DETAILED CORRESPONDENCE
Acknowledgements
This office action is in response to the application filed 6/23/2025.
Claims 1-17 are pending and have been examined.
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 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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S Patent No. 10,667,943. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantively identical limitations, except as to significantly change direction of liquid being fed to the nozzle from a fluid path within the ophthalmic dispenser. However, Cohen (US 2006/0086760 A1) discloses the change in direction (see fig. 1, at ref. 54, 58, 56).
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S Patent No. 12,336,932. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantively identical limitations, except as to significantly change direction of liquid being fed to the nozzle from a fluid path within the ophthalmic dispenser. However, Cohen (US 2006/0086760 A1) discloses the change in direction (see fig. 1, at ref. 54, 58, 56).
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 1-17 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. Claim 1 recites “said liquid pathway converging from said outlet to said inlet”, however, the Specification (¶ [0019] convergent from the inlet 16 to the outlet 18) and the Drawings (see fig. 4) show said liquid pathway converging from said inlet to said outlet.
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 1-17 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.
The term “significantly” in claim 1 is a relative term which renders the claim indefinite. The term “significantly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of Examination, “significantly” means any change in direction.
Claim 1 recites “said liquid pathway converging from said outlet to said inlet”. It is unclear as recited how Applicant’s invention converges from the source of fluid entrance (i.e. inlet) to the spray exit (i.e. outlet), whereas the Specification appears to reverse the description of outlet and inlet. For purposes of examination, Examiner assume Applicant recites the inverse “converges from said inlet to said outlet”.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-2 and 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen et al. (US 2006/0086760 A1) in view of Bowes et al. (US 2009/0152281 A1).
Re claim 1, Cohen discloses an ophthalmic dispenser (abstract, ¶ [0003]) comprising:
a nozzle (ref. 60) disposed to significantly change direction of liquid being fed to the nozzle from a fluid path (ref. 54, 58) within the ophthalmic dispenser, said nozzle defining a liquid pathway extending from an inlet to an outlet (ref. 56, see fig. 1 and 2), said liquid pathway appearing to have an inlet tapered toward an outlet (see fig. 2 ref. 56 appears to have a decreasing diameter from right to left), and diverges away, from said outlet, said tapered portion being in communication with said fluid path (see figs. 1-2 refs. 60, 56, 58 to 54).
To any extent Cohen is not explicit as to the convergence, Bowes discloses a nozzle (ref. 4, ¶ [00041) comprising:
a nozzle (ref. 14) defining a liquid (¶ [0041], see also abstract, flowable agent including…in a liquid) pathway (see fig. 1 interior of ref. 14) extending between an inlet and an outlet (see fig. 1 inlet and outlet 5 of ref. 14), said liquid pathway converging from said inlet to said outlet (see fig. 1);
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the nozzle of Bowes to further include a mounting ring, as suggested by Cohen, in order to evenly support the nozzle by placing support structures at a mid-point thereof and enable mounting within a pump dispenser opening.
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify nozzle of Cohen, to further have a converging liquid pathway, as taught by Bowes, in order to prevent clogging and ensure even dispersal of liquid.
Re claims 10, Bowes further discloses further comprising a reduced diameter section about said outlet (see fig. 1 outlet 5 having a reduced diameter about the outlet relative to diameter of the rest of the nozzle 14).
Re claim 2¸Bowes discloses as shown above and further discloses wherein a length is defined between said inlet and said outlet (see fig. 1 length of ref. 14), said length appearing more than eight times greater than the diameter of said outlet (see fig. 1 length of pathway appearing to be significantly greater than the diameter of the outlet).
To the extent Bowes does not describe the length and diameter of the outlet explicitly in the description, regarding the recitation “said length being more than eight times greater than the diameter of said outlet,” the mere change in shape or size/proportion of the nozzle dimensions would have been obvious to one of ordinary skill in the art, depending on the desired spray pattern; Where the change to the claimed range of relative dimensions would not be expected to perform differently than the prior art device showing a length significantly greater than the diameter and would not yield unexpected results (i.e. changing the length and outlet diameter would depending on the liquid, yield expected changes in a different flow pattern with the nozzle and pressure drop/velocity increase such to affect the liquid output at the outlet). See MPEP 2144.04(IV)(A) and (B) Changes in Size/Proportion or Changes in Shape.
Further, the selection of the ratio of length to diameter of the outlet would also have been an obvious optimization of a result effective variable, easily obtainable through routine experimentation depending on the desired output of the dispensing/spray; Where it is generally understood from basic fluid dynamics that length affects pressure loss, laminar/turbulent flow characteristics, usage of space; and the outlet diameter affects volumetric flow, pressure drop, velocity increase, and outlet spray/dispensing dispersal and pattern. See MPEP 2144.05(II) Routine Optimization.
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the length to be more than eight times the outlet diameter, in order to promote laminar flow and to achieve a desired spray dispersal and pattern.
Re claims 13, Bowes further discloses a mounting ring (ref. 16 mounting ring, for mounting to ref. 18, 15) extending from said nozzle portion.
