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 .
Status of Claims
Claims 1-20 are pending in the present application.
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.
Claims 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Richmann et al. (US 2014/0039430 A1), hereinafter Richmann, in view of Horie (US 6,186,989 B1).
Regarding claim 1, Richmann teaches an ostomy appliance (Figs. 1-4; Abstract) comprising an inner wall and an outer wall of flexible sheet material (side walls 1 and 2) joined together to define a cavity for containing a stomal output (seal 7; ¶s 1 and 7); the inner wall comprising an inlet for receiving the stomal output into the cavity (Fig. 3, inlet 14; ¶s 21 and 28); an outer comfort layer overlying at least a portion of the outer wall (Figs. 1, 2, and 4; comfort layer 3 with non-woven layers 31 and 33); wherein the outer comfort layer comprises a first part and a second part which are joined to the outer wall so that the first part partially overlaps the second part in an overlap region, the first part and the second part are separable from each other in the overlap region to form a window opening for viewing the cavity (best seen in Fig. 2; ¶s 7 and 24 - 25).
Richmann does not explicitly teach the overlap region is angled obliquely to a horizontal direction when a lower apex is vertically downward relative to an upper apex of the ostomy appliance.
Horie teaches an ostomy cover (Figs. 2-3; Abstract), thus being in the same field of endeavor, comprising oblique angled overlapping sheets (sheets 25 and 26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sheets of Richmann to be obliquely angled, as taught by Horie. Doing so would comprise the overlap region is angled obliquely to a horizontal direction when a lower apex is vertically downward relative to an upper apex of the ostomy appliance. Doing so would be advantageous in enabling a larger opening between overlapping sheets (Col. 5, lines 5-11 of Horie).
Further, it would have been obvious to one having ordinary skill in the art at the time the invention was made to change the angle of the overlap region, as a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1996). In the instant case, changing the shape/angle of the overlap region does not change its function in allowing for the comfort layer to be opened for viewing of the cavity. Further, Applicant has placed no criticality on such a configuration stating the overlap region may be in a number of different orientations (Page 6, lines 26 - 28 of Applicant’s specification).
Regarding claim 2, Richmann further teaches the window opening extending substantially fully across a face of the outer wall (Fig. 2 shows window layer 2 extending across device).
Regarding claim 3, Richmann further teaches the first and second part of the of the outer comfort layer being joined to each other at a first end and at a second end of the overlap region (best seen in Fig. 4, which shows circumferential bond 7 which would join the top and bottom ends of the comfort layer and overlap region).
Regarding claim 4, Richmann further teaches the first part and the second part are welded to each other at the first end and at the second end of the overlap region (¶s 22 and 26 indicate the bonds are made by welding/heat sealing).
Regarding claim 5, the combination does not explicitly teach a single weld for joining the inner wall, the outer wall, and the outer comfort layer, including the welding of the first part and the second part to each other at the first and second end of the overlap region.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the overlaid seals of Richmann (Fig. 2, seals 7, 7b, and 7c) to be a single weld. Doing so would be obvious since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. See MPEP 2144.04 (V)(B). In the instant case, having multiple consecutive welds connecting the various layers performs the same function to having a single weld, and merely makes on piece what is multiple elements in Richmann.
Regarding claim 7, Richmann further discloses an ostomy wafer located in register with the inlet of the inner wall (Fig. 3, wafer 15; ¶s 28).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Richmann and Horie, as applied to claim 1 above, and further in view of Wheaton et al. (US 2011/0190718 A1), hereinafter Wheaton.
Regarding claim 6, Richmann and Horie substantially disclose the invention of claim 1. The combination does not explicitly teach the outer wall comprising one or more pleats that are configured to partially or fully unfold as the cavity receives the stomal output; the first part of the second part of the outer cover layer being configured to slide over each other in the overlap region to accommodate expansion of the underlying outer wall.
