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 .
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: the term “air propulsion mechanism” has no antecedent in the specification.
Claim Interpretation
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.
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.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not 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 not 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 function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“air propulsion mechanism” in Claims 1, 11, and 15, is not clearly associated in the specification with sufficient structure. The specification describes a pump which can be used to deliver air pressure to a tip of a nozzle [0197], a fan which can evaporate treatment solution from the cartridge through the nozzle tip [0012,0036], a venturi (sic) [0221]. However, none of the description clearly associates the recited term with any of these structures. For purposes of examination, Examiner will consider “air propulsion mechanism to include one of these structures and their functional equivalents.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Applicant is advised that should Claim 1 be found allowable, Claims 11 and 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Claims 11 are so close in content (structural features, capabilities of electrode to physically contact liquid, and of nozzle to be in fluid communication with an air propulsion mechanism) that they cover the same thing despite slight differences in wording.
Claims 1, 11, and 15 are objected to because of the following informalities:
Claims 1, 11, 15: “in fluid communication in fluid communication”
Appropriate correction is required.
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 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.
Claims 1,11, and 15 recite the limitation “air propulsion mechanism” in Claims 1, 11, and 15. The specification describes a pump which can be used to deliver air pressure to a tip of a nozzle [0197], a fan which can evaporate treatment solution from the cartridge through the nozzle tip [0012,0036], and a venturi (sic) [0221]. However, none of the description clearly associates the recited term with any of these structures. The claim limitation “air propulsion mechanism” 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. For purposes of examination, Examiner will consider “air propulsion mechanism to include one of these structures and their functional equivalents.
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.
Claims 5 and 12 recite the limitation “prescribed medication that can be used for anti-inflammatory, anti-bacterial,” etc.. The limitation is indefinite, because it is not clear what distinguishes - - compositionally – a medication that is prescribed from a medication that is not prescribed. Additionally, the phrase “that can be used for” is vague, because it is not clear whether what follows is a sufficiently definite composition, since “can be used for” may also suggest it is not necessarily used for what follows. Additionally, it is not clear what medications are required, since the terms “anti-inflammatory,” ”anti-bacterial,” and “anti-infection” are adjectives without any accompanying noun, raising the question whether words have been omitted. Examiner interprets the limitation to include anti-inflammatory compounds, anti-bacterial compounds, or anti-infectives, and the like.
Claims 2-10, 12-14, and 16-20 are rejected as depending from rejected Claims 1,11, and 15.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 11-13,15-18, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,839,732. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Application Claims
US 11,839,732
Claims 1 (and similarly 11,15):
A disposable cartridge configured to be removably disposed in an electrostatic applicator, comprising:
-- a cartridge housing;
-- a nozzle
- positioned at and extended at least partially away from a distal end of the cartridge housing for applying a treatment solution,
- the nozzle being configured to deliver the treatment solution to a treatment site and
- configured to be in fluid communication in fluid communication with an air propulsion mechanism of the electrostatic applicator; and
-- at least one electrode to electrostatically charge and ionize molecules of the treatment solution of the cartridge so that the at least one electrode electrically physically contacts the treatment solution as the treatment solution flows therethrough and applies an electrical charge to the treatment solution.
Claims 1,19:
A handheld portable electrostatic device for electrostatically applying a treatment solution to a treatment site of a patient, comprising: a housing;
a cartridge removably disposed in the housing, the cartridge comprising:
-- (a) a cartridge housing;
-- (b) a nozzle
- positioned at and extended at least partially away from a distal end of the cartridge housing for applying the treatment solution,
- the nozzle of the cartridge being configured to deliver the electrostatically charged treatment solution and
- configured to be in fluid communication with an air supply tube in fluid communication with a pump in the housing; and
--(c) at least one electrode configured to electrostatically charge and ionize molecules of the treatment solution of the cartridge; wherein the treatment solution is configured to flow toward the nozzle whereby the at least one electrode electrically physically contacts the treatment solution as it flows therethrough and applies an electrical charge to the treatment solution; wherein the handheld portable electrostatic device is configured to spray the treatment solution in discrete particles ranging in size from approximately 0.05 to 40 micron.
Claims 2, 16
Claim 11
Claim 3
Claims 8-10
Claim 4
Claims 8-9
Claim 5
Claims 8-10
Claim 6
Claim 7
Claim 7
Claim 5
Claim 8
Claim 2
Claim 9
Claim 5
Claim 11
Claims 1,19
Claim 12
Claims 8-10
Claim 13
Claim 5
Claim 15
Claims 1,19
Claim 16
Claim 11
Claim 17
Claim 2
Claim 18
Claim 5
Claim 20
Claims 8-10
Claims 10, 14, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of U.S. Patent No. 11,839,732 in view of Lind et al. (US 2008/0083845).
US’732 claims a cartridge, including a treatment solution contained in the cartridge (i.e. cartridge preloaded with treatment solution). US’732 fails to claim a refillable cartridge with ab aperture on an outer surface of the cartridge housing. Lind et al. (US’845) is analogous art in the field of spayers, including cartridges and suggests a refillable cartridge, which necessarily requires an aperture of some kind in the cartridge housing for refilling. Additionally, US’845 suggests various apertures which can be used to refill the cartridge, including a capped aperture and a valve [0011, 0015]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the claimed cartridge with an aperture in the cartridge housing so that the cartridge is refillable, because US’845 suggests a refillable cartridge, requiring an aperture of some kind for refilling.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Inoue et al. (US 2018/0339303) teaches a disposable cartridge configured to be removably disposed in an electrostatic applicator, comprising [0041]: a cartridge housing 201 (Fig. 1; [0041] and a nozzle (discharger 251) positioned at and extended at least partially away from a distal end of the cartridge housing for applying a treatment solution, the nozzle being configured to deliver the treatment solution to a treatment site and configured to be in fluid communication in fluid communication with an air propulsion mechanism (pump 230) of the electrostatic applicator (Fig. 1; [0044]; and at least one electrode to electrostatically charge and ionize molecules of the treatment solution of the cartridge. US’303 teaches an induction electrode 259, which is neither in the cartridge housing nor physically contacting the treatment solution as the treatment solution flows therethrough and applies an electrical charge to the treatment solution (Fig. 3; [0058]). While conductive electrodes which charge a treatment fluid through physical contact are known, no prior art which teaches or fairly suggests a removable cartridge with both a nozzle and a conductive electrode has been identified.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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