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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-4, 6-10, 14-20 of U.S. Patent No. 12,275,270. Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between the patented claims 1 & 18 and instant claims 1 & 18 are minor and obvious from each other. Patented claims 1 &18 pertain to a species of the instant claims 1 & 18 and therefore anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would, necessarily, extend the rights of the species should the genus issue as a patent after the species. For example, instant claim 1 pertains to a device for removing a liquid from a container with a reservoir and conduit. Patented claim 1 pertains to a device for removing a liquid from a container with a reservoir, cap and conduit. That is the only difference. Therefore, the instant claim 1 is a broader version of the patented claim 1. and would read on the instant claim 1. Furthermore, in the instant claim 1, the claimed limitations can be found in the patented claim 1. Any infringement over the patented claim 1 would also infringe over the instant claim 1. Hence the instant claim 1 does not differ from the scope of the patented claim 1.
Similarly, instant claim 18 pertains to a method of removing a liquid from a container with a reservoir and conduit. Patented claim 18 pertains to a method for removing a liquid from a container with a reservoir, cap and conduit. That is the only difference. Therefore, the instant claim 18 is a broader version of the patented claim 18 and would read on the instant claim 18. Furthermore, in the instant claim 18, the claimed limitations can be found in the patented claim 18. Any infringement over the patented claim 18 would also infringe over the instant claim 18. Hence the instant claim 18 does not differ from the scope of the patented claim 18. In 214 USPQ 761, In re Van Ornum and Stang, broad claims in an application were held to be obvious double patenting over previous narrow claims.
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) 1, 2, 5-7, 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paine (US 8,646,611, cited in IDS).
Regarding claim 1, Paine teaches a device (30) for removing a liquid from a container (20), the container having a depressible valve (24), the device comprising: a reservoir (61) for holding the liquid removed from the container; a conduit (62) including a first end (near 69, Fig 6) and a second end (67, Fig 6-7), the first end fluidly coupled to the reservoir (Col 4, Ln 29-34), the second end configured to be fluidly coupled to the container (Col 4, Ln 39-43); the conduit position fixed relative to the reservoir (as shown in Fig 6, also Col 4, Ln 25-28; therefore fixed); wherein, when the second end of the conduit is fluidly coupled to the container, depressing the conduit actuates the depressible valve of the container to provide fluid communication of the liquid from the container, through the conduit, and into the reservoir (Col 5, Ln 3-9, 29-44).
Paine further teaches in claim 2 wherein each of the first end and the second end is stationary relative to the reservoir (per Fig 6, first end is stationary; Col 4, Ln 25-28; therefore, second end is also stationary);
in claim 5 wherein the reservoir includes a top (near 31) and a bottom (near 40), and the first end of the conduit is disposed intermediate the top and the bottom of the reservoir (as shown in Fig 5);
in claim 6 wherein the second end of the conduit extends beyond an entirety of the bottom of the reservoir (as shown in Fig 6);
in claim 7 wherein the second end of the conduit is removable (as shown in Fig 5 the entire reservoir and its conduit is removable);
Regarding claim 19, Paine teaches a method of removing a liquid from a container (20), the container having a depressible valve (24) comprising: removably attaching a device (30) for removing the liquid from the container (as shown in Fig 1-2; Col 3, Ln 16-20), wherein the device comprises: a reservoir (61) for holding the liquid removed from the container; a conduit (62) including a first end (near 69, Fig 6) and a second end (67, Fig 6-7), the first end fluidly coupled to the reservoir (Col 4, Ln 29-34), the second end fluidly coupled to the container (Col 4, Ln 39-43), the conduit position fixed relative to the reservoir (as shown in Fig 6, also Col 4, Ln 25-28; therefore fixed); and depressing the conduit onto the depressible valve of the container, wherein the conduit is configured to direct the liquid from the container to the reservoir when the conduit is depressed onto the depressible valve of the container (Col 4, Ln 3-9, 29-44).
Paine further teaches in claim 20 removing the device from the container (Col 3, Ln 32-35) and accessing the liquid within the reservoir (Col 4, Ln 51-55).
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) 3-4, 8 are rejected under 35 U.S.C. 103 as being unpatentable over Paine, in view of Lindenbaum (US 2,938,499).
Regarding claims 3-4, 8, Paine further teaches in claim 8 wherein the first end of the conduit is coaxial with the reservoir (Fig 6). Paine teaches substantially all features of the claimed invention except for wherein the reservoir is contained in a writing instrument and is in fluid communication with a distal end of the writing instrument.
Attention is directed to Lindenbaum that teaches in claim 3 wherein the reservoir (4) is contained within a writing implement (2); and in claim 4 wherein the reservoir is in fluid communication with a distal end (14) of the writing implement opposite the conduit (25), wherein the distal end is configured to dispense the liquid from the reservoir (Col 3, Ln 11-34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a reservoir that is contained within a writing instrument so that liquid can be dispensed from the distal end of the writing instrument, in view of Lindenbaum's teaching. This makes the reservoir refillable and the writing instrument can last longer than a normally disposable/unrefillable writing instrument.
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over Paine, in view of Hinze (US 5,884,816, cited in IDS).
Regarding claim 9, Paine teaches substantially all features of the claimed invention except for wherein the reservoir includes an indicum to measure an amount of the fluid within the reservoir.
Attention is directed to Hinze that teaches in claim 9 wherein the reservoir (20) includes an indicium (22) configured to measure an amount of the liquid within the reservoir (Col 4, Ln 23-25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add an indicium on the reservoir to measure amounts of liquid in the reservoir, in view of Hinze's teaching. Indicium on reservoirs are commonly placed on reservoirs to give the user an idea of the volume of liquid inside the reservoir.
Allowable Subject Matter
Claims 10-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 217565948U to Li is directed to the state of the art as relevant teachings of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER C CHIANG whose telephone number is (571)270-5613. The examiner can normally be reached Mon-Fri 10 AM- 6 PM EST.
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/JENNIFER C CHIANG/Primary Examiner, Art Unit 3754