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 .
Claim Objections
Claim(s) 14-17 is/are objected to because of the following informalities:
Claim 14, Ln. 4 recites “the bottom of the housing” which should read “a bottom of the housing” as it is a first introduction
Claim 17, Ln. 2 recites “the top of the housing” which should read “a top of the housing” as it is a first introduction
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(s) 2-20 is/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 pre-AIA the applicant regards as the invention.
Claim 2 recites the limitation “a first lock element comprising: a first lock element opening and a pair of first lock element retainers; a second lock element comprising: a second lock element opening and a pair of second lock element retainers” in Ln. 4-6 which deems the claim indefinite. The limitation defines each of a first lock element and a second lock element. The term “element” both in standard usage and as used in the instant specification refers to a singular piece. The disclosed structures readable on the instant claim are generally understood to be drawn to the embodiment of Figs. 68A-68D of the disclosure. What is understood as corresponding to the claimed first and second lock element openings are the openings in first and second lock elements 1820, 1822 where core member 1830 passes through. What is understood as corresponding to the claimed first and second lock element retainers are the pair of washer retainers 1850. Notably, the first lock element 1820 fits into one of the washer retainers 1850 and the second lock element 1822 fits into the other of the washer retainers 1850. Thus, each lock element 1820, 1822 when mated to a respective washer retainer 1850 does not define an individual “element” in standard English. Since applicant has not provided a special definition for the terminology “lock element” the claim is thus indefinite for using unconventional language and for using language in a manner inconsistent with the instant specification. Applicant may wish to consider individually reciting the lock element openings and the lock element retainers instead of reciting them together as part of a lock element. For the purposes of examination the limitation will be interpreted as reading “a first lock element comprising: a first lock element opening; a pair of first lock element retainers; a second lock element comprising: a second lock element opening; and a pair of second lock element retainers,” separating the lock element retainer recitations onto new lines.
Claim 2 recites the limitation “a first side wall and a second side wall extending between the first end wall and the second end wall” in Ln. 11-12 which deems the claim indefinite. The placement of the “extending between” language in the limitation leaves it unclear whether the “extending between” refers only to the second side wall or is also intended to refer to the first side wall. It appears the latter interpretation is more accurate. For the purposes of examination the limitation will be interpreted as reading “a first side wall and a second side wall each extending between the first end wall and the second end wall” to clearly identify the “extending between” as referring back to both side walls.
Claim 2 recites the limitation “wherein the pair of first lock element retainers are positioned on the first side wall and the pair of second lock element retainers are positioned on the second side wall; wherein the pair of first lock element retainers are configured to pivotally retain the first lock element within the first chamber and the pair of second lock element retainers are configured to pivotally retain the second lock element within the second chamber” in Ln. 21-26 which deems the claim indefinite. The limitation recites the respective pairs of lock element retainers each positioned on a respective wall, but then recites each pair of lock element retainers as pivotally retaining a respective lock element. In schematic terms the first side wall has been recited as having lock element retainers 1a and 1b (i.e. the “first lock element retainers”) while the second side wall has been recited as having lock element retainers 2a and 2b (i.e. the “second lock element retainers”). But then next the pair of lock element retainers on a single side wall (e.g. retainers 1a and 1b) are recited as together pivotally retaining the first lock element within the first chamber. This appears to be a clear typographical error since in Figs. 68A-68D of the instant application the retaining of an individual lock element is clearly performed by opposite side walls and not be a single side wall. Applicant needs to amend the limitation to clearly identify which lock element retainers are properly positioned on each side wall.
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(s) 2-5 and 19-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 and 12 of U.S. Patent No. 12,102,765. Although the claims at issue are not identical, they are not patentably distinct from each other because all requirements of instant claim 2 are reasonably found within the overall scope of patent claim 1, the instant claim merely being broader in scope (e.g. “core member” of instant claim 2 as corresponding to the “filament” of patent claim 1, “a first position and a second position” of instant claim 2 as corresponding to the “an open position and a locked position” of patent claim 1). A further mapping of dependent claims is as follows:
Instant claim 3 vs. limitations in patent claim 1 (e.g. “the at least one directional lock assembly is configured to selectively engage the at least one filament to resist movement of the at least one filament relative to the at least one directional lock assembly”)
Instant claim 4 vs. patent claim 1
Instant claim 5 vs. patent claim 12
Instant claim 19 vs. patent claim 1
Instant claim 20 as obvious in view of limitations in patent claim 1 (e.g. “the at least one directional lock assembly is configured to selectively engage the at least one filament to resist movement of the at least one filament relative to the at least one directional lock assembly”)
Allowable Subject Matter
Claims 2-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Some of the claims are additionally rejected based upon the above nonstatutory double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, the prior art fails to teach or suggest a directional lock assembly for a respiratory mask headgear including all elements and functionality recited by the instant claim. It is initially noted that the claim is afforded an effective filing date of 25 Mar 2015 based upon how the claim directly derives from Figs. 68A-68D of the instant application.
A closest reference to the instant claim is McLaren et al. (WO 2014/175752 A2) which includes an embodiment in Fig. 74 which is similar to that of Figs. 68A-68D of the instant application. It must, however, firstly be noted that the application from which McLaren is published (PCT/NZ2014/000074) is cited as incorporated by reference in the earliest provisional application to which the instant application claims priority benefit. Thus, Fig. 74 of McLaren would not be able to anticipate the instant claim because if Fig. 74 of McLaren would fully read on the instant claim then the instant claim would be entitled to a full priority benefit of 19 Sep 2014 which would disqualify McLaren as prior art under 35 U.S.C. 102(b)(2)(C).
What is at least missing in Fig. 74 of McLaren from the instant claim is any consideration of the recited pair of first lock element retainers and pair of second lock element retainers, their particular positioning on the side walls, and their particular function of retaining to allow pivotal motion. McLaren is fully silent on how lock members 2120, 2122 are connected to other structures. It is notable that the dotted line shown for possible motion of lock member 2120 in Fig. 74 appears to show it moved fully forward of its solid line position, which would not be suggestive of a pivoting connection in the instant claimed lock element retainers. Further, even if one of ordinary skill in the art had considered connecting lock members 2120, 2122 in a pivoting position there is not a preponderance of the evidence in the prior art that they would have sought to bring that functionality into actual practice by way of retainers in side walls, as recited by the instant claim. For example, one of ordinary skill in the art would likely have instead tried connecting lock members 2120, 2122 into the solid bottom wall of housing 2112 in Fig. 74 to provide a pivotal motion.
It is thus found that one having ordinary skill in the art at the time of the effective filing of the invention would only have arrived at the instantly claimed invention by way of improper hindsight reasoning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, see PTO-892 for additional attached references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH D BOECKER whose telephone number is (571)270-0376. The examiner can normally be reached M-F 9:00 AM - 4:00 PM.
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/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785