Claims 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen in view of Bowes, as applied above, and further in view of Lott (EP 2332438 A1).
Re claim 3, Cohen/Bowes discloses as shown above and Bowes discloses as shown above including a longitudinal axis extends along said liquid pathway (see fig. 1 longitudinal axis of interior of ref. 14), but does not explicitly disclose said liquid pathway converging at an angle of convergence in the range of .25 - 1.0 degrees relative to said longitudinal axis.
Lott discloses it is known in the nozzle art (abstract; see also ¶ [0002] citing as relevant art EP equivalent of Bowes) for flowable agents (¶ [0007]-[0008]) to increase flow velocity and reduce risk of clogging (abstract) to provide a nozzle (abstract, ref. 10) including a liquid pathway (see fig. 1 pathway between Ain and Aout) converging at an angle of convergence in the range of .25 - 1.0 degrees relative to said longitudinal axis (ref. α, ¶ [0006] 0.0° < α < 15.0° with specificity as narrow as +/- 0.2 degrees) relative to said longitudinal axis.
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the nozzle of Cohen/Bowes to further have a converging liquid pathway at an angle of converge in the range of 0.25 – 1.0 degrees, as taught by Lott, in order to promote nearly laminar flow to prevent accumulation and agglomeration of particles within the flowable agent (Bowe ¶ [0002], Lott ¶ [0007]).
Re claims 4-9, Lott further discloses wherein the ratio of the diameter of said inlet to the diameter of said outlet is in the range of 1.05-1.1 (¶ [0010] ratio 0.0 < Aout/Ain; i.e. Ain/Aout > 1). Moreover, the change in shape or size/proportion and optimization of the result effective variable of inlet/outlet ratio through routine experimentation for achievement of a desired dispersal pattern or spray is prima facie obvious to one of ordinary skill in the art (see discussion rejection to claim 1 above); where is it generally understood in fluid dynamics that the ratio of the inlet/outlet ratio affects pressure drop, formation of laminar/turbulent flows and velocity increase and dispersal angles/patterns.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen in view of Bowes, as applied above, and further in view of Materna (US 2002/0084290 A1).
Re claim 11, Cohen/Bowes discloses as shown above but does not explicitly disclose wherein said reduced diameter section includes a chamfered section which extends from said outlet and flares inwardly therefrom. However, Materna discloses it is known in the nozzle art (abstract) for dispensing flowable agent (abstract, liquids) through narrow diameter jets (¶ [0003]) and small angles of convergence (¶ [0013, [0070] gradually tapering) to provide a reduced diameter section (see fig. 3 region generally indicated by ref. 330) includes a chamfered section (see fig. 3 ref. 330 being a linear angle section, as compared to base of nozzle 300 around inlet 305) which extends from said outlet and flares inwardly therefrom (see fig. 3 [0066]).
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the nozzle of Cohen/Bowes to further have a chamfered section at a reduced diameter section, as taught by Materna, in order to provide greater structural support for the nozzle base and/or for aesthetic/bulkiness purposes. Moreover, it being simply an engineering design choice regard the exterior shape and/or appearance. See MPEP 2144.04(I) Aesthetic Design Changes and MPEP 2144.04(IV)(B) Changes in Shape.
Re claim 12, Materna further discloses it is known to treat a liquid pathway (see fig. 3, ref. 320 between ref. 305 and 3215) to be hydrophobic (¶ [0050] hydrophobic; ¶ [0150] coat land with low surface energy; ¶ [0156]-[0157] make entire discharge region low-surface-energy).
At the time of filing, it would have been obvious to one of ordinary skill in the art to further modify the liquid pathway of Cohen/Bowes to be treated to be hydrophobic, as suggested by Materna, in order to arrest and define the spread of liquid depending on the particular fluid being dispenses and individual circumstances (¶ [0150]).
Claims 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen in view of Bowes, as applied above, and further in view of Deussen (US 2004/0050881 A1).
Re claims 14-17, Cohen/Bowes discloses as shown above, but does not explicitly disclose wherein said mounting ring is generally bowl-shaped. However, Deussen discloses it is very old and well-known in the nozzle art (abstract) to provide a mounting ring (ref. 14, 15) extending from a nozzle portion (ref. 12, see figs. 1-3), wherein said mounting ring is generally bowl-shaped (see fig. 1 concave-shape of ref. 14). Re claim 15, wherein said outlet (ref. 25) is located on an inner side of the bowl shape (see fig. 1 concave-shape of ref. 14) of said mounting ring (see fig. 1, ref. 25 located on inner side of bowl). Re claim 16, wherein said outlet extends beyond said mounting ring (see fig. 1). Re claim 17, wherein said inlet is spaced from said mounting ring (see fig. 1 ref. 21 spaced internally from mounting ring 14).
At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the mounting ring of Cohen/Bowes to include an outward facing bowl shape with the outlet located on an inner side of the bowl shape, as suggested by Deussen, in order to securely attach the nozzle to a desired source bottle or structure through a wider opening.
Conclusion
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KEVIN G. LEE
Examiner
Art Unit 1711
/KEVIN G LEE/Examiner, Art Unit 1711
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