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 .
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.
Claim 5 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim 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, at the time the application was filed, had possession of the claimed invention.
Claim 5 recites the limitation “wherein the cap is disposable in an overlapping configuration with the second end of the hub.” This limitation is absent in the originally filed disclosure. The cap is described throughout the specification and figures as being coupled to the adapter body rather than the hub (See Figures; [0014]; [0016]; [0038]; [0043]). There is no mention or hint of overlapping the cap with the second end of the hub. It is abundantly clear from the originally filed disclosure that the hub and cap are interchangeable with one another and each mate separately with the adapter body—the hub while the applicator is in use, and the cap when the applicator is not in use. The instant specification and figures also clearly show that the second end of the hub is occupied by the needle. Incorporating the cap at such a position would require removing the needle or somehow accommodating the needle within the cap. The originally filed disclosure provides no support for such an embodiment.
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.
Claim 5 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 5 recites the limitation “wherein the cap is disposable in an overlapping configuration with the second end of the hub.” Claim 1 previously recites the cap as being “disposable in an overlapping configuration with the second end of the adapter body.” These limitations provide two distinct and mutually exclusive cap positions within the claim. Therefore one of ordinary skill in the art is not reasonably apprised of the metes and bounds of the claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Atwell (US 2015/0158050) in view of Milan (US 2013/0214013).
Atwell teaches an adhesive applicator (100) comprising a cap adapter (102) having a first portion (106) and an opposing second portion (108), a threaded cavity (116) within the first portion and configured to couple with a threaded collar (112) of an adhesive container (110), an applicator tip (104) removably coupled to the second portion of the cap adapter, the applicator tip having a lower end disposed adjacent to the second portion of the cap adapter and an opposed upper end, and a needle (122), the needle being recessed within the applicator tip and projecting outwardly therefrom in a linear orientation, wherein an adhesive pathway (126) passes through the entire length of the adhesive applicator, including the cap adapter, the applicator tip, and the needle (See Figures; [0013]-[0028]). The cap adapter (102), first portion (106), second portion (108), threaded cavity (116), an adhesive container (110) read on the instantly claimed adapter body, first end, second end, recessed internal wall, and tube, respectively. The applicator tip (104), lower end, upper end, and needle (122) read on the instantly claimed hub, first end, second end, and needle member, respectively. The adhesive pathway (126) forms both an internal channel in the cap adapter and a needle channel which are in fluid communication as claimed.
Atwell does not teach a cap which may be selectively coupled to the adapter body in a watertight configuration and overlapping the second end of the adapter body.
Milan teaches a dispensing adapter (10) comprising an adapter body (11) having a first end configured to couple with a tube (30) and a second end having a threaded tip (12) on which custom dispensing tips (17,20) or a closed cap (18) may be attached (See Figures; [0016]-[0033]). The adapter body (11), tube (30), dispensing tips (17,20), and closed cap (18) read on the instantly claimed adapter body, tube, hub, and cap, respectively.
It would have been obvious to one of ordinary skill in the art to provide a closed cap in place of the applicator tip of Atwell when the adhesive applicator is not in use. The motivation to do so would have been the motivation provided by the teaching of Milan that to do so would predictably close and seal the tube to prevent materials therein from drying out (See [0030]; [0033]).
Regarding the limitation requiring that the cap is watertight when applied, such a feature is implicit in the teachings of Milan. Milan teaches that the cap closes and seals the tube to prevent drying (See [0030]; [0033]). Since the purpose of the cap is to seal the tube and thereby prevent leakage and spoilage, it is reasonable to conclude that the cap is hermetically sealed.
Regarding claim 2, the first portion (106) and second portion (108) of Atwell form a lower section and upper section, respectively, and are tapered as claimed (See Figures; [0024]).
Regarding claims 3 and 7, Atwell teaches a tube (130) surrounded by an internally threaded collar (118,120) in which the applicator tip (104) is disposed (See Fig. 3 and its description). The tube and collar form a spout surrounded by a recessed annular channel with the hub disposed in the channel as claimed.
Regarding claim 4, the first and second portions of the cap adapter of Atwell are formed integrally as a monolithic body (See Figures).
Regarding claim 6, the needle of Atwell has an exemplary inner diameter of 1.753 mm, which is approximately 14 gauge (See Figures; [0021]).
Regarding claim 8, Atwell does not disclose a length variance, which is equal to the length of the hub, being 0.5 to 1.5 inches. The selection of an appropriate length for the applicator tip (104) in the adhesive applicator of Atwell would be a routine matter of design choice for one of ordinary skill in the art. Atwell teaches that the needle length is routinely selected to allow the applicator tip to apply adhesive into a desired area in a precise manner (See [0026]). The applicator tip size would be selected based on its ability to support the needle and to be attached to the cap adapter. The instantly claimed range of hub length does not impart any new or unexpected result, but rather allows for the same predictable adhesive application, needle support, and adapter body attachment. Therefore the selection of a desired hub length would have been an obvious matter of design choice to one of ordinary skill in the art at the time of filing.
