DETAILED ACTION
Note: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Office action is in response to communications filed July 1, 2026.
Status of Claims
1. Claims 2-16, 19-21 and 25-27 are pending and currently under consideration for patentability.
Claims 17 and 24 are canceled and claims 25-27 are newly presented as of the July 1, 2026 claim amendment.
Priority
2. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on July 1, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Response to Amendments
4. Applicant has amended claims 2, 12 and 13 to overcome the previously applied claim objections and 35 USC 112(b) claim rejections; accordingly, these objections and rejections are withdrawn herein.
Response to Arguments
5. The obviousness-type double patenting rejections over US Patent No. 11,806,266 and US Patent No. 12,324,765 have been maintained in view of the amended instant claims.
Applicant’s arguments, see pages 6-9, filed July 1, 2026, with respect to the 35 USC 103 prior art rejections rejection over Kuntz, Rushlander and others, have been fully considered and are persuasive. The 35 USC 103 prior art rejections have been withdrawn.
Double Patenting
6. 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.
7. Claims 2-16, 19-21 and 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,806,266. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1-26 contain additional limitations requiring a fluid permeable support disposed at least partially within the fluid impermeable casing, wherein the fluid reservoir is defined between the fluid permeable support and the fluid impermeable casing, and is thus more specific, in effect making the invention of patented claims 1-26 a "species" of the "generic" invention of instant claims 2-16, 19-21 and 25-27. It has been held that the generic invention is "anticipated" by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
8. Claims 2-16, 19-21 and 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,324,765. Although the claims at issue are not identical, they are not patentably distinct from each other because patented claims 1-30 contain additional limitations requiring an outlet in fluid communication with the interior volume of the fluid collection device, and is thus more specific, in effect making the invention of patented claims 1-30 a "species" of the "generic" invention of instant claims 2-16, 19-21 and 25-27. It has been held that the generic invention is "anticipated" by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Allowable Subject Matter
9. Claim 2-16, 19-21 and 25-27 are allowable over prior art of record.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). Namely, a properly filed Terminal Disclaimer must be filed in order to overcome the non-statutory obviousness-type double patenting rejections presented above.
10. The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is Kuntz (US 4,747,166) and Rushlander et al. (US PGPUB 2007/0137718 A1).
Kuntz and Rushlander, while disclosing similar fluid collection apparatuses, fail to disclose or reasonably suggest, alone or in combination, the unique combination of claimed structure and function, further comprising a tube having a first end in fluid communication with the sump and extending behind at least the portion of the fluid permeable body and extending through the fluid outlet to a second, fluid discharge end, the tube including an outer surface, an entirety of the shape-retaining element separate from and positioned radially outwardly of the outer surface.
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J MENSH whose telephone number is (571)270-1594. The examiner can normally be reached M-F 9 a.m. - 6 p.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at (571)272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J MENSH/ Primary Examiner, Art Unit 3781
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