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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20OCT2025 has been entered.
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 1-11 and 15-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. US 12350190 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they both a fluid permeable barrier with a fluid permeable barrier having a longitudinal portion which extends from the opening. Both device further comprise a main body and opening which taper from a larger width to a narrower one.
Instant Claim
US 12350190 B2 Claim
1, 9, 15
1
10, 11
7
Claim 2-8, 10, 11, and 16-24 are rejected based on their dependency.
Claims 12-14 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 12350190 B2.
Claims 12-14 represents a similar device to that of Claim 1, with the addition of a collection device. The use of a collection device in association with urine collection is well-known in the art and would be an obvious modification to incorporate the suction device and associated container of US 20170281399 A1 (VanMiddendorp et al.).
REASONS FOR ALLOWANCE
The following is an examiner’s statement of reasons for allowance:
US 20100234820 A1 (Tsai et al.), KR 20090072069 A, (Yoon), US 20060005307 A1 (Arguelles), and US 4692160 A (Nussbaumer) are the closest prior art of record.
Tsai teaches a fluid collection device comprising:
a fluid impermeable barrier defining a chamber, an opening;
a fluid permeable membrane extending across the opening;
a fluid receiving portion defined by the area of the fluid permeable membrane containing openings, said portion including a portion of the fluid impermeable barrier that defines all of or a substantial majority of the opening; and
a longitudinal portion considered to be configured to be positioned against the perineum as it is designed to be sealed around the genital region while providing a seal to contain urine, which would place it against the perineum;
wherein the fluid collection device exhibits a maximum length measured from a distal tip of the longitudinal portion to an opposing portion of the fluid receiving portion; and
wherein the fluid receiving portion exhibits a first maximum width measured perpendicular to the maximum length, and the longitudinal portion exhibits a second maximum width measured parallel to the first maximum width, and wherein the first maximum width is greater than the second maximum width.
Tsai fails to teach the longitudinal portion exhibiting an oblong shape and extending from the fluid receiving portion in a direction that is parallel to a longitudinal axis of the longitudinal portion, the longitudinal portion forming a distal end region that is positioned closer to a perineum of an individual than the fluid receiving portion during use, or wherein the chamber is defined by the fluid receiving portion and the longitudinal portion and therefore fails to teach the claimed device, alone or in combination.
Yoon teaches a fluid collection device, wherein a longitudinal portion exhibiting an oblong shape and extending from the fluid receiving portion in a direction that is parallel to a longitudinal axis of the longitudinal portion.
Yoon teaches away from the chamber extending into the longitudinal portion as defined and therefore fails to teach the chamber is defined by the fluid receiving portion and the longitudinal portion.
Arguelles teaches a fluid collection device comprising a fluid receiving portion with an opening, a longitudinal portion configured to be positioned against the perineum, wherein the fluid collection device exhibits a maximum length measured from a distal tip of the longitudinal portion to an opposing portion of the fluid receiving portion; and wherein the fluid receiving portion exhibits a first maximum width measured perpendicular to the maximum length, and the longitudinal portion exhibits a second maximum width measured parallel to the first maximum width, and wherein the first maximum width is greater than the second maximum width.
Arguelles fails to teach the fluid permeable membrane or the longitudinal portion defining the chamber as claimed. Arguelles therefore fails to teach the claimed device, alone or in combination.
Nussbaumer teaches a fluid collection device comprising a chamber, an opening, outlet, a fluid receiving portion, and a longitudinal portion extending to the perineum. The device is shaped wherein the fluid collection device exhibits a maximum length measured from a distal tip of the longitudinal portion to an opposing portion of the fluid receiving portion; and wherein the fluid receiving portion exhibits a first maximum width measured perpendicular to the maximum length, and the longitudinal portion exhibits a second maximum width measured parallel to the first maximum width, and wherein the first maximum width is greater than the second maximum width.
Nussbaumer fails to teach the fluid permeable membrane or the longitudinal portion defining the chamber as claimed. Nussbaumer therefore fails to teach the claimed device, alone or in combination.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANS KALIHER whose telephone number is (303)297-4453. The examiner can normally be reached Monday-Friday 08:00-05:00 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at (571) 272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANS KALIHER/ Examiner, Art Unit 3781
/SARAH AL HASHIMI/ Supervisory Patent Examiner, Art Unit 3781