Claims 9-16 are rejected under 35 U.S.C. 103 as being unpatentable over Atwell (US 2015/0158050) in view of Milan (US 2013/0214013) and Mikkelson (WO 2022/063703).
Atwell teaches a method of applying adhesive, the method comprising: providing a cap adapter (102) with a threaded cavity (116) and an applicator tip (104) with a needle (122) coupled thereto, wherein the needle has an adhesive pathway (126) therethrough terminating at an exit opening (128) of the needle; coupling the threaded cavity (116) to a threaded collar (112) of an adhesive container (110); positioning the applicator tip and needle in a desired position for adhesive application; and applying a force to the adhesive container to push adhesive through the adhesive pathway and out of the exit opening at the desired position (See Figures; [0013]-[0029]). The cap adapter, applicator tip, needle, and exit opening read on the instantly claimed adapter body, hub, needle member, and opening, respectively. The adhesive pathway forms both an internal channel in the adapter body and a needle channel through the needle as claimed.
Atwell does not expressly disclose that the desired position may be between a piece of flooring material and a subfloor.
Mikkelson teaches a method of repairing flooring where tiles have become separated from a subfloor, the method comprising providing an adapter (160), threadedly coupling the adapter to an adhesive cartridge (170), providing an injection nozzle (150) on the adapter, inserting the injection nozzle into a void between the tiles and the subfloor, and injecting adhesive through the injection nozzle into the void (See Figures; p. 10, line 1 to p. 11, line 23; Claim 1). The adapter, cartridge, and nozzle read on the instantly claimed adapter body, tube filled with an adhesive material, and hub with a rigid needle member, respectively.
It would have been obvious to one of ordinary skill in the art at the time of filing that the desired position in the method of Atwell could be a void between a flooring material and a subfloor since Mikkelson teaches that adhesive applicators with slender nozzles were recognized in the prior art as being suitable for applying adhesive within such a void (See Figures; Claim 1).
Atwell does not expressly disclose a step of removing the applicator tip and applying a cap on the adapter body in a watertight configuration.
Milan teaches a dispensing adapter (10) comprising an adapter body (11) having a first end configured to couple with a tube (30) and a second end having a threaded tip (12) on which custom dispensing tips (17,20) or a closed cap (18) may be attached (See Figures; [0016]-[0033]). The adapter body (11), tube (30), dispensing tips (17,20), and closed cap (18) read on the instantly claimed adapter body, tube, hub, and cap, respectively.
It would have been obvious to one of ordinary skill in the art to provide a closed cap in place of the applicator tip of Atwell when the adhesive applicator is not in use. The motivation to do so would have been the motivation provided by the teaching of Milan that to do so would predictably close and seal the tube to prevent materials therein from drying out (See [0030]; [0033]).
Regarding the limitation requiring that the cap is watertight when applied, such a feature is implicit in the teachings of Milan. Milan teaches that the cap closes and seals the tube to prevent drying (See [0030]; [0033]). Since the purpose of the cap is to seal the tube and thereby prevent leakage and spoilage, it is reasonable to conclude that the cap is hermetically sealed.
Regarding claim 10, the cap of Milan is applied over the threaded tip (12) of the adapter body (11) in a hermetically sealed manner (See Figures), which meets the claim.
Regarding claim 11, the applicator tip of Atwell is directly adjacent to the cap adapter (See Figures).
Regarding claim 12, Atwell teaches a tube (130) surrounded by an internally threaded collar (118,120) in which the applicator tip (104) is inserted (See Fig. 3 and its description). The tube and collar form a spout surrounded by a recessed annular channel with the hub inserted in the channel as claimed.
Regarding claim 13, the applicator tip of Atwell is threadedly coupled to the cap adapter (See Figures).
Regarding claim 14, the needle of Atwell extends from the applicator tip in a linear orientation and has a distal end as claimed (See Figures).
Regarding claim 15, the cap adapter (102) of Atwell has a first portion (106) and a second portion (108) tapered relative to the first portion, a threaded cavity (116) within the first portion and configured to couple with a threaded collar (112) of an adhesive container (110) (See Figures; [0014]-[0027]). The first portion is a lower section having a first end, and the second portion is an upper section adjacent to the lower section and having a second end. The threaded cavity is a recessed internal wall surface with a threaded configuration and is threadedly coupled to the adhesive container, which is a tube as claimed.
Regarding claim 16, Atwell discloses an exemplary inner needle diameter of 1.753 mm, which is approximately 14 gauge (See Figures; [0021]).