Wheaton teaches an ostomy pouch (Fig. 1; Abstract), thus being in the same field of endeavor, comprising one or more pleats configured to partially or fully unfold as the cavity receives double output (Figs. 2 and 2A; wall 14 and edge 18 in particular, also edge 16; ¶s 25 and 28-29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann to comprise the folding pleats of Wheaton. Doing so would allow for the capacity of the container to be expanded (recognized in ¶ 28 of Wheaton).
They still do not explicitly teach the first part of second part of the outer comfort layer being configured to slide over each other in the overlap region to accommodate expansion of the underlying outer wall. However, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does. See MPEP 2112.02. Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. In the instant case, the combination of Richmann, Horie, and Wheaton teaches the same pleats and same first and second parts as claimed, and as such is expended to perform the same function.
Claims 8-9, 11-14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Richmann, in view of Horie and Wheaton.
Regarding claim 8, Richmann teaches an ostomy appliance (Figs. 1-4; Abstract) comprising an inner wall and an outer wall of flexible sheet material (side walls 1 and 2) joined together to define a cavity for containing a stomal output (seal 7; ¶s 1 and 7); the inner wall comprising an inlet for receiving the stomal output into the cavity (Fig. 3, inlet 14; ¶s 21 and 28); an outer comfort layer overlying at least a portion of the outer wall (Figs. 1, 2, and 4; comfort layer 3 with non-woven layers 31 and 33); wherein the outer comfort layer comprises a first part and a second part which are joined to the outer wall so that the first part partially overlaps the second part in an overlap region, the first part and the second part are separable from each other in the overlap region to form a window opening for viewing the cavity (best seen in Fig. 2; ¶s 7 and 24 - 25).
Richmann does not explicitly teach a first lateral wing region and a second lateral ring region defined by the inner wall and the outer wall, the window opening for viewing the cavity being angled obliquely to a horizontal direction, or the outer wall comprising one or more pleats which are configured to partially or fully unfold as the cavity receives stomal output to promote confirmation of the inner wall against a body of an ostomate wearing the ostomy appliance.
Horie teaches an ostomy cover (Figs. 2-3; Abstract), thus being in the same field of endeavor, comprising oblique angled overlapping sheets (sheets 25 and 26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sheets of Richmann to be obliquely angled, as taught by Horie. Doing so would comprise the overlap region is angled obliquely to a horizontal direction when a lower apex is vertically downward relative to an upper apex of the ostomy appliance. Doing so would be advantageous in enabling a larger opening between overlapping sheets (Col. 5, lines 5-11 of Horie).
Further, it would have been obvious to one having ordinary skill in the art at the time the invention was made to change the angle of the overlap region, as a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1996). In the instant case, changing the shape/angle of the overlap region does not change its function in allowing for the comfort layer to be opened for viewing of the cavity. Further, Applicant has placed no criticality on such a configuration stating the overlap region may be in a number of different orientations (Page 6, lines 26 - 28 of Applicant’s specification).
The combination still does not explicitly teach a first lateral wing region and a second lateral wing region defined by the inner and outer wall or the outer wall comprising one or more pleats which are configured to partially or fully unfold as the cavity receives stomal output to promote confirmation of the inner wall against a body of an ostomate wearing the ostomy appliance.
Wheaton teaches an ostomy pouch (Fig. 1; Abstract), thus being in the same field of endeavor, comprising an outer wall defining a central region, a first lateral wing region and a second lateral wing region (see Figs. 5 and 7 in particular, side wall 112 and fold 124; side wall 112 comprising the inner wall comprising an inlet); and further comprising one or more pleats configured to partially or fully unfold as the cavity receives stomal output (Figs. 2 and 2A; side wall 14 and edge 18 in particular, also edge 16; ¶s 25 and 28 - 29) said pleats being attached to the outer wall (Fig. 6 in particular shows pleats 116 and 118 attached to outer wall 114 and inner wall 112; see annotated Figs. below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann to comprise the lateral wings and folding pleats of Wheaton. Doing so would allow for the capacity of the container to be expanded (recognized in ¶ 28 of Wheaton).
