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 .
Claim Objections
Claim 1 is objected to because of the following informalities: there is no antecedent basis for “the subject” on line 10. 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,617,813. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claims 1, 14, and 20 are substantially the same as claims 1, 14, and 20 of the ‘813 patent, but are broader because they do not necessarily require that the carbon particles are synthetic carbon particles.
Dependent claims 2-13 and 15-19 are substantially the same as claims 2-13 and 15-19 of the ‘813 patent.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,896,753. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claims 1, 14, and 20 are substantially the same as claims 1, 14, and 20 of the ‘813 patent, but are broader because they do not necessarily require that the carbon particles are synthetic carbon particles.
Dependent claims 2-13 and 15-19 are substantially the same as claims 2-13 and 15-19 of the ‘813 patent.
Allowable Subject Matter
Claims 1-20 would be allowable upon filing a terminal disclaimer to overcome the double patenting rejections set forth above.
The following is a statement of reasons for the indication of allowable subject matter:
The instant claims are drawn to a system for treating viral compositions in blood and a corresponding method of use, the system comprising a first column, wherein the first column consists essentially of carbon particles; a second column, wherein the second column consists essentially of a mixture of carbon particles and a first ion exchange resin; and a third column, wherein the third column consists essentially of a mixture of carbon particles and a second ion exchange resin. In use blood is passed through the first, second, and third columns and then returned to the patient.
The closest prior art is Roberts (US 2004/0228829), which teaches a similar extracorporeal system comprising at least three adsorbent columns (44, 418, 438; paragraphs [0056-0069]). However, Roberts requires that the first filtrate comprises activated charcoal and at least one non-ionic resin. Accordingly, Roberts does not teach or suggest that the first adsorbent column consists essentially of carbon particles, wherein fluid is passed through the first adsorbent column to produce a first filtrate. It is unclear why one of ordinary skill in the art would have removed the at least one non-ionic resin from Roberts’ device.
Conclusion
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/PHILIP R WIEST/Primary Examiner, Art Unit 3781