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 .
Specification
The disclosure is objected to because of the following informalities: Paragraph [0001] makes reference to US Provisional Patent Application Serial No. 62/072,656 but does not make reference to the intervening US Non-Provisional Patent Application Serial No. 15/523,193 – issued as US Patent No. 11,484,694 on 11/1/2022. If the first paragraph is going to make reference to one US priority document, it should make reference to them all. Appropriate correction is required.
Claim Objections
Claims 26 and 27 are objected to because of the following informalities: Each of claims 26 and 27 recite the phrase “the individual”, but no such “individual” has been introduced in claim 18; therefore, the term “the” in each of these phrases should be replaced with the term “an”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 25 is 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.
Claim 25 recites that “the distance from the device to the push node is about 4 cm”.
This “distance from the device to the push node” lacks proper antecedent basis. Although claim 24 (upon which claim 25 depends) introduces “a distance between the device and the push node”, a distance between the two elements is not necessarily the same as a distance from one element to the other. Therefore, it is unclear if the “distance” of claim 25 is intended to be the same “distance” as that of claim 24 (and, therefore, should recite “the distance between the device and the push node” instead of “the distance from the device to the push node”) or a different distance (and, therefore, should recite “a distance from the device to the push node” instead of “the distance from the device to the push node”).
If the former is the intended interpretation, then the scope of what is meant by a distance being “adjustable” (as in claim 24) and also being “about 4 cm” (as in claim 25). That is, can the adjustability be only in a range that is “about 4 cm” or does the range of adjustability include a distance of “about 4 cm”?
For the sake of examination, the “distance” of claim 25 is interpreted as being the same “distance” as that of claim 24 and the adjustability of claim 24 is interpreted as including a distance of about 4 cm. Therefore, it is suggested to amend claim 25 to recite “wherein the distance [[from]] between the device [[to]] and the push node [[is]] can be about 4 cm”.
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 18, 21, 22 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 12 and 13 of U.S. Patent No. 11,484,694. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of pending claims 18 and 28 is fully disclosed in patented claim 9, the subject matter of pending claim 21 is fully disclosed in patented claim 13, and the subject matter of pending claim 22 is fully disclosed in patented claim 22.
Allowable Subject Matter
The subject matter of claims 18-35 would be allowable except for the presence of the double patenting rejection on claims 18, 21, 22 and 28, the 112(b) rejection on claim 25, and the objections on claims 26 and 27.
The following is a statement of reasons for the indication of allowable subject matter: The subject matter of independent claim 18 could either not be found or was not suggested in the prior art of record. Claim 18 requires a device for directing an agent through a material, the device comprising: two magnetic elements, each producing their own magnetic field, wherein a first of the magnetic elements has a magnetization opposite a second of the magnetic elements, wherein the magnetic elements are positioned in a linear orientation along a vertical axis and define a minimal convex set such that a push node is outside the minimal convex set, wherein the two magnetic fields create a combined field and a pushing force in a vertical direction along the vertical axis of the linear orientation of the magnetic elements.
The closest prior art of record is PG PUB 2010/0212676 to Shapiro et al. which discloses a device (seen in Fig 1, wherein the magnets 12 are encapsulated in polymer resign together as described in Para 31) for directing an agent 20 (Fig 1) through a material, the device comprising: two magnetic elements 12,12 (Fig 1), each producing their own magnetic field (Para 27), wherein the two magnetic elements each have a magnetization opposite the other (as seen in Fig 1, wherein the top magnet has a left-directed south pole and a right-directed north poles while the bottom magnet has a left-directed north pole and a right-directed south pole), wherein the magnetic elements are positioned in a linear orientation along a vertical axis (extending vertically in Fig 1) and define a minimal convex set (as seen in Fig 3B; Para 19) such that a push node 40 (Fig 4) is outside the minimal convex set (as seen in Fig 4; Para 21), and wherein the two magnetic fields create a combined field and a pushing force (Para 20,27). However, Shapiro discloses that the pushing force is in a horizontal direction (as seen in Fig 1), not in “a vertical direction along the vertical axis of the linear orientation of the first magnetic element and the second magnetic element” as claimed. A teaching that linear orientation of two oppositely-magnetized magnetic elements along a vertical axis can result in a pushing force in a vertical direction along the vertical axis of the linear orientation could not be found nor was suggested elsewhere in the prior art of record. Absent such a teaching, it would not have been obvious to one of ordinary skill in the art at the time the application was filed that Shapiro could be modified to meet all claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. PG PUB 2011/0144411 to Sandhu et al., PG PUB 2002/0016582 to Gray, US Pat 5,921,244 to Chen et al., and US Pat 5,817,000 to Souder each disclose magnetic assemblies configured to direct agent into or through a material.
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/KAMI A BOSWORTH/Primary Examiner, Art Unit 3783