Limitations of “promoting confirmation of the inner wall against the body of an ostomate wearing ostomy appliance” and “the first part of second part of the outer comfort layer being configured to slide over each other in the overlap region to accommodate expansion of the underlying outer wall” are considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does. See MPEP 2112.02. Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. In the instant case, the combination of Richmann, Horie, and Wheaton teaches the same wing regions, cavity, and layers as claimed, and thus would be capable of promoting conformation and sliding parts to accommodate expansion.
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Regarding claim 9, the combination of Richmann, Horie, and Wheaton substantially disclose the invention of claim 8.
As previously stated, Wheaton teaches an ostomy pouch (Fig. 1) comprising one or more pleats configured to partially or fully unfold as the cavity receives stomal inky stent output (Figs. 2 and 2A; wall 14 and edge 18 in particular, also edge 16; ¶s 25 and 28-29).
Limitations of “promoting displacement of the first lateral wing region and the second lateral wing region” are considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does. See MPEP 2112.02. Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. In the instant case, the combination of Richmann, Horie, and Wheaton teaches the same pleats, cavity, and layers as claimed, and thus would be capable of promoting displacement of the first lateral wing region and second lateral ring region towards the body of the ostomate.
Regarding claim 11, the combination of Richmann, Horie and Wheaton substantially disclose the invention of claim 8.
Wheaton further teaches the one or more pleats comprises two pleats which are arranged symmetrically about a vertical midline of the outer wall (Figs. 5 and 7, fold 124; ¶ 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann and Horie to comprise the folding pleats arranged symmetrically about a vertical midline of the outer wall as taught by Wheaton. Doing so would allow for the capacity of the container to be expanded (recognized in ¶ 28 of Wheaton).
Regarding claim 12, the combination of Richmann, Horie, and Wheaton substantially disclose the invention of claim 11. Wheaton further teaches the pleats being oriented vertically when a lower apex is vertically downward relative to an upper apex of the ostomy appliance (i.e. parallel to a vertical centerline; Figs. 5 and 7).
As previously stated, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann and Horie to comprise the folding pleats arranged symmetrically about a vertical midline of the outer wall as taught by Wheaton. Doing so would allow for the capacity of the container to be expanded (recognized in ¶ 28 of Wheaton).
Regarding claim 13, the combination of Richmann, Horie, and Wheaton substantially disclose the invention of claim 8.
Wheaton further teaches the first lateral wing region and second lateral wing region are foldable about a fold line extending in a generally vertical direction when a lower apex is vertically downward relative to an upper apex of the ostomy.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann and Horie to comprise the folding pleats including the fold lines as taught by Wheaton. Doing so would allow for the capacity of the container to be expanded (recognized in oar 28 of Wheaton).
Further, limitations of the lateral wing regions being “foldable about a fold line” is considered functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does. See MPEP 2112.02. Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. In the instant case, the combination of Richmann, Horie, and Wheaton teaches the same pleats and fold lines as claimed, as well as the device as a whole being flexible (Paragraph 21 of Richmann) and thus teaches said wing regions being foldable.
Regarding claim 14, the combination of Richmann, Horie, and Wheaton substantially disclose the invention of claim 13. Wheaton further teaches the pleats being aligned with each of the fold lines (Figs. 5 and 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann and Horie to comprise the folding pleats including the fold lines as taught by Wheaton. Doing so would allow for the capacity of the container to be expanded (recognized in Paragraph 28 of Wheaton).
Regarding claim 17, Richmann further teaches a free edge of the inner wall and a freer to the outer wall being joined by a peripheral weld line (Fig. 4, weld 7).
Richmann and Wheaton do not explicitly disclose an enhanced weld zone as part of the
peripheral weld line or in the vicinity of the one or more pleats, wherein the enhanced weld on
comprise a weld of increased thickness compared to the weld line outside the enhanced weld
zone.
However, Fig. 2 of Richmann shows welds between each layer (seals 7, 7a, 7b, and
7c). Areas where the pleats overlap within the periphery (i.e. at the top and bottom of the
device) would naturally have the greatest number of layers, and thus would have the thickest
weld, thus comprising an enhanced weld zone.
