Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 35-44 are rejected under pre-AIA 35 U.S.C. 102a or 102e as being anticipated by Lin (US 2012/0190122).
Regarding claim 35, Lin discloses a device for testing a liquid sample, the device comprising:
a cup comprising a planar forward wall (fig. 1-2, ref. 14) connecting to a curved rearward wall defining a D-shaped outer wall perimeter when viewed from above and below (see fig. 3);
a holder (fig. 1-2, ref 3) having an insertion portion (walls of 3) positioned in the cup and a cap portion (rim 17), the insertion portion of the holder having a planar face opposed to the forward wall of the cup to define a test strip receiving area therebetween wall 3 having area where test strips are placed, between ribs 24) ; and a plurality of test strips positioned in the test strip receiving area (test strips 25).
Regarding claim 36, device as set forth in claim 35, wherein the insertion portion and the cap portion of the holder are formed as portions of a unitary structure (fig. 1-2, structure 3 is unitary structure).
Regarding claim 37, a device as set forth in claim 35, wherein the cup comprises an inclined surface (65) extending from a higher position at the rearward wall to a lower position at the forward wall (wall at area 70 declines from a higher point at the rear wall to a lower point at the forward wall where the test strips are placed).
Regarding claim 38, a device as set forth in claim 37, further comprising a pedestal portion (fig. 1,2, ref. 70) integral with the inclined surface of the cup for engagement by a testing swab of a testing stem inserted through an access port in the cap (fig. 1, 2).
Regarding claim 39, a device as set forth in claim 38, wherein the pedestal portion comprises a securing structure to secure a sampling swab of the sampling stem (This limitation does not further structurally limit the instant claims because the sampling stem is not positively recited. Further, area 70 is shaped to accept a sampling swab 41).
Regarding claim 40, a device as set forth in claim 35, further comprising a gasket member located at a bottom of the insertion portion of the holder (fig. 2, structure 37).
Regarding claim 41, Lin device for testing a liquid sample, the device comprising:
a cup defining an interior cavity (fig. 1,2 ref. 2), the cup having a planar forward wall (front wall 14), a rearward wall flat wall at area 70 in fig. 2), and an inclined surface extending from a higher position at the rearward well to a lower junction line at the forward wall (see inclined surface 65 which extends from 70 to the forward wall);
a holder (fig. 1,2, ref. 3) having an insertion portion (walls of structure 3) positioned in the cup and a cap portion extending across and (area at 17) covering an open end of the cup so as to enclose the interior cavity (the rim 17 covers the outermost perimeter of the open end of the cup (12) and encloses the interior cavity (13) because the holder (3) takes up the entirety of the interior cavity and is in contact with the upper rim 17 which closes and thereby encloses the interior cavity as seen in fig. 2), the insertion portion of the holder having a planar face opposed to the forward wall of the cup (the planar face which holds the test strips 25), the planar face of the holder having a plurality of parallel ribs (structure 24) engaging the forward wall of the cup to define a plurality of elongate channels (ribs 24 engage the cup to seal around the test strips);
the cap portion (area 17) of the holder defining an access port (opening created by cap portion as seen in fig. 1) for receipt of the sampling stem (this limitation does not further structurally limit the instant claims), and a through passage structure extending from a bottom of the cap portion into the interior cavity of the cup (the insertion portion walls extend from the bottom of cap portion 17 to the bottom of the cup, see fig 2), the through passage structure being in register with the access port (opening created as seen inf fig. 1 and 2); and
a sampling stem (41) inserted through the access port of the cap, the sampling stem having a sampling swab at a distal end thereof (50).
Regarding claim 42, a device as set forth in claim 41, further comprising a gasket member (fig. 1, ref. 37) located at a bottom of the insertion portion of the holder (see fig. 1).
Regarding claim 43, a device as set forth in claim 42, wherein the gasket defines a plurality of riblets (33) respectively aligned with the parallel ribs (24) of the holder (see fig. 1).
Regarding claim 44, a device as set forth in claim 41, wherein the sampling stem is engaged with the access port via threads (fig. 1, threads 15 and threads on the underside of the lid 4 having the sampling stem).
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 22-44 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,491,517 and claims 1-20 of U.S. Patent No. 10,744,507. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are a broader version of Patent 12,491,517 and 10,744,507 and therefore are fully encompassed by those patents.
Response to Arguments
Applicant's arguments filed 4/17/26 have been fully considered but they are not persuasive. Applicant argues, “The claim requires a cup with "planar forward wall" and "a holder having an insertion portion ... [with] a planar face opposed to the forward wall of the cup." In Lin, the "area at window 14" and the "face where the strip strips reside" as mentioned in the Office Action are not "planar," but are arcuate as clearly shown in Figure 1 of the reference.” A planar forward wall is planar enough to accept a flat test strip as shown in fig. 1. There is not length or width that defines the planar wall.
Applicant argues, “The claim requires that "the insertion portion [of the holder] has a through passage structure extending from a bottom of the cap portion separate from the insertion portion into the interior cavity of the cup, the through passage structure being in register with the access port such that the sampling stem can be inserted therein." An example of the through passage structure is indicated by reference number 56 in the present application. The inner vessel 3 of Lin does not have "a through passage structure extending from a bottom of the cap portion [that is] separate from the insertion portion into the interior cavity of the cup."* The claim requires "a pedestal portion integral with the inclined surface of the cup so as to be in alignment with the through passage structure and the access port." Because Lin does not have a through passage structure as claimed, it cannot have a pedestal aligned with the through passage structure. Moreover, item 70 of Lin is a receptacle rather than a pedestal. In some ways, a receptacle is the opposite of a pedestal.” The rejection has been modified above to now map the insertion portion as the catch basin 80 which has a cylindrical side wall 81 at the bottom of the cap portion which is separate from the opening area 17 accepts the sampling stem therein, see fig. 2. The through passage structure being in register with the access port such that the sampling stem can be inserted therein (the sampling stem is not positively claim in the instant claims and can be added to the device at a later time. The through passage, catch basin 80 area in the middle of structure 3 is in register with but separated by a space 18 from the access port area 17 that is capable of accepting a sampling stem as seen in fig. 2).
Conclusion
THIS ACTION IS MADE FINAL. 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 SAMUEL P SIEFKE whose telephone number is (571)272-1262. The examiner can normally be reached Monday-Friday 8-5.
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/SAMUEL P SIEFKE/ Primary Examiner, Art Unit 1758
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