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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/580,294, filed on 12/07/2017.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/1/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Claim Objections
Claim 2 is objected to because of the following informalities: Lines 2-3 recite “wherein R1 is defined to be the radius of an inner diameter of the mounting ring and R2 is defined to be the radius of an inner diameter of the annular ring.” To establish antecedent basis, insert “a” preceding radius. Appropriate correction is required.-
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,833,339 and claims 1-25 of U.S. Patent No. 10/864,331. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of claim 1 are to be found in claim 5 (as it encompasses claim 1) of ‘339 and 1 of ‘331. The difference between claim 1 of the application and claim 5/claim 1 of the patent(s) lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 5/claim 1 of the patent(s) is in effect a “species” of the “generic” invention of 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). Since claim 1 is anticipated by claim 5/claim 5 of the patent(s), it is not patentably distinct from claim 5/claim 1.
Application 18/385,655
US Patent No 11,833,339
US Patent No 10,864,331
1
1 and 5
1
2
6
13
3
7
14
4
8
15
5
9
16
6
1,5,10
17
7
11
18
8
12
19
9
13
20
10
14
21
11
18
23
12
15
22
13
16
24
14
17
25
Allowable Subject Matter
Claims 1-14 contain allowable subject matter.
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).
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, US 4266815 to Cross and US 2012/0157928 to Mermet fail to teach, disclose or render obvious “wherein the inner surface of the mounting ring comprises at least one protrusion where, when the adaptor is mounted around the longitudinal tip of the drug delivery device, the at least one protrusion protrudes into the at least one annular space, the at least one protrusion being in the form of transversal segments” as recited in independent claims 1 and 6.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IMANI N HAYMAN whose telephone number is (571)270-5528. The examiner can normally be reached 5:30 AM - 3:30 PM.
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The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IMANI N HAYMAN/Supervisory Patent Examiner, Art Unit 2841