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 .
Response to Amendment
This office action is in response to the preliminary amendment filed 6/15/2023. As directed by the amendment, claims 1-20 have been cancelled, and claims 21-40 have been added. As such, claims 21-40 are pending in the instant application.
Information Disclosure Statement
An applicant's duty of disclosure of material information is not satisfied by presenting a patent examiner with "a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real-world conditions under which examiners work." Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573,220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to "bury" it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc. 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea LarkBoats, Inc. et al.,175 U.S.P.Q. 260, 272 (S.D. FI. 1972).
Applicant should note that the large number of references in the attached IDS have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is requested to point out any particular references in the IDS which they believe may be of particular relevance to the instant claimed invention in response to this office action. See MPEP 2004, item 13.
Claim Objections
Claims 21, 23, 30, 31, 33, 34, 36 and 37 are objected to because of the following informalities:
Claim 21, line 4 should read “instructions…cause
Claim 21, line 6 should read “with the at least one sensor” because it is understood to be referring to that of line 2
Claim 21, line 13 should read “the one or more potential trigger settings” in keeping with the language of lines 9-10
Claim 23, line 1 should read “wherein the displayinges:” for clearer antecedent basis because it is understood to be referring to that of claim 22
Claim 30, line 12 should read “the one or more potential trigger settings” in keeping with the language of lines 6-7
Claims 31 and 33, line 1 of each claim, and claim 34, line 3, [three instances] should read “wherein the displaying
Claim 36, line 4 should read “instructions…cause
Claim 36, line 7 should read “with the at least one sensor” because it is understood to be referring to that of line 2
Claim 38, line 1 should read “wherein the displayinges:” for clearer antecedent basis because it is understood to be referring to that of claim 36
Appropriate correction is required.
Applicant is advised that should claim 22 be found allowable, claim 36 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Also, should claim 25 be found allowable, claim 38 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof, and should claim 27 be found allowable, claims 28 and 39 will be objected to under 37 CFR 1.75 as being substantial duplicates thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 30-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-17 of U.S. Patent No. 10,940,281. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 12-17 contain all of the limitations of instant claims 30-35, respectively, and thus fully anticipate instant claims 30-35.
Claims 21-29 and 36-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-17 of U.S. Patent No. 10,940,281 in view of Zheng et al. (US 2014/0283833 A1; hereinafter “Zheng”). Patented claim 12 recites all of the operations of instant claims 21, 22, and 36, patented claims 13-17 recite the same operations as instant claims 23-29, respectively [note: instant claims 27-28 are duplicate claims, both corresponding to patented claim 16], and patented claims 14-17 recite the same operations as instant claims 37-40, respectively. The patented claims do not recite a system comprising at least one sensor, at least one processor with memory storing instructions for causing the system to perform said operations, or a display for performing the patented displaying. However, broadly providing an automatic or mechanical means to replace a manual activity which accomplishes the same result is not sufficient to distinguish over the prior art (MPEP 2144.04 III), and at least one sensor, at least one processor with memory storing instructions for causing the system to perform operations (including automatic trigger adjustments), and a display for displaying, were standard ventilator components before the effective filing date of the claimed invention, as demonstrated by Zheng (paras [0002], [0005], [0017] and [0021-26]), such that reciting a system as instantly claimed in the patented claims to perform the patented method steps would have been obvious to an artisan before the effective filing date of the claimed invention in order to provide the predictable result of a system that utilizes standard ventilator components to automatically perform the patented method steps so that better synchrony can be achieved automatically.
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.
Claims 21-40 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.
Claims 21, 30 and 36 (and thus their dependent claims) recite the limitation "the one or more potential trigger settings" in lines 9-10, lines 6-7 and lines 10-11, respectively. There is insufficient antecedent basis for this limitation in the claims. Applicant could address this rejection by amending claims 21, 30 and 36 to read "
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. References teaching known operations for analyzing active and potential triggers/thresholds: Milne et al. (US 2014/0012150 A1); Hsu et al. (US 6,016,442); Albanese et al. (US 2018/0001042 A1); Mulqueeny et al. (US 2012/0037159 A1); Sweeny et al. (US 2011/0253136 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHRYN E DITMER whose telephone number is (571)270-5178. The examiner can normally be reached M-Th 7:30a-4:30p, F 7:30a-11:30a ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brandy Lee can be reached at 571-270-7410. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHRYN E DITMER/Primary Examiner, Art Unit 3785
/BRANDY S LEE/Supervisory Patent Examiner, Art Unit 3785