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 .
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.
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Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 9-10, and 12-13 of copending Application No. 18268252 (reference application) in view of Estes (US 20190099613 A1).
Regarding claim 1, claim 1 of the reference application reads on all limitations except wherein the housing (which maps to the casing of the reference claim) is wearable.
However, Estes teaches a wearable UV disinfection device (Title: Wearable Ultraviolet Light Phototherapy Device) that is used for disinfecting body parts (abstract: The wearable ultraviolet light phototherapy device can have a substrate or a housing that is to be worn on a body part of a patient. At least one ultraviolet light emitting source located about the substrate or housing can deliver ultraviolet radiation into the body part of the patient).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the casing of the reference claim 1 to be wearable, as taught by Estes, to conveniently disinfect body parts.
Instant claim 2 is rejected over reference claim 2 in view of Estes.
Instant claim 3 is rejected over reference claim 3 in view of Estes.
Instant claim 4 is rejected over reference claim 4 in view of Estes.
Instant claim 5 is rejected over reference claim 13 in view of Estes.
Instant claim 6 is rejected over reference claim 1 in view of Estes.
Instant claim 7 is rejected over reference claim 12 in view of Estes.
Instant claim 8 is rejected over reference claim 5 in view of Estes.
Instant claim 9 is rejected over reference claim 9 in view of Estes.
Instant claim 10 is rejected over reference claim 10 in view of Estes.
This is a provisional nonstatutory double patenting rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 7, and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Estes (US 20190099613 A1) in view of Rosen (US 20190255201 A1).
Regarding claim 1, Estes teaches an air disinfection apparatus carried on an individual person (abstract: A wearable ultraviolet light phototherapy device is disclosed; NOTE: such a device would be capable of disinfecting air), comprising of:
at least one laser light source outputting light in the UVC light spectrum (par. 10: Another of the sources can be configured to operate at a wavelength that ranges from about 100 nm to 280 nm to generate ultraviolet radiation in the UV-C range),
wherein the electromagnetic radiation is directed toward the air being inhaled by the person, treating the air with a radiated energy of the electromagnetic spectrum such that at least one airborne virus in the air being inhaled by the person is substantially rendered in- effective (NOTE: this is a recitation of intended use, and so long as the prior art structure is capable of performing the claimed function, the prior art would read on this limitation; par. 39: In other aspects, the wearable ultraviolet light phototherapy devices can be used to facilitate a cleaning treatment of surfaces of a number of different objects, items, and the like, while in an unworn state. As used herein, an unworn state of a wearable ultraviolet light phototherapy device means that the device has been removed from, taken off, unsecured from, etc., a body part of a patient; NOTE: if the device is capable of disinfecting objects using UV light, it would also be capable of disinfecting air that is inhaled, and whether or not an airborne virus is inactivated depends on the duration of usage),
an electronic control module (par. 52: A control module 22 can control the operation of the at least one ultraviolet light emitting source 20),
a power supply (par. 19: A power supply component can power the ultraviolet light emitting source(s)),
a wearable housing (par. 37: For example, the wearable ultraviolet light phototherapy devices can take the form of bracelets including ankle bracelets, bands (e.g., wrist bands, ankle bands), belts (e.g., arm belts), necklaces, earrings, watches, and rings) but does not teach wherein the UVC light emitted is specifically in the range of 200-230nm.
Rosen teaches a handheld UV sterilizer (abstract: A handheld portable device for sanitizing a surface or air surrounding a surface). Rosen teaches wherein a range of 220-225 nm is advantageous for being effective at disinfection without harm to humans (par. 32: The filter, in some implementations, has a maximum frequency response between 220 nm and 225 nm (e.g., 222 nm). UVC light with a wavelength of approximately 222 nm is still capable of destroying pathogens or otherwise providing antiseptic solutions without causing harm to the epidermis or eyesight of persons exposed to the light. Therefore, it is desirable to avoid light exceeding about 222 nm).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the UVC light source(s) of Estes to emit light in the range of 220-225 nm, as taught by Rosen, in order to provide disinfection without harming humans.
Regarding claim 2, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, but does not teach wherein the apparatus is powered by a non-rechargeable battery inside the housing.
Estes already teaches that a variety of power sources can be used (par. 19: the power supply component can include one of a number of different power sources) and teaches wherein the power supply is within the housing (Fig. 1: power supply component 26).
Rosen teaches a number of exemplary power sources that can be used for a portable UV disinfection device, including a replaceable battery, which is interpreted to be a non-rechargeable battery (par. 35: The power supply may be a replaceable battery, a rechargeable battery, an electrical plug-in supply, a solar powered supply, etc.).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the power supply of Estes modified by Rosen to be a replaceable/non-rechargeable battery, as taught by Rosen, as one means of providing power for a portable, hand-held UV disinfection device.
Regarding claim 3, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, and teaches wherein the apparatus is powered by a rechargeable power source inside the housing (par. 19: In one embodiment, the power supply component can include a rechargeable battery).
Regarding claim 4, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, and teaches wherein the apparatus is powered by an external power supply (par. 19: In one embodiment, the power supply component can include a rechargeable battery that can be recharged from an external port; NOTE: the external port is interpreted to be the external power supply).
Regarding claim 7, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, and teaches wherein the apparatus comprises at least one diffuser for directing the radiation toward the air being inhaled by the user (par. 12: the diffusive layer which diffuses the radiation into the body part of the patient; NOTE: the device is capable of directing UV radiation towards a body part, and therefore would be capable of directing UV radiation towards air that is inhaled by the user).
