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
Claims 1-20 are currently pending. Claims 18-20 remain withdrawn. Claim 17 has been amended to overcome the claim objection set forth in the Non-Final Office Action mailed on 20 April 2026.
Examiner’s Note
After the Examiner Interview conducted on 29 June 2026, the Examiner has reached out the Patent Automation Support Manage (PASM) to update the current application’s continuity. The current application has been updated to be a CON of application number 15/032,933. Thus, Zhang et al. ‘695 (US Pub No. 2016/0262695 – previously cited) cannot be used as prior art and the 35 U.S.C. 102(a)(1) rejection has been withdrawn.
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, 10-12, 14, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, 14, 16, 17, 19, 20, and 23 of U.S. Patent No. 11,850,066. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 13, 14, 16, 17, 19, 20, and 23 of the US Patent is narrower in scope than claims 1, 10-12, 14, and 16 of the current invention, and encompasses all of the subject matter of claims 1, 10-12, 14, and 16. Therefore, any reference meeting the limitations set forth in claims 1, 13, 14, 16, 17, 19, 20, and 23 of the US Patent would also meet the limitations set forth in claims 1, 10-12, 14, and 16 of the current invention. Therefore, any reference meeting the limitations set forth in claims 1, 13, 14, 16, 17, 19, 20, and 23 of the US Patent would also meet the limitations set forth in claims 1, 10-12, 14, and 16 of the current invention.
Response to Arguments
Applicant’s arguments with respect to the 35 U.S.C. 101 rejection have been fully considered and are persuasive. Upon further consideration, it was found that the tonometry device being coupled to the wearable device and configured to compress a tissue of a subject including a STA was found to be a particular configuration of the structure and its not well-understood, routine, and conventional (WURC). Thus, the 35 U.S.C. 101 rejection of claims 1-17 has been withdrawn.
Regarding the double patenting rejection, the Examiner suggests to file a terminal disclaimer (see MPEP 804.02).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AURELIE H TU whose telephone number is (571)272-8465. The examiner can normally be reached [M-F] 7:30-3:30.
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, Alexander Valvis can be reached at (571) 272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AURELIE H TU/ Primary Examiner, Art Unit 3791
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