Wheaton also teaches enhanced weld zones of a greater thickness to reinforce certain
parts of the device (Figs. 6 and 7, enhanced weld zone 122 is thicker than peripheral weld 126;
Paragraph 122).
It would have been obvious to one of ordinary skill in the art before the effective filing
date of the claimed invention to have modified the peripheral weld of Richmann, Horie, and Wheaton to comprise enhanced weld zones of increased thickness in the vicinity of the each of the one or more pleats. Doing so would be obvious in order to reinforce certain areas of the periphery, in the same manner that certain areas of Wheaton are reinforced with thicker welds.
Further, doing so would be obvious since it has been held that the mere duplication of
the parts of an apparatus found in the prior art is not patentably significant unless a new and
unexpected result is produced. See MPEP § 2144.04 (VI)(B). In the instant case, adding additional weld zones (i.e. duplicating the weld zones of Wheaton) would merely serve to
reinforce more or different areas of the device, and would hold together portions of the device
in the same manner as the original welds without providing any new or unexpected results.
Regarding claim 18, Richmann further teaches an upper and lower end of each of the one or more pleats being traversed by the weld line (Fig. 4, weld 7).
Regarding claim 19, Richmann further teaches the outer comfort layer being free of pleats (Fig. 2 shows the layers 31 and 33 without pleats).
Regarding claim 20, Richmann further discloses an ostomy wafer located in register with the inlet of the inner wall (Fig. 3, wafer 15; Paragraph 28).
In the alternative, Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Richmann in view of Horie, and Becker (US 2021/0228402 A1).
Regarding claim 8, Richmann teaches an ostomy appliance (Figs. 1-4; Abstract) comprising an inner wall and an outer wall of flexible sheet material (side walls 1 and 2) joined together to define a cavity for containing a stomal output (seal 7; ¶s 1 and 7); the inner wall comprising an inlet for receiving the stomal output into the cavity (Fig. 3, inlet 14; Paragraphs 21 and 28); an outer comfort layer overlying at least a portion of the outer wall (Figs. 1, 2, and 4; comfort layer 3 with non-woven layers 31 and 33); wherein the outer comfort layer comprises a first part and a second part which are joined to the outer wall so that the first part partially overlaps the second part in an overlap region, the first part and the second part are separable from each other in the overlap region to form a window opening for viewing the cavity (best seen in Fig. 2; Paragraphs 7 and 24 - 25).
Richmann does not explicitly teach a first lateral wing region and a second lateral ring region defined by the inner wall and the outer wall, the window opening for viewing the cavity being angled obliquely to a horizontal direction, or the outer wall comprising one or more pleats which are configured to partially or fully unfold as the cavity receives stomal output to promote confirmation of the inner wall against a body of an ostomate wearing the ostomy appliance.
Horie teaches an ostomy cover (Figs. 2-3; Abstract), thus being in the same field of endeavor, comprising oblique angled overlapping sheets (sheets 25 and 26).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sheets of Richmann to be obliquely angled, as taught by Horie. Doing so would comprise the overlap region is angled obliquely to a horizontal direction when a lower apex is vertically downward relative to an upper apex of the ostomy appliance. Doing so would be advantageous in enabling a larger opening between overlapping sheets (Col. 5, lines 5-11 of Horie).
Further, it would have been obvious to one having ordinary skill in the art at the time the invention was made to change the angle of the overlap region, as a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1996). In the instant case, changing the shape/angle of the overlap region does not change its function in allowing for the comfort layer to be opened for viewing of the cavity. Further, Applicant has placed no criticality on such a configuration stating the overlap region may be in a number of different orientations (Page 6, lines 26 - 28 of Applicant’s specification).
The combination of Richmann and Horie does not explicitly teach a first lateral wing region and a second lateral wing region defined by the inner and outer wall or the outer wall comprising one or more pleats which are configured to partially or fully unfold as the cavity receives stomal output to promote confirmation of the inner wall against a body of an ostomate wearing the ostomy appliance.
