Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
OBJECTION
2. The specification is objected to because of the following informality: the continuation information must be updated to indicate the issue of the parent ‘375 application as US 11,591,636.
NON-PRIOR ART REJECTIONS
3. 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.
Claims 1-6, 12-14, 18, 25, 27, 31-33, 35-38, and 42 are 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.
A) These claims are indefinite because ‘the closed nanoswitches’ in independent claim 1 lacks proper antecedent basis. Correction is required.
B) These claims are further indefinite because of inconsistency in the use of ‘nanoswitch’ (singular) and ‘nanoswitches’ (plural) in independent claim 1 and dependent claims 2-4, 6, 12, 18, 31-33, 35-38, and 42. Correction is required.
4. 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.
5. Claims 1-6, 12-14, 18, 25, 27, 31-33, 35-38, and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,591,636 in view of WO 2017/147398, published 08/31/17. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims and the pending claims are related as genus-obvious species. That is, the pending claims recite the same contacting, tethering, and measuring steps as the patented claims, and in addition the pending claims recite that the generic ‘force’ of the patented claims is the species ‘hydrodynamic force’. One of ordinary skill in the art considering the patented claims would have been motivated to use hydrodynamic force as the force in the measuring/detecting step because WO 2017/147398 disclosed that hydrodynamic force is one of the forces appropriate for use in nanoswitch analysis. See paragraph bridging pages 2 and 3, second paragraph on page 6, and pages 7-8, 10, 14-16, and 26-40. It would have been prima facie obvious to one of ordinary skill in the art considering the patented claims to carry out the pending claims in light of WO 2017/147398.
ALLOWABLE SUBJECT MATTER
6. Claims 1-6, 12-14, 18, 25, 27, 31-33, 35-38, and 42 are free of the prior art, but they are rejected for other reasons. The reasons for allowability over the prior art and closest prior art regarding similar claims were discussed by the examiner of the parent ‘375 application during prosecution, who indicated that the closest prior art includes WO 2017/147398, WO 2015/164602, and Hansen et al. (2017).
CONCLUSION
7. No claims are allowable.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH R HORLICK whose telephone number is (571)272-0784. The examiner can normally be reached Mon. - Thurs. 8:30 - 6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gary Benzion can be reached at 571-272-0782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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07/20/26
/KENNETH R HORLICK/ Primary Examiner, Art Unit 1681
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