Regarding claim 9, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, and teaches wherein the electronic control module comprises an antenna for wireless connection to an external device for transmitting and receiving information (par. 61: The control module 22 can also include a wireless transmitter and receiver that is configured to communicate with a remote location via Wi-Fi, BLUETOOTH, and/or the like).
Regarding claim 10, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, and teaches wherein the electronic control module comprises an integrated computer managing the system functionality based on information received from an external device (par. 61: The control module 22 can also include a wireless transmitter and receiver that is configured to communicate with a remote location via Wi-Fi, BLUETOOTH, and/or the like… For example, a remote computer can be used to transmit operational instructions to the wireless transmitter and receiver. The operational instructions can be used to program functions performed and managed by the control module 22).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Estes modified by Rosen in view of Dobrinsky (US 20180117194 A1).
Regarding claim 5, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, but does not teach wherein the apparatus is powered by a wireless power transfer.
Estes already teaches that a variety of power sources can be used (par. 19: the power supply component can include one of a number of different power sources).
Dobrinsky teaches a handheld UV sterilization device (abstract: A system capable of detecting and/or sterilizing surface(s) of an object using ultraviolet radiation is provided. The system can include a disinfection chamber and/or handheld ultraviolet unit, which includes ultraviolet sources for inducing fluorescence in a contaminant and/or sterilizing a surface of an object).
Dobrinsky teaches wherein wireless charging is a suitable means for powering a portable UV disinfection device (par. 95: The batteries 130 can be configured to provide sufficient power for the various devices included in the protective suit 14A for a target length of time, which can be selected based on the corresponding environment and applications in which the protective suit 14A is to be utilized… Furthermore, an embodiment of the batteries 130 can be recharged using a wireless recharging solution).
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the power supply of Estes modified by Rosen to be configured to be recharged wirelessly, as taught by Dobrinsky, as a suitable means of providing power to a mobile UV disinfection device.
Claims 6 and 8 rejected under 35 U.S.C. 103 as being unpatentable over Estes modified by Rosen in view of O’Neill (US 6630105 B1).
Regarding claim 6, Estes modified by Rosen teaches the air disinfection apparatus as defined in Claim 1, as set forth above, but does not teach wherein the light source is coupled to at least one optical fiber extending therefrom.
Estes teaches wherein the device can be used to disinfect different objects (par. 9: For example, in an unworn state (e.g., removed from the body part of the patient), the devices can be used as hand-held disinfection devices to disinfect the surfaces of a number of different objects, items, and the like). Estes further teaches wherein the device can take different form factors (par. 9: The wearable ultraviolet light phototherapy devices can take the form of any of a number of wearable articles that can be worn, held, placed, arranged, disposed, attached, etc., on a body part of a patient that has a need for phototherapy such as a human being or even an animal. Bracelets including ankle bracelets, bands (e.g., wrist bands, ankle bands), belts (e.g., arm belts), necklaces, earrings, watches, rings, are only a few non-exhaustive examples of possible wearable articles that can be configured as a wearable ultraviolet light phototherapy device that can incorporate the features of the various embodiments described herein). Thus, there is already a motivation to configure the UV light sources in different form factors for attaching to the body and/or for disinfecting different objects besides the body.
O’Neill teaches a wearable disinfection device using UV light (abstract: The apparatus is self contained and portable and allows for the application of gas reactants directly at the required decontamination point. The system provides for the use of ultraviolet light of a specific spectral range; Fig. 3).
O’Neill teaches using a fiber optic bundle to transfer light from a UV light source, which is advantageous because this allows the transferred light to reach smaller areas (C3L64-C4L4: In FIG. 1, the ultraviolet source 10 is mounted in a backpack device 20, FIG. 3, or on a cart (not shown), and the UV light is transmitted to the nozzle via a fiber optic bundle 11, FIG. 1. This configuration allows the nozzle delivery line to be flexible and to have a cross-sectional area of similar size to that of a pencil thus, allowing the nozzle to penetrate and access the internal spaces and compartments of electronic instruments and equipment). O’Neill further teaches having a light guide structure around the optic fibers in order to deliver the light, which is interpreted to provide an area of reduced transmissivity prior to the area of exposure since any type of structure would reduce the transmissivity (C5L21-24: Part No. 2 of the system consists of a "snorkel-type" delivery line, which contains quartz fiber optic bundles 40 to transport UV light throughout the length of the delivery line to the nozzle and onto the substrate). This arrangement would be useful for modifying the device of Estes to be capable of disinfecting smaller spaces and/or fitting into certain form factors, such as a necklace wherein the fiber optic cables can be embedded in the straps of the necklace. The fiber optic cables can then transfer light to different parts of the device if greater light distribution is desired.
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Estes modified by Rosen to have fiber optic cables enclosed in a delivery line, attached to the UV light source, as taught by O’Neill, in order to sterilize smaller spaces and/or adapt the device into different wearable form factors and/or improve light distribution throughout the device.
Regarding claim 8, Estes modified by Rosen and O’Neill teaches the air disinfection apparatus as defined in Claim 1, as set forth above, and teaches wherein the light source comprises a fiber optic conduit that includes an area of reduced transmissivity and an exposed surface from which the electromagnetic radiation is emitted (see O’Neill modification in claim 6 rejection).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHANGRU CHEN whose telephone number is (571)272-1201. The examiner can normally be reached Monday-Friday 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth A. Robinson can be reached on (571) 272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.C./Examiner, Art Unit 1796
/KEVIN JOYNER/Primary Examiner, Art Unit 1799