In addressing the same problem as Applicant, the problem being the use of pleats to expand the volume of a waste receptacle worn on the body, Becker discloses an incontinence pouch device (Figs. 1 - 3) comprising first and second lateral wing regions defined by an inner wall and an outer wall (Fig. 3 shows how the pleats create wing regions at reference numerals 220 and 320) and pleats on an upper layer which partially unfold as the cavity receives input (¶s 49 and 52).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the outer wall of Richmann and Horie to comprise the pleats of Becker. Doing so would allow for analogous receiving of stomal output and further would be advantageous in allowing for volume expansion (recognized in ¶s 49 and 52 of Becker).
Regarding claim 10, the combination of Richmann, Horie, and Becker substantially disclose the invention as claimed. Richmann further teaches the inner wall being free of pleats (Fig. 2, sidewall 1). Becker also teaches the inner wall being free of pleats (Fig. 1 clearly shows inner wall 270 being free of pleats) and thus the combination would not comprise pleats on the inner wall.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Richmann, in view of Horie and Wheaton, as applied to claim 8 above, and further in view of Fattman et al. (US 2015/0320585 A1), hereinafter Fattman.
Regarding claim 15, the combination of Richmann, Horie, and Wheaton disclose invention as claimed. They do not explicitly teach a separation filter for filtering gases and liquids from solid matter contained in the stomal output; and the separation filter comprises one or more pleats.
Fattman teaches an ostomy pouch device (Fig. 1 Abstract), thus being in the same field of endeavor, comprising a separation filter for filtering gases contained in the stomal output; and the separation filter comprising one or more pleats (Fig. 15; Paragraphs 48 and 103).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Richmann, Horie, and Wheaton to comprise the pleated filter of Fattman. Doing so would assist in gas out of the device and during the flow path for gas out of the device (¶s 48 and 103 of Fattman).
Regarding claim 16, the combination of Richmann, Horie, Wheaton, and Fattman substantially disclose of claim 15.
Fattman further discloses the pleats of the separation filter being aligned with the pleats of the outer wall (Fig. 15 shows pleat 12 aligned vertically, i.e. points towards the circular portion in the top of the device).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Richmann, Horie, and Wheaton to comprise the pleated filter of Fattman, and to vertically align said pleats. Doing so would thus result in the pleats of the separation filter being aligned with the pleats of the outer wall (Figs. 5 and 7 of Wheaton most clearly show the pleats of the outer wall being aligned vertically) and would assist in filtering gas out of the device and create a flow path for gas to escape the device (¶s 48 and 103 of Fattman).
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,707,379. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between claim 23 of the current application and claim 1 of U.S. Patent No. 11,707,379 lies in the fact that the issued Patent claims includes more elements and is thus more specific. Thus, the invention of Patent No. 11,707,379 is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Double Patenting
Corresponding Claims
Instant Application
Claim 1
Claim 2
Claim 3
Claim 4
Claim 5
Claim 6
U.S. Patent No. 11,707,379
Claim 1
Claim 2
Claim 3
Claim 4
Claim 5
Claim 1
Double Patenting
Corresponding Claims
Instant Application
Claim 7
Claim 8
Claim 9
Claim 10
Claim 11
Claim 12
U.S. Patent No. 11,707,379
Claim 6
Claim 7
Claim 8
Claim 9
Claim 10
Claim 11
Double Patenting
Corresponding Claims
Instant Application
Claim 13
Claim 14
Claim 15
Claim 16
Claim 17
Claim 18
U.S. Patent No. 11,707,379
Claim 12
Claim 13
Claim 1
Claim 14
Claim 15
Claim 16
Double Patenting
Corresponding Claims
Instant Application
Claim 19
Claim 20
U.S. Patent No. 11,707,379
Claim 17
Claim 18
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALESSANDRO R DEL PRIORE whose telephone number is (571)272-9902. The examiner can normally be reached Monday - Friday, 8:00 - 5:30.
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/ALESSANDRO R DEL PRIORE/Examiner, Art Unit 3781
/ARIANA ZIMBOUSKI/Primary Examiner, Art Unit 3781
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