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 .
Response to Amendment
This office action is responsive to the amendment filed on June 17, 2026. As directed by the amendment: claims 1 and 3 have been amended and claim 2 has been cancelled. Thus, claims 1 and 3-20 are presently pending in this application with claims 6-17 presently withdrawn.
Response to Arguments
Applicant’s arguments, filed June 17, 2026, with respect to the rejection(s) of claim(s) 1 under 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, it appears that a double patenting rejection should have been made in the previous rejection. As such, the action is made Non-Final to address this issue.
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12076523 in view of Marks (US 4819653).
Regarding claim 1, claims 1 and 9 of the issued patent claims a medical stopcock assembly with position detection comprising: a medical stopcock including :a main body (5:52); a valve body (5:54), wherein the valve body defines a valve passageway (5:56) and is moveable relative to the main body between a first position where a first input port and an output port are in fluid communication via the valve passageway (5:58-60), a second position where a second input port and the output port are in fluid communication via the valve passageway (5:60-62), and a third position where the second input port and the first input port are in fluid communication via the valve passageway (5:63-65), and wherein an external surface of the valve body includes at least one position structure (6:5-6); and wherein the at least one position structure includes at least one recessed portion of the handle (claim 9).
While the issued claim claims that the position structure is configured to be sensed by a position sensor to determine whether the valve body is in the first position, the second position, or the third position, the issued claim does not explicitly claim the position sensor as part of the valve. Additionally, the issued claim does not claim wherein a portion of the valve body extends from a top of the main body, wherein the portion of the valve body extending from the top of the main body includes a handle.
Marks teaches a main body (stopcock 40 in fig. 1a and 6 comprising ports A, B, and C) and a valve body (4:9-28 discloses “an internal rotating T-shaped channel” an a lever L which connects to disk 50; these collection of elements forming the “valve body”). Marks discloses a portion of the valve body extends from a top of the main body (fig. 1a and 6 shows the lever extending out of the main body), wherein the portion of the valve body extending from the top of the main body includes a handle (disk 50 in fig. 6). Additionally, Marks teaches at least one sensor configured to sense the at least one position structure to determine whether the valve body is in the first position, the second position, or the third position (6:36-43 discloses "an optical electronic feedback system" to verify the stopcock positions).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the issued claim to further claim that a portion of the valve body extends from a top of the main body, wherein the portion of the valve body extending from the top of the main body includes a handle, as taught by Marks, in order to actuate the valve between the three positions. Additionally, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the issued claim to further claim the at least one sensor in order to enable the stopcock operable for its intended purpose.
Claims 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12076523 in view of Marks and in view of Tsoukalis (US 20170290974).
Regarding claim 18, modified issued claim 9 claims all of the claimed limitations set forth in instant claim 1 except that modified issued claim 9 does not claim a housing including the at least one sensor, wherein the housing holds the at least one sensor in a fixed position when the valve body moves relative to the main body.
Tsoukalis teaches a housing (module 44 in fig. 8) comprising a sensor (position detector 74 in fig. 8) which is configured to sense the position of a stopcock (stopcock 70 in fig. 8; paragraph 120). Tsoukalis teaches that the housing holds the sensor in a fixed position when the valve body moves relative to the main body (fig. 8 shows the detector positioned in a way so that it would remain stationary while valve 70 rotates). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the issued claim to claim the claimed limitations, as taught by Tsoukalis. This modification would enable the stopcock assembly to be provided in a single unit and would ensure the stopcock is appropriately placed relative to the sensor.
Regarding claim 19, modified issued claim 9 claims all of the claimed limitations set forth in instant claims 1 and 18 except that modified issued claim 9 does not claim the housing is attached to the main body.
Tsoukalis discloses the housing is attached to the main body (fig. 8 shows the housing receives stopcock 70, which would include the main body of the stopcock). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the issued claim to claim the claimed limitations in order to provide the stopcock assembly as a single unit.
Claims 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9 of U.S. Patent No. 12076523 in view of Marks in view of Tsoukalis and in view of Lee (US 20180245699).
Regarding claim 20, modified issued claim 9 claims all of the claimed limitations set forth in instant claims 1 and 18 except that modified issued claim 9 does not claim the housing includes a wireless communication device configured to communicate, to a computing device, sensor data sensed by the at least one sensor.
Tsoukalis further teaches that the housing includes a wireless communication device (paragraph 119 discloses wireless communication). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the housing of issued claim to include a wireless communication device, as taught by Tsoukalis, for the purpose of enabling the device to utilize complex pump programming and to relay information to users for improved patient safety (paragraph 119).
Lee teaches a wireless communication device configured to communicate, to a computing device, sensor data sensed by the at least one sensor (paragraph 220 discloses wirelessly transmitting the opening status of the valve). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the wireless communication device of the issued claim to be capable of communicating, to a computing device, sensor data sensed by the at least one sensor, as taught by Lee in order to relay information to the patient to improve patient safety.
Allowable Subject Matter
Claims 1 and 18-20 would be allowable with the filing of a terminal disclaimer to overcome the double patenting rejection(s), set forth in this Office action.
Claims 3-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the claim has been amended to include all of the claimed limitations set forth in previous claim 2 and is allowable for the same reason(s) provided previously in the Non-Final Rejection mailed on 3/18/2026.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY FREDRICKSON whose telephone number is (571)270-7481. The examiner can normally be reached Monday-Friday (9 AM - 5 PM EST).
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/COURTNEY FREDRICKSON/Primary Examiner, Art Unit 3783
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