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 .
Claim Rejections - 35 USC § 112
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 1-8 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. Regarding claim 1, the specification does not describe “pushing said pushbutton in a first direction translates said elevator in a second axial direction of said barrel when actuating means has engaged said threaded nut with said threaded rod.”
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) 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stapley (949163).
Regarding claim 19, Stapley discloses a method of filling and using a topical applicator (Fig. 4; page 2, lines 10-23), comprising: injecting a flowable compound (29) into a reservoir defined by a barrel (10) and an elevator (15, 16) in the barrel in an elevated position in the barrel (Fig. 4), the barrel connected to a manual operated drive mechanism comprising a nut (23) and a cooperating screw (14), the nut and screw is a non engaged position (Fig. 2), whereby the injection of the flowable compound moves the elevator and causes relative motion between the nut and screw (page 2, lines 10-23); engaging the nut and the cooperating screw by an externally exposed actuator (26) on the topical applicator (Fig. 3; page 2, lines 10-23).
It is noted that the claim explicitly recites the following two steps: the step of injecting a flowable compound and the step of engaging the nut and the screw. Since the claim does not explicitly recite any other method steps, it has been assumed that the claim only requires the two aforementioned steps. The limitation “whereby the injection of the flowable compound moves the elevator downwardly” in lines 4-5 of the claim appears to be describing the result of an unclaimed step (i.e., a step of orienting the barrel so that the elevator moves downwardly during the injecting step). Accordingly, the limitation “whereby the injection of the flowable compound moves the elevator downwardly” has not been given patentable weight.
It is also noted that “downwardly” can be interpreted as describing the relative motion between the elevator and the closed end of the barrel rather than referring to a spatial orientation of the barrel. Fig. 4 of Stapley shows that the elevator moves towards the closed end of the barrel during the injecting step.
Regarding claim 20, the method further comprising dispensing the flowable compound by rotation of a knob (28) connected to the drive mechanism.
Allowable Subject Matter
Claims 9-18 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to the claimed invention is Yamanaka (6905272). Yamanaka fails to teach or suggest said flowable compound can be added to said reservoir at the access port, causing said elevator to translate in a first axial direction of said barrel when the threaded portions of the nut are not engaged with said threaded rod.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONNELL ALAN LONG whose telephone number is (571)270-5610. The examiner can normally be reached Mon - Fri 8AM-5PM.
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/DONNELL A LONG/Primary Examiner, Art Unit 3754
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