Response to Arguments
Applicant’s arguments, filed with respect to the double patenting rejection over claims 1-14 of U.S. Patent 12,410,628 have been fully considered and are persuasive. There terminal disclaimer filed 02/06/2026 has been approved, rendering the rejection moot. This rejection has been withdrawn.
Applicant's arguments with respect to the prior art rejections have been fully considered but are not persuasive.
Applicant argues that the Atwell and Milan references are in different fields of endeavor and are non-analogous art because they deal with adhesives having different viscosities, which require different application pressures and may be used in different applications. Examiner respectfully disagrees because both references pertain to the same field of adhesive application with nozzles. One of ordinary skill in the art would readily understand that differing adhesives have different viscosities and may be more useful for certain applications than others. This does not mean that every single adhesive applicator using an adhesive with a differing viscosity or different desired end use occupies its own unique field of endeavor and is wholly unrelated to any other adhesive applicator as asserted by the Applicant.
Applicant argues that there is no motivation to combine Atwell and Milan. Examiner respectfully disagrees and maintains that such motivation is clearly presented in the rejection, particularly the teaching of Milan that a cap predictably closes and seals the tube to prevent materials therein from drying out (See [0030]; [0033]).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper.
Applicant argues that Atwell teaches away from using a cap because the reference emphasizes benefits of a Luer lock mechanism. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed. In this case, the presence of the Luer lock in no way teaches away from the inclusion of a cap. The Luer lock if Atwell provides a secure attachment between the applicator tip and the adapter for adhesive application rather than a seal for the adhesive material when the applicator is not in use. Therefore the teaching of the Luer lock in no way criticizes, discredits, or discourages the use of a cap. It also cannot be said that the reference even expresses a general preference for a Luer lock over a cap, since the two items fulfill different purposes.
Applicant argues that the combination of Atwell and Milan would render the invention of Atwell unsuitable for its intended purpose. Examiner respectfully disagrees and maintains that the incorporation of a cap in the applicator of Atwell would not interfere with such an applicator’s ability to perform its intended purpose of applying adhesive. Since a cap is only utilized when the applicator is not in use, it is unclear how the presence of such a cap could somehow render the applicator unable to apply adhesive as asserted by the Applicant.
Applicant asserts that incorporating a cap in the applicator of Atwell would create structural weakness, fitting misalignment, or flow obstruction. These problems are fabricated by the Applicant with no clear articulation of how the cap would create such issues, and the Examiner finds no compelling reason to suspect that the incorporation of a sealing cap would negatively impact the applicator tip of Atwell in these ways.
Applicant argues that the incorporation of a cap, such as that of Milan, would require substantial redesign of the applicator tip of Atwell due to the difference in thread position, with the threads being internal on the cap of Milan, with no corresponding external threads on the adapter body of Atwell. Examiner respectfully disagrees. With threaded mating surfaces, the threads are present on one of two positions on any given part, an interior or an exterior. When providing a cap on a particular structure, the threads need only be provided on a compatible surface of the cap relative to the structure to be closed. In the instant case, this would involve adding external threads to the adapter body of Atwell or, more simply, placing external threads on the cap rather than the internal threads present in the Milan reference. Applicant states that such an adjustment represents a complex and substantial redesign which fundamentally changes the operation of the applicator, invites various complications and problems, and that such a change requires testing and design which are beyond ordinary skill in the art. Examiner believes that the Applicant has vastly overstated the complicated nature of the issue of mismatched thread positioning. Examiner maintains that the matching of the threads when incorporating a cap into the applicator of Atwell would be a routine matter of design choice well within ordinary skill in the art and would require minimal and simple redesign which involves only slightly altering thread positions.
Applicant argues that one of ordinary skill in the art would not have a reasonable expectation of success when combining the cap of Milan with the applicator of Atwell. Examiner respectfully disagrees and takes the position that one of ordinary skill in the art would have a reasonable expectation that the incorporation of a cap would successfully seal the applicator to prevent adhesive from drying or curing prematurely during storage.
Applicant’s argument with respect to the support for the new limitations of claim 5 in the originally filed disclosure have been fully considered but are not persuasive. Applicant refers to paragraph [0049], particularly step 602 of “providing an adapter body 104, hub 116, needle member 110, and/or cap 400.” This broad recitation does not provide adequate support for the limitation “wherein the cap is disposable in an overlapping configuration with the second end of the hub.” Within the same process described in paragraph [0049] and shown in Fig. 6, the subsequent step 610 uncouples the hub from the adapter and replaces the hub with the cap. Applicant asserts that the new limitation need not be recited verbatim in the originally filed disclosure, but may instead be supported through express, implicit, or inherent disclosure using words, structures, figures, diagrams, and/or formulas. No support, whether direct or implied, is present for claim 5 as amended.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARSON GROSS whose telephone number is (571)270-7657. The examiner can normally be reached Monday-Friday 9am-5pm Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARSON GROSS/ Primary Examiner, Art Unit 1746