Portal (PDP). Information regarding the status of an application can be obtained from the (PDP) system. For more information about the PDP system, see https://opsg-portal.uspto.gov/OPSGPortal/. Should you have questions on access to the PDP system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/R.A.G/Examiner, Art Unit 3754
/PAUL R DURAND/Supervisory Patent Examiner, Art Unit 3754 June 11, 2026
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