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 .
Information Disclosure Statement
The information disclosure statements (IDS’) are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Instant Claims 20-39 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11766197. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Patent Claim 1 and instant Claim 20 (method claims) differ because Patent Claim 1 adjusts light intensity based on the difference between the glucose concentration measurement and a first reference value, while instant Claim 20 broadly recites adjusting light intensity based on the glucose concentration measurement. Instead, in instant Claim 20, the recitation of the first reference value exists with instant Claim 2. The remainer of claims that depend from Patent Claim 1 and instant Claim 20 are identically written.
Patent Claim 10 and instant Claim 29 (apparatus claims) differ because Patent Claim 10 adjusts light intensity based on the difference between the glucose concentration measurement and a first reference value, while instant Claim 29 broadly recites adjusting light intensity based on the glucose concentration measurement. Instead, in instant Claim 29, the recitation of the first reference value exists with instant Claim 30. The remainer of claims that depend from Patent Claim 10 and instant Claim 29 are identically written.
Patent Claim 19 and instant Claim 38 (program method claims) differ because Patent Claim 19 adjusts light intensity based on the difference between the glucose concentration measurement and a first reference value, while instant Claim 38 broadly recites adjusting light intensity based on the glucose concentration measurement. The remainer of claims that depend from Patent Claim 19 and instant Claim 38 are identically written.
Instant Claims 20-39 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10555693. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Patent Claim 1 and instant Claim 20 (method claims) differ because Patent Claim 1 adjusts light intensity based on feeding the difference between the glucose concentration measurement and a first reference value to a driving current, while instant Claim 20 broadly recites adjusting light intensity based on the glucose concentration measurement. Instead, in instant Claim 20, the recitation of the first reference value exists with instant Claim 2. The remainer of claims that depend from Patent Claim 1 and instant Claim 20 are identically written.
Patent Claim 10 and instant Claim 29 (apparatus claims) differ because Patent Claim 10 adjusts light intensity based on feeding the difference between the glucose concentration measurement and a first reference value to a driving current, while instant Claim 29 broadly recites adjusting light intensity based on the glucose concentration measurement. Instead, in instant Claim 29, the recitation of the first reference value exists with instant Claim 30. The remainer of claims that depend from Patent Claim 10 and instant Claim 29 are identically written.
Patent Claim 19 and instant Claim 38 (program method claims) differ because Patent Claim 19 adjusts light intensity based on driving the difference between the glucose concentration measurement and a first reference value to a driving current, while instant Claim 38 broadly recites adjusting light intensity based on the glucose concentration measurement. The remainer of claims that depend from Patent Claim 19 and instant Claim 38 are identically written.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance:
Claims 20-39 are allowable over the prior art of record. The closest prior art of record is US 6172743 B1 to Kley et al. While Kley et al. disclose measuring a “dark signal” when the light source is switched off and a “light signal” when the source is switched on to calculate glucose, which corresponds to steps (a)-(c) in Claims 20, 29 and 38, Kley et al. does not disclose, teach or fairly suggest, either singly or in combination, the step of (d) where light intensity from the light source is adjusted based on the glucose concentration measurement.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN PATRICK DOUGHERTY whose telephone number is (571)270-5044. The examiner can normally be reached 8am-5pm (Pacific Time).
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/SEAN P DOUGHERTY/Primary Examiner, Art Unit 3791